New York start-up, FiftyThree, Inc. (“FiftyThree”) filed a trademark application with the United States Patent & Trademark Office (USPTO) on May 11, 2012 for the mark PAPER BY FIFTYTHREE. The trademark application sought protection for computer application software for smart phones and tablets, namely software for use in writing on smart phones and tablets with a stylus or finger. Essentially, the product permits you to draw, sketch and create designs on mobile devices. The company alleged that it first used the trademark PAPER BY FIFTYTHREE in commerce on March 29, 2012. The trademark was issued a Certificate of Registration on December 31, 2013.
On January 30, 2014, Facebook announced it was launching an app called Paper. Facebook’s standalone app is a content reader and does not have a drawing element. FiftyThree requested that Facebook change the name of its app and although, it has been reported that Facebook apologized for not contacting FiftyThree sooner with regard to the launch of its app PAPER, it has not agreed to change the name of its news reader app.
On the same day that Facebook announced its new app called Paper, FiftyThree filed a trademark application for the mark PAPER with the USPTO. The same goods included in the first trademark application (for PAPER BY FIFTYTHREE) were identified here , but FiftyThree expanded the goods description to also include computer application software and services for creating, editing, and compiling content to share with others via a social network, as well as computer hardware and software programs and services for multimedia applications. I believe that FiftyThree filed this second trademark application to reinforce its claim to the mark PAPER BY FIFTYTHREE, but also to test its rights to “Paper” alone. In addition, I think it was attempting to assert pressure on Facebook to change the name of its app. Since this application was filed less than 3 months ago, it has not yet been reviewed by an Examiner at the USPTO yet.