FiftyThree Files for Trademark on 'Paper' After Facebook App Release

Tuesday February 4, 2014 9:56 AM PST by Juli Clover
paperlogo.pngFiftyThree, the company behind popular iPad sketching app Paper, has filed for a trademark on the term "Paper" following the announcement of Facebook’s magazine-style news curation tool, also named Paper.

First discovered by TechCrunch, the trademark was filed with the United States Patent and Trademark Office on January 30, the same day Facebook initially unveiled its new app. As noted by FiftyThree co-founder Georg Petschnigg in an open letter, FiftyThree was not given advanced notice of Facebook’s plans and was taken by surprise by the app release.

Though FiftyThree previously filed for a trademark on the term "Paper by FiftyThree" it did not have a trademark for "Paper" at the time that Facebook created its app. According to two trademark lawyers that spoke to TechCrunch, while the trademark is newly filed, FiftyThree could have a case if it proceeds with a lawsuit as trademarks are partially use-based and it has been using the Paper app name since early 2012.
Trademarks, to a degree, are use-based. This means that "just by using a mark in a particular field, you’ve got rights," said Cardona. "Some are state-based and some are federal-based, but if I start using a mark before you in the same area of goods or services, I've got rights to the mark over you."
It remains unclear whether FiftyThree will win the trademark, as paper is a term used by many other products, apps, and services that predate even its own app. FiftyThree has not said whether it will pursue legal action against Facebook, but Petschnigg says the company is "keeping its options open."

For now, FiftyThree has asked Facebook to "build a brand name of their own" and to stop "using our brand name."

Paper by FiftyThree can be downloaded from the App Store for free. [Direct Link]

Paper by Facebook can be downloaded from the App Store for free. [Direct Link]

Top Rated Comments

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Posted: 11 months ago
Facebook should have called their app Facebook Paper to prevent any misrepresentation on their part.
Rating: 9 Votes
Posted: 11 months ago
fair play to FiftyThree, they did use it first for an app name.

facebook should know better, and use a different name.
Rating: 9 Votes
Posted: 11 months ago
How about they both come up with a name of their own!
Rating: 8 Votes
Posted: 11 months ago
I guess I should trademark 'trademark'. :)
Rating: 5 Votes
Posted: 11 months ago
This "Paper" app should be called "Facebook for iOS"
Rating: 3 Votes
Posted: 11 months ago
1. Trademark 'USPTO'

2. Sue USPTO
Rating: 3 Votes
Posted: 11 months ago
FiftyThree stole their company name from an existing software developer,. Even the trademark office agreed, and FiftyThree's sly moves against Figure 53 are an amazing read.

This is the perfect punishment for FiftyThree! Beautiful Karma:

http://figure53.com/notes/2014-02-04-david-and-goliath/
Rating: 3 Votes
Posted: 11 months ago
I can sympathize with Paper's creator's emotionally, but "paper" is a generic single word, which applies well to both apps but in different ways: they are not competitors. And I don't in any way believe that Facebook felt the need to "use" 53's brand to boost awareness of their own efforts (if anything, the reverse will happen, benefitting 53).

If I were 53, I'd use this chance to build the more unique, and more useful (for future projects) brand: "53" itself. Push "Paper by 53" or even "Paper 53" or something. Or is if "FiftyThree?" See--they have more important branding fish to fry!

"Paper" alone was never great for branding or search/discoverability anyway. (And I don't think the app as listed was ever "paper" alone anyway, was it?)

So I say, make lemons from this lemonade, and boost awareness of a name people can search for! Leave the "generic word" problem to Facebook, and let multiple different apps use that word freely if they wish--as long as they're not pretending to BE one another, or "stealing" awareness intentionally.

(I do think filing a trademark might be smart regardless, to protect themselves in case Facebook ever comes after THEM.)
Rating: 3 Votes
Posted: 11 months ago
If 53 was so concerned about the use of "Paper" in other apps, why didn't they go to the trouble of trying to trademark "Paper", oh, I don't know -- two years ago?!

It sure looks 53 is just trying to get money from Facebook. This is one of those rare instances where I hope Facebook is victorious.
Rating: 2 Votes
Posted: 11 months ago

fair play to FiftyThree, they did use it first for an app name.

facebook should know better, and use a different name.

Nope, wrong: Paper by 53 stole the name from Paper (MiSoft) and unlike Facebook, their app does the exact same thing as well.

So, pure karma.

From daringfireball.net

Paper, by MiSoft ★
iOS app developer MiSoft, in an updated description for their drawing app Paper:

"When we began working on a pure, simple, inclusive drawing app, we decided to give it the most basic of names, Paper.

We followed Apple’s Rules, that is, we went into our Developer account and created the App “Paper”. The name Paper was assigned to us by Apple as NO ONE ELSE was using it.

While working on the app over many months, other apps named “Paper” came and went. How? Do to glitches in Apple’s system. A Developer can add other words to an un-available name, or open an account registered outside the US, create an app with the same name as an existing US app, get the app approved for sale outside the US, then set the app territories to make it available in the US! They can even change the name of an older, existing non-US app and enjoy what looks like an earlier first use.

We pointed these glitches out to Apple at WWDC 2012 and, well, the next day another “Paper” app, one which added other words after the name Paper so it could post in the US App Store, received an AWARD! We felt somewhat put upon. That other app was very well funded, money talks, and they had been out “breaking things” in our market for a while. There are Best Practices in the Developer world against, in Apple’s words, “confusingly similar” names. Why didn’t that matter for these guys? Why is this not only tolerated, but awarded? Which Rules do we follow; the posted rules, the rules others use, the rules which work, or the rules which we believe in? A conundrum in many areas of mobile today.

We approached the makers of that other Paper app on the floor of WWDC after they received their award, told them our story, and offer to discuss settling this. We even later sent a message to their CEO. Nothing. So we’ve been considering our options.

Now we see this other “Paper” app is upset that an even larger company has also chosen to name an app “Paper”, same trick, by adding more words to the end."

An interesting twist on FiftyThree’s complaint regarding Facebook Paper.

Rating: 2 Votes

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