{"id":1133,"date":"2012-10-25T00:31:44","date_gmt":"2012-10-25T00:31:44","guid":{"rendered":"http:\/\/ncjolt.org\/?p=1133"},"modified":"2020-06-04T20:54:06","modified_gmt":"2020-06-04T20:54:06","slug":"cvg-sab-llc-v-facebook-inc-controversy-over-the-new-want-button","status":"publish","type":"post","link":"https:\/\/journals.law.unc.edu\/ncjolt\/blogs\/cvg-sab-llc-v-facebook-inc-controversy-over-the-new-want-button\/","title":{"rendered":"CVG-SAB, LLC v. FACEBOOK INC: Controversy Over the New \u201cWANT\u201d Button"},"content":{"rendered":"

Wednesday, October 24, 2012, by Kelly Anderson
\nAs recently expressed by David Bell and Nick Nelson, \u201c[y]ou can\u2019t always get what you want<\/a>, and sometimes just wanting can be problematic.\u201d
\nEarlier this month, Facebook launched a new \u201cwant\u201d feature<\/a> to a select group of users, allowing them to create \u201cwishlists\u201d of items they would like to eventually purchase.\u00a0 The new \u201cwant\u201d button, part of Facebook\u2019s new \u201cCollections\u201d platform<\/a>, was intended to allow users to engage with these collections of items, share what they are interested in, and click through and buy the items they want via Facebook.
\nHowever, on October 12, just days after the launch of the new \u201cwant\u201d button, Detroit company CVG-SAB, LLC filed a complaint<\/a> against Facebook in the U.S. District Court for the Eastern District of Michigan, alleging trademark infringement, unfair competition, and violations of the Lanham Act, Common Law of the State of Michigan, and the Michigan Consumer Protection Act. \u00a0\u00a0CVG-SAB claims that the feature introduced by Facebook is very similar to the service that it has been providing in the online marketplace since 2010<\/a> through its websites, wantbutton.com and wanttt.com. It has been established that the company owns multiple U.S. trademark<\/a> registrations and has several more applications pending for the term \u201cwant\u201d when used in this online wishlist context.
\nAdditionally, CVG-SAB claims that Facebook\u2019s new platform is causing confusion<\/a> in the marketplace, based on the several inquiries CVG-SAB has received about whether or not the new Facebook button and overall platform is related to its own \u201cwant\u201d button and services. \u00a0As referenced in the complaint, CVG-SAB contracts with Internet retail merchants<\/a> including Tommy Bahama, Burlington Coat Factory, and Frederick\u2019s of Hollywood.
\nThe Michigan company is seeking temporary, preliminary, and permanent injunctions<\/a> against Facebook\u2019s use of the \u201cwant\u201d button service mark or any other designation that is similar to the \u201cwant\u201d button.\u00a0 They are also seeking damages<\/a>, including any profits that Facebook has already gained through its use of the \u201cwant\u201d button.
\nIt is worth pointing out that when one clicks<\/a> the \u201cwant\u201d button on these retail sites contracting with CVG-SAB, a new window opens, inviting users to install the \u201cWANT button\u201d app on their Facebook account. This app<\/a> allows users to \u201ckeep track of the products [they] want from anywhere on the web in one convenient location on Facebook.\u201d\u00a0 Essentially, the \u201cwant\u201d button promoted by CVG-SAB has already been integrated<\/a> into the Facebook realm as an application approved by Facebook. \u00a0The terms involved in this fact pattern are further meshed due to the \u201cWANT button\u201d app\u2019s description<\/a> of itself as \u201cThe \u2018Like\u2019 Button for Shopping,\u201d clearly referencing Facebook\u2019s \u201cLike\u201d button, for which it filed numerous applications with the USPTO for trademark protection.
\nIn 2010, Facebook filed over ten applications with the USPTO to register<\/a> its \u201cLike\u201d button and the word \u201cLIKE.\u201d\u00a0 In its fight for the trademark, one of the main issues was the commonality<\/a> of the word and the fact that it is used by many websites in various contexts. \u00a0\u00a0Facebook opposed this position by arguing that the combination of the button, image, color, and text creates an image that is recognizable<\/a> to Facebook users and has distinctiveness as a mark.
\nFacebook has not yet responded to CVG-SAB\u2019s complaint. However, it is clear that arguing that the word \u201cwant\u201d is generic<\/a> and not solid enough for trademark protection would undercut their own argument in favor of the \u201cLike\u201d button.\u00a0 Thus, Facebook may be better off arguing<\/a> that \u201cwant\u201d is simply a description of the button\u2019s function and falls short of the secondary meaning that is required for trademark protection.<\/p>\n","protected":false},"excerpt":{"rendered":"

Wednesday, October 24, 2012, by Kelly Anderson As recently expressed by David Bell and Nick Nelson, \u201c[y]ou can\u2019t always get what you want, and sometimes just wanting can be problematic.\u201d Earlier this month, Facebook launched a new \u201cwant\u201d feature to a select group of users, allowing them to create \u201cwishlists\u201d of items they would like …<\/a><\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":[],"categories":[51],"tags":[],"_links":{"self":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/1133"}],"collection":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/comments?post=1133"}],"version-history":[{"count":1,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/1133\/revisions"}],"predecessor-version":[{"id":7673,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/1133\/revisions\/7673"}],"wp:attachment":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/media?parent=1133"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/categories?post=1133"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/tags?post=1133"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}