CVG-SAB, LLC v. FACEBOOK INC: Controversy Over the New “WANT” Button

Wednesday, October 24, 2012, by Kelly Anderson

As recently expressed by David Bell and Nick Nelson, “[y]ou can’t always get what you want, and sometimes just wanting can be problematic.”

Earlier this month, Facebook launched a new “want” feature to a select group of users, allowing them to create “wishlists” of items they would like to eventually purchase.  The new “want” button, part of Facebook’s new “Collections” platform, 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.

However, on October 12, just days after the launch of the new “want” button, Detroit company CVG-SAB, LLC filed a complaint 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.   CVG-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 through its websites, wantbutton.com and wanttt.com. It has been established that the company owns multiple U.S. trademark registrations and has several more applications pending for the term “want” when used in this online wishlist context.

Additionally, CVG-SAB claims that Facebook’s new platform is causing confusion 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 “want” button and services.  As referenced in the complaint, CVG-SAB contracts with Internet retail merchants including Tommy Bahama, Burlington Coat Factory, and Frederick’s of Hollywood.

The Michigan company is seeking temporary, preliminary, and permanent injunctions against Facebook’s use of the “want” button service mark or any other designation that is similar to the “want” button.  They are also seeking damages, including any profits that Facebook has already gained through its use of the “want” button.

It is worth pointing out that when one clicks the “want” button on these retail sites contracting with CVG-SAB, a new window opens, inviting users to install the “WANT button” app on their Facebook account. This app allows users to “keep track of the products [they] want from anywhere on the web in one convenient location on Facebook.”  Essentially, the “want” button promoted by CVG-SAB has already been integrated into the Facebook realm as an application approved by Facebook.  The terms involved in this fact pattern are further meshed due to the “WANT button” app’s description of itself as “The ‘Like’ Button for Shopping,” clearly referencing Facebook’s “Like” button, for which it filed numerous applications with the USPTO for trademark protection.

In 2010, Facebook filed over ten applications with the USPTO to register its “Like” button and the word “LIKE.”  In its fight for the trademark, one of the main issues was the commonality of the word and the fact that it is used by many websites in various contexts.   Facebook opposed this position by arguing that the combination of the button, image, color, and text creates an image that is recognizable to Facebook users and has distinctiveness as a mark.

Facebook has not yet responded to CVG-SAB’s complaint. However, it is clear that arguing that the word “want” is generic and not solid enough for trademark protection would undercut their own argument in favor of the “Like” button.  Thus, Facebook may be better off arguing that “want” is simply a description of the button’s function and falls short of the secondary meaning that is required for trademark protection.