Facebook, Inc. v. Teachbook.com LLC, No. 11 C 3052, Slip Op. (N.D. Ill. Sep. 26, 2011) (Aspen, Sen. J.).
Judge Aspen denied defendant Teachbook’s motion to dismiss plaintiff Facebook’s Lanham Act complaint. As an initial matter, the Court refused to consider the 300 pages of additional materials outside of Facebook’s complaint that Teachbook sought to introduce. The Court declined to take judicial notice of public records, and would have had to convert the motion to a summary judgment motion to consider the remaining materials.
The Court denied Teachbook’s claims that the -Book suffix in the FACEBOOK mark was generic as a matter of law. As an initial matter, although it was within the Court’s discretion, the Court did not believe it was appropriate to isolate and review the -BOOK suffix separate from the FACEBOOK mark. Additionally, Facebook was using its mark to offer social networks, not books, ebooks or otherwise. Facebook sufficiently plead the visual and aural similarities between the two marks. Facebook’s decision not to plead actual confusion was not fatal to its claim. Actual confusion is not a required element of trademark infringement.
Facebook also sufficiently pled intent. Facebook alleged that Teachbook adopted its mark to call to mind Facebook. The Court also noted that teachers might think that Teachbook was Facebook’s response to some school’s banning teachers Facebook use.