Shagbook Attacks Facebook’s Trademark, Calling It Generic

In May, Facebook moved to stop a U.K. dating site called Shagbook from registering a trademark under that name. Now Shagbook is pushing back with a novel claim, saying that the term “facebook” itself is generic and not worthy of a trademark.

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In its filing [PDF] with the U.S. Patent and Trademark Office, Shagbook also says that Facebook has been engaged in “trademark bullying,” pushing around other sites and “abusively using oppositions, litigation, and threats of the same to maintain a competitive market advantage.”

Shagbook also goes into the history of the term “facebook,” noting that “books containing pictures of the members of an organization along with biographical information have been in existence for many decades,” used by college fraternities and other groups. Moving these facebooks online and making them searchable was a natural progression, and by 2003 “various universities and colleges around the country had online books” that were often called facebooks. “Widespread uses of the words ‘face’ and ‘book’ in trademarks… pre-date [Facebook’s] existence by decades,” writes Shagbook’s lawyer.

In an interview with paidContent, Shagbook spokesman Mark Brooks said that the founder of Shagbook—who he declined to name—is an American who has spent many years living in the U.K. The founder has been using the term “Shagbook” in his personal life since the year 2000, and created the Shagbook website as a casual dating site in the U.K. back in 2006, before Facebook was popular.

“He very innocently created the name ‘Shagbook,’ using it to refer to his version of the ‘little black book,’” said Brooks, an online-dating industry consultant who blogs at Online Personals Watch. 

Shagbook, which is based in the U.K. but also operates in the U.S. and several other English-speaking countries, advertises itself as “the hottest place to hook up with local singles for no strings attached adult dating.” The site suggests that users who sign up could “find a naughty date tonight!”

Shagbook’s filing argues that Facebook is a generic term, and that even Facebook itself has used the term in a generic sense. In any case, Shagbook is specifically a dating site, while Facebook is a general-purpose social networking site, which also means it’s unlikely that consumers will be confused, argues Shagbook’s lawyer.

Actually canceling Facebook’s trademark seems like a real longshot for Shagbook, but it’s notable that the company thinks its name is valuable enough to keep this fight up. It will be interesting to see if the company’s legal strategy of using Facebook’s own history of trademark litigation against it goes anywhere.

Some big internet companies have had some success knocking out sites with names they don’t like—eBay (NSDQ: EBAY) is a prime example, having nuked CoinBay, PerfumeBay, and many other examples. But it’s still far from clear if Facebook will be able to keep the internet clean of sites that end in “—book.com,” especially as all websites increasingly incorporate social features.

Facebook’s lawsuits against Teachbook and FacebookOfSex are both ongoing. The company reached a settlement with a parody site called Lamebook, which is still up.

A Facebook spokesman didn’t respond to a request for comment about the case.

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The Daily Start-Up: Can Business Networking Software Really Be Free?

Top stories in today’s VentureWire:

Art by Mike Lucas

Ever since Mark Zuckerberg and his co-founders created Facebook Inc., more companies are making software that works like the social networking phenomenon, but with a business twist. While start-ups Jive Software Inc. and Yammer Inc. are proving there’s corporate demand for this service, their business models expose a debate over whether business customers should pay for software, as they’re accustomed to, or use a free Web-based service that encourages them to upgrade. VentureWire reports on the state of business networking software.

Philo Media Corp., which recently pivoted from a social TV check-in service to a way for entertainment studios to spread advertising to consumers across social media, has been acquired by LocalResponse Inc., an advertising platform that aggregates public posts and check-ins. Philo had raised an undisclosed amount of funding from DFJ Gotham Ventures, Eniac Ventures, North Bridge Venture Partners and Stephen Lambert, a television producer whose credits include “Wife Swap,” “Faking It” and “Secret Millionaire.”

Also in today’s VentureWire: After receiving the green light from the FDA for its high-tech treatment for baldness–a robotic system to transplant individual hair follicles–Restoration Robotics Inc. said it has raised a $41 million Series C round that it expects to carry it to profitability…Brightsource Energy Inc., which is currently in registration to go public, is now ready to substantially increase the power output of its solar projects by adding storage capability…and Tudou Holdings Ltd. unveiled estimated terms of an initial public offering of 6 million American depositary shares as the Chinese video-website owner aims to raise proceeds to fund growth efforts.

(VentureWire is a daily newsletter with comprehensive analysis of all the investments, deals and personnel moves involving start-ups and their venture backers. For a two-week trial, click here.)

Elsewhere around the Web:

Can New York ever rival Silicon Valley? The New York Times asks several local venture capitalists and entrepreneurs for their opinion on what the city needs to compete with the West Coast. Angel investor and entrepreneur Chris Dixon also weighs in separately on his blog.

Start-up CEOs — maybe you should think twice about raising that fourth round of funding. Altos Ventures’ Ho Nam analyzed more than 60 companies from his firm’s portfolio to find out when VCs decide to make a CEO change. He found that if a company needed four rounds or more, the replacement rate was 85%.

Venture firm Alsop Louie Partners’ latest associate is a 20-year-old Stanford student. Meet Ernestine Fu, whom Forbes profiles as an “all-star entrepreneur.”

Silicon Valley isn’t exactly known for its style, so we think GQ’s list of the “15 Worst-Dressed Men of Silicon Valley” is a bit unfair. It’s also odd because, as Fortune’s Dan Primack points out, six of those on the list don’t actually live in Silicon Valley. But that doesn’t mean it’s not fun to look at the slideshow.

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