77287043

Side - 1
NOTICE OF ABANDONMENT
MAILING DATE: Mar 23, 2009
The trademark application identified below was abandoned in full because a response to the Office Action
mailed on Aug 25, 2008 was not received within the 6-month response period.
If the delay in filing a response was unintentional, you may file a petition to revive the application with a fee.
If the abandonment of this application was due to USPTO error, you may file a request for reinstatement.
Please note that a petition to revive or request for reinstatement must be received within two months
from the mailing date of this notice.
For additional information, go to http://www.uspto.gov/teas/petinfo.htm. If you are unable to get the

information you need from the website, call the Trademark Assistance Center at 1-800-786-9199.
SERIAL NUMBER: 77287043
MARK: SOCIALADS
OWNER: Facebook, Inc.
Side - 2
UNITED STATES PATENT AND TRADEMARK OFFICE
COMMISSIONER FOR TRADEMARKS FIRST-CLASS
P.O. BOX 1451 MAIL
ALEXANDRIA, VA 22313-1451 U.S POSTAGE
PAID
Anne H. Peck
COOLEY GODWARD KRONISH LLP
3000 El Camino Real, Five Palo Alto Sq.
Palo Alto , CA 94306
To: Facebook, Inc. (trademarks@cooley.com)
Subject: TRADEMARK APPLICATION NO. 77287043 - SOCIALADS - N/A
Sent: 8/25/2008 8:12:44 PM
Sent As: ECOM117@USPTO.GOV
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SERIAL NO: 77/287043
MARK: SOCIALADS
*77287043*
CORRESPONDENT ADDRESS:
Anne H. Peck RESPOND TO THIS ACTION:
COOLEY GODWARD KRONISH LLP http://www.uspto.gov/teas/eTEASpageD.htm
Palo Alto CA 94306 GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/main/trademarks.htm
APPLICANT: Facebook, Inc.
CORRESPONDENT’S
REFERENCE/DOCKET NO:
N/A
CORRESPONDENT E-MAIL ADDRESS:
trademarks@cooley.com
OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 8/25/2008
This Office action is in response to applicant’s communications filed on 4/30/08, 6/30/08 and 7/14/08.
Applicant’s revocation and appointment of attorney has been entered into the record and accepted.
Applicant’s amendment of its filing basis from Section 1(a) (Use) to Section 1(b) (Intent to Use) has
been entered into the record and accepted. Accordingly, the requirement for the applicant to submit a
specimen of use is hereby withdrawn.
Applicant’s arguments against the Section 2(e)(1) refusal have been entered into the record.
Nevertheless, as detailed below, the Section 2(e)(1) refusal is hereby continued and maintained.
The Applicant’s arguments against the potential refusal of registration under Section 2(d) based on the
citation of prior pending application Serial Nos. 77028006 and 77163257 have been noted. Insofar as
Application Serial No. 77163257 was abandoned on February 16, 2008, it is no longer a bar to the
registration of applicant’s mark. However, the prior-pending Application Serial No. 77028006 has
since registered. Therefore, as detailed below, registration is refused under Section 2(d) of the
Trademark Act.
Also, the applicant is required to provide additional information about its services.
This is a non-final action.
REFUSAL: LIKELIHOOD OF CONFUSION UNDER SECTION 2(d)

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in
U.S. Registration No. 3485532. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
§§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark
that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of
the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal
factors to be considered when determining whether there is a likelihood of confusion under Section
2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight,
and any one factor may be dominant in a given case, depending upon the evidence of record. In re
Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I.
du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the
services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60
USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re
Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case
involves a two-part analysis. The marks are compared for similarities in their appearance, sound,
connotation and commercial impression. TMEP §§1207.01, 1207.01(b). The goods and/or services are
compared to determine whether they are similar or commercially related or travel in the same trade
channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380
(Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559
(Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
The applicant has applied to register the mark SOCIALADS. The registered mark is S.O.C.I.A.L. The
dominant portion of the applicant’s mark, “SOCIAL”, is highly similar to the term that is comprised by
the registrant’s mark. In this respect, the literal portions of the applicant’s mark and that of the
registrant are highly similar in appearance, sound, connotation and commercial impression, and
therefore, are likely to cause confusion as to the origin of the services.
Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or
service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.
3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81
USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered” when making purchasing decisions). In this case the first word
of the applicant’s mark is highly similar to the registered mark.
The applicant’s services are identified as “advertising and information distribution services, namely,
providing advertising space via the global computer network; promoting the goods and services of
others over the Internet.” The services named in the registration comprise services that are identified as
“advertising and publicity services, namely, promoting the goods, services, brand identity and brand
awareness of third parties via the Internet through web casting; development of marketing strategies and
concepts, namely, services enabling companies to promote free reign, user-generated content
development and social interaction to build audience participation.” Both marks are used to identify
potentially identical and closely related advertising services. The same consumers will be exposed to
the services identified with both marks. The similarities among the marks and the services of the parties
are so great as to create a likelihood of confusion.
Applicant has argued that confusion is unlikely because the term “SOCIAL” is a common word entitled
only to narrow protection, and that the consumers of the relevant services are sophisticated. The
examining attorney disagrees.
Despite the applicant’s assertion that the registrant’s acronym has another meaning, the examining
attorney notes that consumers will still perceive the registrant’s mark as being equivalent to the term
“SOCIAL”, which is the dominant first portion of the applicant’s mark.
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily
mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source
confusion. TMEP §1207.01(d)(vii); see In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983).
The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have
recognized that marks deemed “weak” or merely descriptive are still entitled to protection against the
registration by a subsequent user of a similar mark for closely related goods and/or services. This
protection extends to marks registered on the Supplemental Register. TMEP §1207.01(b)(ix); see, e.g.,
In re Clorox Co., 578 F.2d 305, 18 USPQ 337 (C.C.P.A. 1978); In re Hunke & Jochheim, 185 USPQ
188 (TTAB 1975).
Accordingly, in view of the potentially identical and closely related nature of the services of the parties
and the strong similarity of the marks and their commercial impressions, confusion as to the source of
the services is likely under Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant may respond to the refusal to
register by submitting evidence and arguments in support of registration. If the applicant chooses to
respond to the refusal to register, the applicant must also respond to the following.
CONTINUED REFUSAL UNDER SECTION 2(e)(1) OF THE TRADEMARK ACT

The examining attorney refused registration on the Principal Register because the proposed mark
merely describes the services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP
section 1209 et seq. Applicant has argued that the mark is suggestive rather than descriptive, and
asserts that “a mental leap is required to connect Applicant’s Mark to its services.” IN particular, the
applicant has asserted that “the composite mark SOCIALADS does not merely describe the services
claimed in the Application” and that the mark “does not immediately convey the nature of the services
rendered under the Mark.”
The examining attorney disagrees. Applicant’s mark SOCIALADS is merely the combination of the
two merely descriptive terms “SOCIAL” and “ADS”. The determination of whether a mark is merely
descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re
Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see,
e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be
understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in
dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding
CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant
trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
“Whether consumers could guess what the product is from consideration of the mark alone is not the
test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Relevant definitions of the term “SOCIAL” include: “relating to interaction of people: relating to the
way in which people in groups behave and interact” and “of or relating to human society, the interaction
of the individual and the group, or the welfare of human beings as members of society.” (See attached
definitions.) Applicant has conceded that the term “ADS” is merely descriptive of an aspect of the
claimed services. Indeed, the examining attorney notes that the term “ADS” is generic in relation to
the applicant’s broadly identified advertising services that are identified as “advertising and
information distribution services, namely, providing advertising space via the global computer
network; promoting the goods and services of others over the Internet.” Upon encountering the mark
used in connection with the identified services, consumers would immediately expect the applicant’s
advertising services to pertain to the way in which people interact.
Please see the attached evidence that indicates that the Applicant provides advertising services that
allow companies to send advertisements to members of social networking sites based on social actions
that members of those sites perform. (See attachments.) Indeed the applicant markets its services as
featuring a combination of social actions with advertisers’ messages, and as providing advertisements
that are attached to social stories. (See attachments.)
Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive
mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly
infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d
811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be
free to use descriptive language when describing their own goods and/or services to the public in
advertising and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB
2001). The applicant’s competitor’s should not be precluded from accurately using the descriptive
wording “SOCIAL ADS” to identify advertising services that are directed to the members of social
networking sites, that feature the images of and/or content about members of social networking sites,
and/or that are triggered by the actions of members of social networking sites.
In determining the descriptiveness of a term or mark comprising more than one element, it is
permissible to consider the significance of each element separately in the course of evaluating the term
or mark as a whole. See In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75, 71 USPQ2d 1370,
1372 (Fed. Cir. 2004) (holding PATENTS.COM merely descriptive of computer software for managing
and tracking the status of database records when noting that “the PTO may [separately] consider the
meaning of ‘patents’ and the meaning of ‘.com’ with respect to the goods identified in the
application.”); In re Save Venice N.Y., Inc., 259 F.3d 1346, 1352, 59 USPQ2d 1778, 1782 (Fed. Cir.
2001) (holding a mark primarily geographically deceptively misdescriptive for a variety of goods when
noting that “[i]t is not erroneous, however, for the examiner to consider the significance of each element
within the composite mark in the course of evaluating the mark as a whole.”); In re Med. Plastics, Inc.,
192 USPQ 239, 240 (TTAB 1976) (holding a mark generic when noting that “[t]he Examiner did
discuss each word in the mark separately in order to show that the term in its entirety was the apt name
of the applicant’s goods. This is not the same thing as dissecting a mark.”).
A mark that combines descriptive words may be registrable if the composite creates a unitary mark with
a separate, nondescriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384
(C.C.P.A. 1968) (holding SUGAR & SPICE not merely descriptive of bakery products because of the
mark’s immediate association with the nursery rhyme “sugar and spice and everything nice”). However,
the mere combination of descriptive words does not automatically create a new nondescriptive word or
phrase. See, e.g., In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988) (holding
GROUP SALES BOX OFFICE merely descriptive for theater ticket sales services).
The registrability of a mark created by combining only descriptive words depends on whether a new
and different commercial impression is created, and/or the mark created imparts an incongruous
meaning as used in connection with the goods and/or services. TMEP §1209.03(d); e.g., In re Copytele,
Inc., 31 USPQ2d 1540, 1542 (TTAB 1994); In re Associated Theatre Clubs, 9 USPQ2d at 1662.
Where, as in this case, the combination of the descriptive words creates no incongruity, and no
imagination is required to understand the nature of the goods and/or services, the mark is merely
descriptive.
Accordingly, the refusal is continued and maintained.

INFORMATION ABOUT SERVICES REQUIRED

To permit proper examination of the application, applicant must submit additional information about the
services. See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004);
TMEP §814. The requested information should include fact sheets, brochures, and/or advertisements.
If these materials are unavailable, applicant should submit similar documentation for services of the
same type, explaining how its own services will differ. If the services feature new technology and no
information regarding competing services is available, applicant must provide a detailed factual
description of the services.
The submitted factual information must make clear what the services are and how they are rendered,
their salient features, and their prospective customers and channels of trade. Conclusory statements
regarding the services will not satisfy this requirement for information.
Applicant should also provide responses to the following inquires about the applicant’s advertising
services that are, or will be, provided in connection with the proposed mark:
Do, or will, the services feature advertisements that are sent to the members of social networking
sites?
Do, or will, the services feature advertisements that are triggered by actions performed by
members of social networking sites?
Do, or will, the services feature advertisements that contain social content about members of
social networking sites?
Do, or will, the services feature advertisements that contain the images and/or names of members
of social networking sites?
Failure to respond to a request for information is an additional ground for refusing registration. See In
re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003). Merely stating that information about
the services is available on applicant’s website is an inappropriate response to a request for additional
information and is insufficient to make the relevant information of record. See In re Planalytics, 70
USPQ2d at 1457-58.
John Kelly /jmck/
Trademark Attorney
Law Office 117
571.272.9412
Fax: 571.273-9117 (official responses only)
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the
form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received
notification of the Office action via e-mail. For technical assistance with the form, please e-mail
TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining
attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed
responses.
If responding by paper mail, please include the following information: the application serial number, the
mark, the filing date and the name, title/position, telephone number and e-mail address of the person
signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial
filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online
system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of
the complete TARR screen. If the status of your application has not changed for more than six months,
please contact the assigned examining attorney.
To: Facebook, Inc. (trademarks@cooley.com)
Subject: TRADEMARK APPLICATION NO. 77287043 - SOCIALADS - N/A
Sent: 8/25/2008 8:12:49 PM
Attachments:
IMPORTANT NOTICE
USPTO OFFICE ACTION HAS ISSUED ON 8/25/2008 FOR
APPLICATION SERIAL NO. 77287043
Please follow the instructions below to continue the prosecution of your application:
VIEW OFFICE ACTION: Click on this link

http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77287043&doc_type=OOA&mail_date
(or copy and paste this URL into the address field of your browser), or visit
http://tmportal.uspto.gov/external/portal/tow and enter the application serial number to access
the Office action.
PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24
hours of this notification.
RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if
a response is required; (2) how to respond; and (3) the applicable response time period. Your response
deadline will be calculated from 8/25/2008.
Do NOT hit “Reply”to this e-mail notification, or otherwise attempt to e-mail your response, as
the USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you
respond online using the Trademark Electronic Application System response form at
http://www.uspto.gov/teas/eTEASpageD.htm.
HELP: For technical assistance in accessing the Office action, please e-mail
TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office
action.
WARNING
1. The USPTO will NOT send a separate e-mail with the Office action attached.
2. Failure to file any required response by the applicable deadline will result in
the ABANDONMENT of your application.
Trademark Snap Shot Amendment & Mail Processing Stylesheet
(Table presents the data on Amendment & Mail Processing Complete)
OVERVIEW
SERIAL NUMBER 77287043 FILING DATE 09/24/2007
REG NUMBER 0000000 REG DATE N/A
REGISTER PRINCIPAL MARK TYPE SERVICE MARK
INTL REG # N/A INTL REG DATE N/A
TM ATTORNEY KELLY, JOHN M L.O. ASSIGNED M80-NOT FOUND
PUB INFORMATION
RUN DATE 07/17/2008
PUB DATE N/A
STATUS 661-RESPONSE AFTER NON-FINAL-ACTION-ENTERED
STATUS DATE 07/01/2008
LITERAL MARK ELEMENT SOCIALADS
DATE ABANDONED N/A DATE CANCELLED N/A
SECTION 2F NO SECTION 2F IN PART NO
SECTION 8 NO SECTION 8 IN PART NO
SECTION 15 NO REPUB 12C N/A
RENEWAL FILED NO RENEWAL DATE N/A
DATE AMEND REG N/A
FILING BASIS
FILED BASIS CURRENT BASIS AMENDED BASIS
1 (a) YES 1 (a) NO 1 (a) NO
1 (b) NO 1 (b) YES 1 (b) YES
44D NO 44D NO 44D NO
44E NO 44E NO 44E NO
66A NO 66A NO
NO BASIS NO NO BASIS NO
MARK DATA
STANDARD CHARACTER MARK YES
MARK DRAWING CODE 4-STANDARD CHARACTER MARK
COLOR DRAWING FLAG NO
CURRENT OWNER INFORMATION

PARTY TYPE 10-ORIGINAL APPLICANT
NAME Facebook, Inc.
ADDRESS 156 University Avenue

Palo Alto, CA 94301
ENTITY 03-CORPORATION
CITIZENSHIP Delaware
GOODS AND SERVICES

INTERNATIONAL CLASS 035
DESCRIPTION TEXT Advertising and information distribution services, namely,

providing advertising space via the global computer network;
promoting the goods and services of others over the Internet
GOODS AND SERVICES CLASSIFICATION

INTERNATIONAL 035 FIRST USE NONE FIRST USE NONE CLASS 6-ACTIVE
CLASS DATE IN STATUS
COMMERCE
DATE
MISCELLANEOUS INFORMATION/STATEMENTS
CHANGE IN REGISTRATION NO
PSEUDO MARK SOCIAL ADS
PROSECUTION HISTORY
DATE ENT CD ENT DESCRIPTION ENT NUM
TYPE
07/16/2008 ACEC I AMENDMENT FROM APPLICANT ENTERED 015
07/16/2008 CRFA I CORRESPONDENCE RECEIVED IN LAW OFFICE 014
07/14/2008 MAIL I PAPER RECEIVED 013
07/01/2008 TEME I TEAS/EMAIL CORRESPONDENCE ENTERED 012
07/01/2008 ALIE A ASSIGNED TO LIE 010
06/30/2008 TROA I TEAS RESPONSE TO OFFICE ACTION RECEIVED 009

04/30/2008 ARAA I ATTORNEY REVOKED AND/OR APPOINTED 008
04/30/2008 REAP I TEAS REVOKE/APPOINT ATTORNEY RECEIVED 007
12/31/2007 GNRN O NOTIFICATION OF NON-FINAL ACTION E-MAILED 006
12/31/2007 GNRT F NON-FINAL ACTION E-MAILED 005
12/31/2007 CNRT R NON-FINAL ACTION WRITTEN 004
12/05/2007 DOCK D ASSIGNED TO EXAMINER 003
09/28/2007 MPMK O NOTICE OF PSEUDO MARK MAILED 002
09/27/2007 NWAP I NEW APPLICATION ENTERED IN TRAM 001
CURRENT CORRESPONDENCE INFORMATION

ATTORNEY Anne H. Peck
CORRESPONDENCE ADDRESS Anne H. Peck

Palo Alto CA 94306
DOMESTIC REPRESENTATIVE NONE

Trademark Snap Shot Amendment to Delete or Correct Basis
(Table presents the data on Amendment to Delete or Correct Basis)
OVERVIEW

PUB INFORMATION
RUN DATE 07/17/2008
PUB DATE N/A
DATE AMEND REG N/A
FILING BASIS
1 (a) YES 1 (a) NO 1 (a) NO
1 (b) NO 1 (b) YES 1 (b) YES
66A NO 66A NO
MARK DATA


NAME Facebook, Inc.

Palo Alto, CA 94301
GOODS AND SERVICES



INTERNATIONAL 035 FIRST USE NONE FIRST USE NONE CLASS 6-ACTIVE
COMMERCE
DATE
PROSECUTION HISTORY
TYPE
07/16/2008 ACEC I AMENDMENT FROM APPLICANT ENTERED 015
07/14/2008 MAIL I PAPER RECEIVED 013



Palo Alto CA 94306

Trademark Snap Shot Amendment & Mail Processing Stylesheet
(Table presents the data on Amendment & Mail Processing Complete)
OVERVIEW
PUB INFORMATION
RUN DATE 07/02/2008
PUB DATE N/A
DATE AMEND REG N/A
FILING BASIS
1 (a) YES 1 (a) YES 1 (a) NO
1 (b) NO 1 (b) NO 1 (b) NO
66A NO 66A NO
MARK DATA

NAME Facebook, Inc.

Palo Alto, CA 94301
GOODS AND SERVICES



INTERNATIONAL 035 FIRST USE 09/20/2007 FIRST USE 09/20/2007 CLASS 6-ACTIVE
COMMERCE
DATE
PROSECUTION HISTORY
TYPE



Palo Alto CA 94306

PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 04/2009)
Response to Office Action
The table below presents the data as entered.

Input Field Entered
SERIAL NUMBER 77287043
LAW OFFICE
LAW OFFICE 117
ASSIGNED
MARK SECTION (no change)
ARGUMENT(S)
RESPONSE TO OFFICE ACTION
Applicant Facebook, Inc. (“Applicant”), by and through its undersigned counsel, hereby
responds as follows to Office Action No. 1 issued in the instant application on December 31, 2007.
In the Office Action, the Examining Attorney expressed concern that the SOCIALADS mark
(the “Mark” or “Applicant’s Mark”) is merely descriptive under Section 2(e), and that there may be a
likelihood of confusion with prior pending applications. As discussed below, the Examining Attorney
should permit the Application to proceed to publication because:
· The Mark is suggestive rather than descriptive as it does not merely describe the claimed
services, and a mental leap is required to connect Applicant’s Mark to its services and
· There is no likelihood of confusion with the mark S.O.C.I.A.L. (the “Cited Mark”) since
Applicant’s Mark and the Cited Mark convey distinct overall commercial impressions, and
because the shared component, “social,” is a common word entitled to narrow protection.
I. The Mark SOCIALADS is Not Merely Descriptive

The Examining Attorney refused registration, claiming that the mark SOCIALADS is merely
descriptive under Section 2(e). In support of this refusal, the Examining Attorney noted that the
definition of “social” is “relating to interaction of people” and that the definition of “ads” is
advertisement. However, Applicant respectfully disagrees with the Examining Attorney’s assessment
of the relationship between the Mark and the services claimed. Although the separate terms “social”
and “ads” may have descriptive aspects, the composite mark SOCIALADS does not merely describe
the services claimed in the Application. Moreover, the Mark does not immediately convey the nature of
the services rendered under the Mark. For these reasons, the Mark is suggestive, rather than descriptive,
of the claimed services.

A. Applicant’s Mark is Not Merely Descriptive of the Claimed Services
Under the Trademark Manual of Examining Procedure (“TMEP”), descriptiveness must be determined
in relation to the goods or services claimed in the application. See TMEP §§ 1209.01(b), 1209.03(e). In
the instant case, the services claimed in the Application are “advertising and information distribution
services, namely, providing advertising space via the global computer network; promoting the goods
and services of others over the Internet.”

Applicant respectfully submits that the evidence provided by the Examining Attorney in the issued
Office Action does not tend to show that the Mark is merely descriptive of the services noted above.
Although concededly “ads” is merely descriptive of an aspect of the claimed services, the term
“social” is not similarly descriptive of advertising and information distribution services or promoting
the goods and services of others over the Internet. Indeed, Applicant notes that there are over 20
registered marks that contain the term “social” that also claim services related to advertising or
promotions. See Declaration of Anne H. Peck in Support of Response to Office Action (“Peck Decl.”),
Exhibit A. The existence of these third-party registrations indicates that the term “social” is not merely
descriptive of advertising or promotions services and, more particularly, that the composite mark
SOCIALADS is not merely descriptive of the services claimed.
B. Applicant’s Mark is Suggestive Because a Mental Leap is Required to

Determine Applicant’s Services From Applicant’s Mark
Applicant’s Mark is suggestive, rather than merely descriptive, because the Mark does not
merely describe Applicant’s services. A mark is considered suggestive if it “requires imagination,
thought and perception to reach a conclusion as to the nature of the goods.” See Stix Products, Inc. v.
United Merchants & Mfs., Inc., 160 U.S.P.Q. 777, 785 (S.D.N.Y. 1968). Conversely, for a mark to be
considered merely descriptive, the connection between the mark and the applicant’s goods or services
must be instantaneous. See Investacorp, Inc. v. Arabian Investment Banking Corp., 19 U.S.P.Q.2d 1056
(11th Cir. 1991).
The multi-step reasoning in the Office Action actually shows that imagination, thought and
perception is necessary to determine the nature of the Applicant’s services from Applicant’s Mark.
The Examining Attorney first defines “social” as “relating to interaction of people,” then notes that
“the applicant provides advertising that is based on user actions on its online social network” and then
concludes that the Mark is merely descriptive because it refers to advertisements that are triggered by
and/or relate to the interactions of people. This line of reasoning, taking several steps to get from
SOCIALADS to Applicant’s services, shows that a mental leap is required, making the SOCIALADS
mark suggestive, not merely descriptive.

Applicant notes, however, that its services differ from those described by the Examining
Attorney. The services offered under the SOCIALADS mark are not advertisements that are “triggered
by and/or relate to the interactions of people.” The services, which are sold to companies purchasing
marketing services, not to the individual users enjoying Applicant’s networking site, allow companies
to target their advertising to a certain user based on characteristics of the profile of that user’s Facebook
“friend.” For example, if a Facebook user’s friend has news delivered to their news-feed about
baseball, the company may choose to target that user for advertisements about sports-related clothing.
As this example illustrates, the services actually have very little to do with “the interactions of people,”
and more to do with the characteristics of Facebook user profiles – an aspect of Facebook that is not
“social,” except in the most abstract sense. Because these services are even one step further removed
from the analysis described above, the mental leap required between Applicant’s Mark and its services
is even greater
Applicant’s Mark is comparable to the one at issue in Airco, Inc. v. Air Products and
Chemicals, Inc., 196 U.S.P.Q. 832 (T.T.A.B. 1977). In Airco, the Board found that the mark “AIR-
CARE” for Applicant’s program for maintaining anesthesia and inhalation therapy equipment and
hospital piping systems was not merely descriptive. The Board explained that, “[t]he literal meaning of
the mark, namely, ‘care of the air’ may, through an exercise of mental gymnastics and extrapolation
suggest or hint at the nature of Applicant’s services, but it does not, in any clear or precise way, serve
merely to describe Applicant’s preventative maintenance services….” Id. at 835. Similarly, as
explained above, one must exercise metal gymnastics to make the connection between the mark
SOCIALADS to Applicant’s advertising and marketing services based on the characteristics of
Facebook profiles. The literal meaning of the mark, namely, “advertisements relating to the interaction
between people” does not actually describe Applicant’s services. Moreover, because one must exercise
“mature thought or follow a multi-stage reasoning process to determine attributes of the product or
service,” and because “the mental leap between the word and the product’s attributes is not almost
instantaneous,” Applicant’s Mark is suggestive, not descriptive. See 2 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition § 11.67 (4th ed. 2004); see also In re Tennis In the Round, Inc.,
199 U.S.P.Q. 496, 498 (T.T.A.B. 1978) (TENNIS IN THE ROUND for a round tennis stadium was
suggestive); In re TBG, Inc., 229 U.S.P.Q. 759, 760 (T.T.A.B. 1986) (SHOWROOM ONLINE was
suggestive, not descriptive, of the applicant’s services of leasing databases and video disks related to
viewing interior furnishings).
In determining whether a mark is suggestive or merely descriptive, any doubt should be resolved
in the applicant’s favor. In re Bed-Check Corporation, 226 U.S.P.Q. 946, 948 (T.T.A.B. 1985)
(holding SENSORMAT not merely descriptive of a pressure-sensitive pad placed under hospital
patients for monitoring their movement in bed); see also In re Merrill Lynch, Pierce, Fenner, & Smith,
Inc., 4 U.S.P.Q.2d 1141, 1144 (Fed. Cir. 1987). Accordingly, and in light of the arguments above, the
Applicant respectfully requests that the Examining Attorney resolve all doubt in Applicant’s favor and
find that Applicant’s mark is suggestive, not merely descriptive.
II. Consumer Confusion Is Not Likely
The Examining Attorney also expressed concern that there may be a likelihood of confusion
between Applicant’s Mark and the marks in Application Nos. 77/028,006 and 77/163,257. Application
No. 77/163,257 was abandoned on February 16, 2008, and thus should not block publication of
Applicant’s mark. The remaining application, for the Cited Mark S.O.C.I.A.L., owned by Dave
Networks, Inc., claims numerous services in International Classes 35, 38 and 42, including advertising
and publicity services in Class 35.
As discussed below, consumer confusion between Applicant’s Mark and the Cited Mark is not
likely because the marks are not identical, they convey distinct overall commercial impressions, the
common portion of the marks is weak and entitled to relatively narrow protection, and the respective
parties’ sophisticated customers are likely to exercise care in their purchasing decisions.
A. The Marks Are Not Identical, And Convey Distinct Overall Commercial
Impressions
The marks at issue are not identical. Applicant’s Mark consists of two components, SOCIAL
and ADS. And, as argued by the owner of the Cited Mark in its October 30, 2007 Office Action
Response, the Cited Mark “consists of the term ‘S.O.C.I.A.L.,’ an acronym which stands for Social O
nline Community IPTV Application Library.” See Peck Decl., Exhibit B. This unique spelling of the
Cited Mark, and the fact that the acronym has another meaning, contributes to the difference in
appearance, sound and connotation between the two marks.
Visually, the marks are distinct. Applicant’s Mark contains a portion of the mark completely
lacking in the Cited Mark, namely, “ADS.” In contrast, the Cited Mark is spelled with periods between
each letter, and is intended to be identified as an acronym. Thus, the marks differ in appearance.
The marks differ in sound as well. As the owner of the Cited Mark observed, because the Cited
Mark is an acronym, it “may be pronounced either by using the word ‘SOCIAL,’ or through use of its
individual components, ‘S-O-C-I-A-L.’” See id. This difference in pronunciation further distinguishes
the marks.
Also, as the owner of the Cited Mark successfully argued in overcoming a 2(d) rejection based
on other “social” marks, “[b]ecause it is an acronym, the [Cited Mark] has an inherent and independent
meaning that distinguishes it from an otherwise identical mark utilizing the term ‘SOCIAL.’” See id.
The Applicant agrees with this argument, supported by Astra Pharmaceutical Products, Inc. v. Beckman
Instruments, Inc., 220 U.S.P.Q. 786, 789-790 (1st Cir. 1983), which found two otherwise identical
“ASTRA” marks distinguishable where one was an acronym. This inherent and independent meaning
of the Cited Mark makes it easily distinguishable from Applicant’s Mark.
Although the preceding analysis has focused mainly on the shared term “social,” in evaluating
likelihood of confusion, the marks must be regarded as a whole. See In re National Data Corp., 224,
U.S.P.Q. 749 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 223 U.S.P.Q.
1281 (Fed. Cir. 1984); Giant Food, Inc. v. Nations Foodservice, Inc., 218 U.S.P.Q. 390 (Fed. Cir.
1983); Schwarzkopf v. John H. Breck, Inc., 144 U.S.P.Q. 433 (C.C.P.A. 1965); In re MCI
Communications Corp., 21 U.S.P.Q.2d 1535, 1538-39 (Comm'r Pats. 1991). Unlike the Cited Mark,
Applicant’s Mark includes the term SOCIAL as well a second term -“ADS.” In this way, Applicant’s
Mark is similar to that in In re The Hearst Corporation, 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992). In
Hearst, the court found that the mark VARGAS was not confusingly similar to the mark VARGA
GIRL, and that the TTAB inappropriately analyzed the VARGA GIRL mark by stressing the “varga”
term and discounting the “girl” term.
The marks at issue in the instant Office Action cannot be compared based solely on the SOCIAL
component, while discounting the term “ADS” in Applicant’s Mark. When properly viewed in their
entireties, and considering the difference in spelling, pronunciation and connotation, SOCIALADS and
S.O.C.I.A.L. are sufficiently different as to eliminate any real likelihood of confusion.
B. The Number Of Similar Marks Reduces Consumer Confusion
Another determining factor in a likelihood of confusion analysis is the existence of other

registered marks that include a similar term and claim similar or related goods or services. See, e.g., In
re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973) (the number and nature of similar
marks in use on similar goods is a factor to be considered in evaluating likelihood of confusion); see
also TMEP § 1207.01 (the Examining Attorney should also consider the number and nature of similar
marks in use on similar goods and services). When such marks exist, the likelihood of confusion is
reduced. As the owner of the Cited Mark noted, there are “a number of trademark applications or
registrations containing the term ‘Social’ all of which are owned by different parties…theterm ‘social’
is a common and weak term, easily distinguishable by the consumer when presented in a distinct
manner or with an additional term.” See Peck Decl., Exhibit B. Indeed, Applicant’s search of the
USPTO records revealed at least 270 active registrations that contain the term “social.” See Peck Decl.,
Exhibit C.
Where similarity is based on the shared use of common terms, the terms should be considered
weak and registration should not be impeded. See Nabisco Brands, Inc. v. The Quaker Oats Co., 216
U.S.P.Q. 770, 775 (D. N.J. 1982) (CREAMY WHEAT mark not likely to be confused with registered
CREAM OF WHEAT mark, both used with enriched farina, even though the marks were similar, if not
identical, and the products targeted to the same customers through the same channels of trade); see also
Gruner + Jahr USA Publishing, Div. Of Gruner and Jahr Printing & Publishing Co. v. Meredith Corp.,
16 U.S.P.Q.2d 1583 (2d Cir. 1993) (no likelihood of confusion between registrant’s PARENTS mark
and applicant’s PARENT’S DIGEST mark, both used with magazines targeted to parents, because the
common terms are in the public domain which lessens the possibility of confusion.); Greentree
Laboratories v. G.G. Bean, Inc., 13 U.S.P.Q.2d 1161 (D. Me. 1989) (ODOR KLEEN not likely to be
confused with ODOKLEEN both used for products used to eliminate odors and overlap in customers
and channels of trade). Likewise here, the only common element of the two marks is weak and
therefore not entitled to a wide scope of protection.
C. Consumer Sophistication Weighs Against a Likelihood of Confusion
It is well settled that likelihood of confusion is reduced where purchasers and potential
purchasers are sophisticated. See Electronic Design and Sales v. E.D.S., 21 U.S.P.Q.2d 1388, 1392-
1393 (Fed. Cir. 1992); see also TMEP § 1207.01(d)(vii) (care in purchasing tends to minimize the
likelihood of confusion). The sophistication of the purchasers of services offered under the respective
marks weighs against finding a likelihood of confusion.

The Cited Mark owner noted that its services relate to computer, software and other information
technologies, and that “[c]onsumers in this field are highly educated, and they exercise a significant
degree of care in choosing products and services.” See Peck Decl., Exhibit B. Similarly, the purchasers
of the services offered under Applicant’s Mark are business professionals making important decisions
about how to spend their advertising dollars. Such professionals are generally well educated and
exercise a high level of care in making important business decisions. Because they are sophisticated,
Applicant’s customers are not likely to be confused into thinking Applicant’s services originate from
or are sponsored by the owner of the Cited Mark. Similarly, purchasers of services offered under the
Cited Mark are not likely to be confused in purchasing decisions by the existence of Applicant’s Mark.
This too weighs against a likelihood of consumer confusion.
In light of the above, Applicant respectfully requests that the Examining Attorney withdraw the
conclusion that there may be a likelihood of confusion between Applicant’s Mark and the Cited Mark
and allow this Application to proceed to publication. In the alternative, Applicant requests suspension
of this Application pending disposition of the Application No. 77/028,006. Applicant specifically
reserves the right to submit additional arguments and evidence in the future to illustrate that there is no
likelihood of confusion between Applicant’s Mark and the Cited Mark.

III. Amendment to Filing Basis
In response to the Examining Attorney’s request for a Specimen of Use, Applicant hereby
amends the filing basis of this instant application from section 1(a) to section 1(b), per the Amendment
to Filing Basis, filed separately.
IV. Conclusion
Applicant respectfully submits that it has addressed each of the Examining Attorney’s concerns.
Applicant has established that its Mark is suggestive, rather than merely descriptive, because the Mark
does not merely describe the claimed services, and because a mental leap is required in understanding
the relationship between Applicant’s Mark and its services.
Also, Applicant has demonstrated that there is no likelihood of confusion between its mark and the
Cited Mark. Consumer confusion is not likely because the marks differ in sight, sound, and
connotation, and because the shared term “social” is so common and weak that the respective mark
owners’ sophisticated customers are not likely to confuse the source of the respective services.
Finally, Applicant is responding to the outstanding request for a Specimen of Use by amending the
filing basis to 1(b).

Applicant therefore requests that the Examining Attorney withdraw the refusal to register, and allow the
application to proceed to publication.
EVIDENCE SECTION
EVIDENCE FILE NAME(S)
ORIGINAL PDF FILE evi_20910219196-193502244_._SOCIALADS_Exhibit_A.pdf
CONVERTED PDF
FILE(S) \\TICRS\EXPORT2\IMAGEOUT2\772\870\77287043\xml1\ROA0002.JPG
(70 pages)
\\TICRS\EXPORT2\IMAGEOUT2\772\870\77287043\xml1\ROA0003.JPG
ORIGINAL PDF FILE evi_20910219196-193502244_._SOCIALADS_Exhibit_B.pdf
CONVERTED PDF
(14 pages)
ORIGINAL PDF FILE evi_20910219196-193502244_._SOCIALADS_Exhibit_C.pdf
CONVERTED PDF
(10 pages)
ORIGINAL PDF FILE evi_20910219196-193502244_._SOCIALADS_Declaration.pdf
CONVERTED PDF
(2 pages)
DESCRIPTION OF
EVIDENCE FILE
Exemplars of third party registrations and third party office action response
SIGNATURE SECTION
RESPONSE SIGNATURE /anne h. peck/
SIGNATORY'S NAME Anne H. Peck
SIGNATORY'S POSITION Attorney of record
DATE SIGNED 06/30/2008
AUTHORIZED
SIGNATORY
YES
FILING INFORMATION SECTION

SUBMIT DATE Mon Jun 30 19:45:23 EDT 2008
USPTO/ROA-209.10.219.196-
20080630194523450700-7728
TEAS STAMP 7043-42053aa1e3034766985d
3368552c930c698-N/A-N/A-2
0080630193502244271
PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)
Response to Office Action

To the Commissioner for Trademarks:
Application serial no. 77287043 has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
RESPONSE TO OFFICE ACTION
Applicant Facebook, Inc. (“Applicant”), by and through its undersigned counsel, hereby responds
as follows to Office Action No. 1 issued in the instant application on December 31, 2007.
In the Office Action, the Examining Attorney expressed concern that the SOCIALADS mark (the
“Mark” or “Applicant’s Mark”) is merely descriptive under Section 2(e), and that there may be a
likelihood of confusion with prior pending applications. As discussed below, the Examining Attorney
should permit the Application to proceed to publication because:
· The Mark is suggestive rather than descriptive as it does not merely describe the claimed
services, and a mental leap is required to connect Applicant’s Mark to its services and
· There is no likelihood of confusion with the mark S.O.C.I.A.L. (the “Cited Mark”) since
Applicant’s Mark and the Cited Mark convey distinct overall commercial impressions, and
because the shared component, “social,” is a common word entitled to narrow protection.
I. The Mark SOCIALADS is Not Merely Descriptive

The Examining Attorney refused registration, claiming that the mark SOCIALADS is merely
descriptive under Section 2(e). In support of this refusal, the Examining Attorney noted that the definition
of “social” is “relating to interaction of people” and that the definition of “ads” is advertisement.
However, Applicant respectfully disagrees with the Examining Attorney’s assessment of the relationship
between the Mark and the services claimed. Although the separate terms “social” and “ads” may have
descriptive aspects, the composite mark SOCIALADS does not merely describe the services claimed in
the Application. Moreover, the Mark does not immediately convey the nature of the services rendered
under the Mark. For these reasons, the Mark is suggestive, rather than descriptive, of the claimed
services.
A. Applicant’s Mark is Not Merely Descriptive of the Claimed Services
Under the Trademark Manual of Examining Procedure (“TMEP”), descriptiveness must be determined in
relation to the goods or services claimed in the application. See TMEP §§ 1209.01(b), 1209.03(e). In the
instantcase, the services claimed in the Application are “advertising and information distribution services,
namely, providing advertising space via the global computer network; promoting the goods and services
of others over the Internet.”

Applicant respectfully submits that the evidence provided by the Examining Attorney in the issued Office
Action does not tend to show that the Mark is merely descriptive of the services noted above. Although
concededly “ads” is merely descriptive of an aspect of the claimed services, the term “social” is not
similarly descriptive of advertising and information distribution services or promoting the goods and
services of others over the Internet. Indeed, Applicant notes that there are over 20 registered marks that
contain the term “social” that also claim services related to advertising or promotions. See Declaration of
Anne H. Peck in Support of Response to Office Action (“Peck Decl.”), Exhibit A. The existence of these
third-party registrations indicates that the term “social” is not merely descriptive of advertising or
promotions services and, more particularly, that the composite mark SOCIALADS is not merely
descriptive of the services claimed.
B. Applicant’s Mark is Suggestive Because a Mental Leap is Required to

Determine Applicant’s Services From Applicant’s Mark
Applicant’s Mark is suggestive, rather than merely descriptive, because the Mark does not merely
describe Applicant’s services. A mark is considered suggestive if it “requires imagination, thought and
perception to reach a conclusion as to the nature of the goods.” See Stix Products, Inc. v. United
Merchants & Mfs., Inc., 160 U.S.P.Q. 777, 785 (S.D.N.Y. 1968). Conversely, for a mark to be considered
merely descriptive, the connection between the mark and the applicant’s goods or services must be
instantaneous. See Investacorp, Inc. v. Arabian Investment Banking Corp., 19 U.S.P.Q.2d 1056 (11th Cir.
1991).
The multi-step reasoning in the Office Action actually shows that imagination, thought and
perception is necessary to determine the nature of the Applicant’s services from Applicant’s Mark. The
Examining Attorney first defines “social” as “relating to interaction of people,” then notes that “the
applicant provides advertising that is based on user actions on its online social network” and then
concludes that the Mark is merely descriptive because it refers to advertisements that are triggered by
and/or relate to the interactions of people. This line of reasoning, taking several steps to get from
SOCIALADS to Applicant’s services, shows that a mental leap is required, making the SOCIALADS
mark suggestive, not merely descriptive.

Applicant notes, however, that its services differ from those described by the Examining Attorney.
The services offered under the SOCIALADS mark are not advertisements that are “triggered by and/or
relate to the interactions of people.” The services, which are sold to companies purchasing marketing
services, not to the individual users enjoying Applicant’s networking site, allow companies to target their
advertising to a certain user based on characteristics of the profile of that user’s Facebook “friend.” For
example, if a Facebook user’s friend has news delivered to their news-feed about baseball, the company
may choose to target that user for advertisements about sports-related clothing. As this example
illustrates, the services actually have very little to do with “the interactions of people,” and more to do
with the characteristics of Facebook user profiles – an aspect of Facebook that is not “social,” except in
the most abstract sense. Because these services are even one step further removed from the analysis
described above, the mental leap required between Applicant’s Mark and its services is even greater
Applicant’s Mark is comparable to the one at issue in Airco, Inc. v. Air Products and Chemicals,
Inc., 196 U.S.P.Q. 832 (T.T.A.B. 1977). In Airco, the Board found that the mark “AIR-CARE” for
Applicant’s program for maintaining anesthesia and inhalation therapy equipment and hospital piping
systems was not merely descriptive. The Board explained that, “[t]he literal meaning of the mark,
namely, ‘care of the air’ may, through an exercise of mental gymnastics and extrapolation suggest or hint
at the nature of Applicant’s services, but it does not, in any clear or precise way, serve merely to describe
Applicant’s preventative maintenance services….” Id. at 835. Similarly, as explained above, one must
exercise metal gymnastics to make the connection between the mark SOCIALADS to Applicant’s
advertising and marketing services based on the characteristics of Facebook profiles. The literal meaning
of the mark, namely, “advertisements relating to the interaction between people” does not actually
describe Applicant’s services. Moreover, because one must exercise “mature thought or follow a multi-
stage reasoning process to determine attributes of the product or service,” and because “the mental leap
between the word and the product’s attributes is not almost instantaneous,” Applicant’s Mark is
suggestive, not descriptive. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 11.67 (4th ed. 2004); see also In re Tennis In the Round, Inc., 199 U.S.P.Q. 496, 498
(T.T.A.B. 1978) (TENNIS IN THE ROUND for a round tennis stadium was suggestive); In re TBG, Inc.,
229 U.S.P.Q. 759, 760 (T.T.A.B. 1986) (SHOWROOM ONLINE was suggestive, not descriptive, of the
applicant’s services of leasing databases and video disks related to viewing interior furnishings).
In determining whether a mark is suggestive or merely descriptive, any doubt should be resolved in
the applicant’s favor. In re Bed-Check Corporation, 226 U.S.P.Q. 946, 948 (T.T.A.B. 1985) (holding
SENSORMAT not merely descriptive of a pressure-sensitive pad placed under hospital patients for
monitoring their movement in bed); see also In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 4
U.S.P.Q.2d 1141, 1144 (Fed. Cir. 1987). Accordingly, and in light of the arguments above, the Applicant
respectfully requests that the Examining Attorney resolve all doubt in Applicant’s favor and find that
Applicant’s mark is suggestive, not merely descriptive.
II. Consumer Confusion Is Not Likely

The Examining Attorney also expressed concern that there may be a likelihood of confusion
between Applicant’s Mark and the marks in Application Nos. 77/028,006 and 77/163,257. Application
No. 77/163,257 was abandoned on February 16, 2008, and thus should not block publication of
Applicant’s mark. The remaining application, for the Cited Mark S.O.C.I.A.L., owned by Dave
Networks, Inc., claims numerous services in International Classes 35, 38 and 42, including advertising and
publicity services in Class 35.

As discussed below, consumer confusion between Applicant’s Mark and the Cited Mark is not
likely because the marks are not identical, they convey distinct overall commercial impressions, the
common portion of the marks is weak and entitled to relatively narrow protection, and the respective
parties’ sophisticated customers are likely to exercise care in their purchasing decisions.
A. The Marks Are Not Identical, And Convey Distinct Overall Commercial
Impressions
The marks at issue are not identical. Applicant’s Mark consists of two components, SOCIAL and
ADS. And, as argued by the owner of the Cited Mark in its October 30, 2007 Office Action Response, the
Cited Mark “consists of the term ‘S.O.C.I.A.L.,’ an acronym which stands for Social Online C
ommunity IPTV Application Library.” See Peck Decl., Exhibit B. This unique spelling of the Cited
Mark, and the fact that the acronym has another meaning, contributes to the difference in appearance,
sound and connotation between the two marks.
Visually, the marks are distinct. Applicant’s Mark contains a portion of the mark completely
lacking in the Cited Mark, namely, “ADS.” In contrast, the Cited Mark is spelled with periods between
each letter, and is intended to be identified as an acronym. Thus, the marks differ in appearance.
The marks differ in sound as well. As the owner of the Cited Mark observed, because the Cited
Mark is an acronym, it “may be pronounced either by using the word ‘SOCIAL,’ or through use of its
individual components, ‘S-O-C-I-A-L.’” See id. This difference in pronunciation further distinguishes
the marks.
Also, as the owner of the Cited Mark successfully argued in overcoming a 2(d) rejection based on
other “social” marks, “[b]ecause it is an acronym, the [Cited Mark] has an inherent and independent
meaning that distinguishes it from an otherwise identical mark utilizing the term ‘SOCIAL.’” See id.
The Applicant agrees with this argument, supported by Astra Pharmaceutical Products, Inc. v. Beckman
Instruments, Inc., 220 U.S.P.Q. 786, 789-790 (1st Cir. 1983), which found two otherwise identical
“ASTRA” marks distinguishable where one was an acronym. This inherent and independent meaning of
the Cited Mark makes it easily distinguishable from Applicant’s Mark.

Although the preceding analysis has focused mainly on the shared term “social,” in evaluating
likelihood of confusion, the marks must be regarded as a whole. See In re National Data Corp., 224,
U.S.P.Q. 749 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 223 U.S.P.Q. 1281
(Fed. Cir. 1984); Giant Food, Inc. v. Nations Foodservice, Inc., 218 U.S.P.Q. 390 (Fed. Cir. 1983);
Schwarzkopf v. John H. Breck, Inc., 144 U.S.P.Q. 433 (C.C.P.A. 1965); In re MCI Communications
Corp., 21 U.S.P.Q.2d 1535, 1538-39 (Comm'r Pats. 1991). Unlike the Cited Mark, Applicant’s Mark
includes the term SOCIAL as well a second term -“ADS.” In this way, Applicant’s Mark is similar to
that in In re The Hearst Corporation, 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992). In Hearst, the court
found that the mark VARGAS was not confusingly similar to the mark VARGA GIRL, and that the TTAB
inappropriately analyzed the VARGA GIRL mark by stressing the “varga” term and discounting the
“girl” term.
The marks at issue in the instant Office Action cannot be compared based solely on the SOCIAL
component, while discounting the term “ADS” in Applicant’s Mark. When properly viewed in their
entireties, and considering the difference in spelling, pronunciation and connotation, SOCIALADS and
S.O.C.I.A.L. are sufficiently different as to eliminate any real likelihood of confusion.
B. The Number Of Similar Marks Reduces Consumer Confusion
Another determining factor in a likelihood of confusion analysis is the existence of other registered
marks that include a similar term and claim similar or related goods or services. See, e.g., In re E.I. du
Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973) (the number and nature of similar marks in
use on similar goods is a factor to be considered in evaluating likelihood of confusion); see also TMEP §
1207.01 (the Examining Attorney should also consider the number and nature of similar marks in use on
similar goods and services). When such marks exist, the likelihood of confusion is reduced. As the owner
of the Cited Mark noted, there are “a number of trademark applications or registrations containing the
term ‘Social’ all of which are owned by different parties…theterm ‘social’ is a common and weak term,
easily distinguishable by the consumer when presented in a distinct manner or with an additional term.”
See Peck Decl., Exhibit B. Indeed, Applicant’s search of the USPTO records revealed at least 270 active
registrations that contain the term “social.” See Peck Decl., Exhibit C.
Where similarity is based on the shared use of common terms, the terms should be considered
weak and registration should not be impeded. See Nabisco Brands, Inc. v. The Quaker Oats Co., 216
U.S.P.Q. 770, 775 (D. N.J. 1982) (CREAMY WHEAT mark not likely to be confused with registered
CREAM OF WHEAT mark, both used with enriched farina, even though the marks were similar, if not
identical, and the products targeted to the same customers through the same channels of trade); see also
Gruner + Jahr USA Publishing, Div. Of Gruner and Jahr Printing & Publishing Co. v. Meredith Corp.,
16 U.S.P.Q.2d 1583 (2d Cir. 1993) (no likelihood of confusion between registrant’s PARENTS mark and
applicant’s PARENT’S DIGEST mark, both used with magazines targeted to parents, because the
common terms are in the public domain which lessens the possibility of confusion.); Greentree
Laboratories v. G.G. Bean, Inc., 13 U.S.P.Q.2d 1161 (D. Me. 1989) (ODOR KLEEN not likely to be
confused with ODOKLEEN both used for products used to eliminate odors and overlap in customers and
channels of trade). Likewise here, the only common element of the two marks is weak and therefore not
entitled to a wide scope of protection.
C. Consumer Sophistication Weighs Against a Likelihood of Confusion
It is well settled that likelihood of confusion is reduced where purchasers and potential purchasers
are sophisticated. See Electronic Design and Sales v. E.D.S., 21 U.S.P.Q.2d 1388, 1392-1393 (Fed. Cir.
1992); see also TMEP § 1207.01(d)(vii) (care in purchasing tends to minimize the likelihood of
confusion). The sophistication of the purchasers of services offered under the respective marks weighs
against finding a likelihood of confusion.
The Cited Mark owner noted that its services relate to computer, software and other information
technologies, and that “[c]onsumers in this field are highly educated, and they exercise a significant
degree of care in choosing products and services.” See Peck Decl., Exhibit B. Similarly, the purchasers
of the services offered under Applicant’s Mark are business professionals making important decisions
about how to spend their advertising dollars. Such professionals are generally well educated and exercise
a high level of care in making important business decisions. Because they are sophisticated, Applicant’s
customers are not likely to be confused into thinking Applicant’s services originate from or are sponsored
by the owner of the Cited Mark. Similarly, purchasers of services offered under the Cited Mark are not
likely to be confused in purchasing decisions by the existence of Applicant’s Mark. This too weighs
against a likelihood of consumer confusion.
In light of the above, Applicant respectfully requests that the Examining Attorney withdraw the
conclusion that there may be a likelihood of confusion between Applicant’s Mark and the Cited Mark and
allow this Application to proceed to publication. In the alternative, Applicant requests suspension of this
Application pending disposition of the Application No. 77/028,006. Applicant specifically reserves the
right to submit additional arguments and evidence in the future to illustrate that there is no likelihood of
confusion between Applicant’s Mark and the Cited Mark.
III. Amendment to Filing Basis
In response to the Examining Attorney’s request for a Specimen of Use, Applicant hereby amends
the filing basis of this instant application from section 1(a) to section 1(b), per the Amendment to Filing
Basis, filed separately.
IV. Conclusion
Applicant respectfully submits that it has addressed each of the Examining Attorney’s concerns.
Applicant has established that its Mark is suggestive, rather than merely descriptive, because the Mark
does not merely describe the claimed services, and because a mental leap is required in understanding the
relationship between Applicant’s Mark and its services.

Also, Applicant has demonstrated that there is no likelihood of confusion between its mark and the Cited
Mark. Consumer confusion is not likely because the marks differ in sight, sound, and connotation, and
because the shared term “social” is so common and weak that the respective mark owners’ sophisticated
customers are not likely to confuse the source of the respective services.
Finally, Applicant is responding to the outstanding request for a Specimen of Use by amending the filing
basis to 1(b).
Applicant therefore requests that the Examining Attorney withdraw the refusal to register, and allow the
application to proceed to publication.
EVIDENCE
Evidence in the nature of Exemplars of third party registrations and third party office action response has
been attached.
Original PDF file:
evi_20910219196-193502244_._SOCIALADS_Exhibit_A.pdf
Converted PDF file(s) (70 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28
Evidence-29
Evidence-30
Evidence-31
Evidence-32
Evidence-33
Evidence-34
Evidence-35
Evidence-36
Evidence-37
Evidence-38
Evidence-39
Evidence-40
Evidence-41
Evidence-42
Evidence-43
Evidence-44
Evidence-45
Evidence-46
Evidence-47
Evidence-48
Evidence-49
Evidence-50
Evidence-51
Evidence-52
Evidence-53
Evidence-54
Evidence-55
Evidence-56
Evidence-57
Evidence-58
Evidence-59
Evidence-60
Evidence-61
Evidence-62
Evidence-63
Evidence-64
Evidence-65
Evidence-66
Evidence-67
Evidence-68
Evidence-69
Evidence-70
Original PDF file:
evi_20910219196-193502244_._SOCIALADS_Exhibit_B.pdf
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Original PDF file:
evi_20910219196-193502244_._SOCIALADS_Exhibit_C.pdf
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Original PDF file:
evi_20910219196-193502244_._SOCIALADS_Declaration.pdf
Evidence-1
Evidence-2
SIGNATURE(S)
Response Signature
Signature: /anne h. peck/ Date: 06/30/2008
Signatory's Name: Anne H. Peck
Signatory's Position: Attorney of record
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
attorney/agent not currently associated with his/her company/firm previously represented the applicant in
this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
him/her as an associate attorney in this matter.
Serial Number: 77287043

Internet Transmission Date: Mon Jun 30 19:45:23 EDT 2008
TEAS Stamp: USPTO/ROA-209.10.219.196-200806301945234
50700-77287043-42053aa1e3034766985d33685
52c930c698-N/A-N/A-20080630193502244271
PTO Form 2196 (Rev 9/2005)
OMB No. 0651-0056 (Exp 09/30/2011)
Revocation of Attorney/Domestic Representative and/or

Appointment of Attorney/Domestic Representative

Input Field Entered
LAW OFFICE ASSIGNED LAW OFFICE 117
MARK SECTION
MARK SOCIALADS
ATTORNEY SECTION
HAROLD J. MILSTEIN
HELLER EHRMAN LLP
41446-1000
275 MIDDLEFIELD ROAD
ORIGINAL ADDRESS
MENLO PARK, CA 94025-3506
650-324-0638
650-324-7000
sv-trademark@hellerehrman.com
CORRESPONDENCE SECTION
HAROLD J. MILSTEIN
HELLER EHRMAN LLP
41446-1000
ORIGINAL ADDRESS
650-324-0638
650-324-7000
Janet L. Cullum, Peter J. Willsey, John W. Crittenden,
NEW OTHER APPOINTED Todd S. Bontemps, Gretchen Stroud, Susan Berney-
ATTORNEYS Key, Emily Burns, Christine DuBois, Heather Dunn
Navarro
NEW ATTORNEY ADDRESS
By submission of this request, the undersigned
REVOKES the power of attorney currently of record,
STATEMENT TEXT
as listed above, and hereby APPOINTS the following
new attorney.
NAME Anne H. Peck
FIRM NAME COOLEY GODWARD KRONISH LLP
STREET 3000 El Camino Real, Five Palo Alto Sq.
CITY Palo Alto
STATE California
COUNTRY United States
POSTAL/ZIP CODE 94306
PHONE (650) 843-5000
FAX (650) 849-7400
EMAIL trademarks@cooley.com
ATTORNEY AUTHORIZED TO
COMMUNICATE VIA E-MAIL
YES
NEW CORRESPONDENCE ADDRESS

NAME Anne H. Peck
FIRM NAME COOLEY GODWARD KRONISH LLP
STREET 3000 El Camino Real, Five Palo Alto Sq.
CITY Palo Alto
STATE California
POSTAL/ZIP CODE 94306
PHONE (650) 843-5000
FAX (650) 849-7400
EMAIL trademarks@cooley.com
AUTHORIZED TO COMMUNICATE
VIA E-MAIL
YES
SIGNATURE SECTION
SIGNATURE /Michael Richter/
SIGNATORY NAME Michael Richter
SIGNATORY DATE 04/30/2008
SIGNATORY POSITION Deputy General Counsel IP & Product
FILING INFORMATION SECTION
SUBMIT DATE Wed Apr 30 17:27:18 EDT 2008
USPTO/RAA-209.10.219.196-
20080430172718773797-7857
TEAS STAMP 4726-4005374826efdbf5513d
ccdb620e1ed20-N/A-N/A-200
80430170355236604
PTO Form 2196 (Rev 9/2005)

OMB No. 0651-0056 (Exp 09/30/2011)
Revocation of Attorney/Domestic Representative and/or

Appointment of Attorney/Domestic Representative
MARK: SOCIALADS
SERIAL NUMBER: 77287043
The original attorney

HAROLD J. MILSTEIN
HELLER EHRMAN LLP
41446-1000
650-324-0638
650-324-7000
Original Correspondence Address :

HAROLD J. MILSTEIN
HELLER EHRMAN LLP
650-324-0638
650-324-7000
By submission of this request, the undersigned REVOKES the power of attorney currently of record, as
listed above, and hereby APPOINTS the following new attorney. In addition, any additional previously-
appointed attorneys that are currently listed in the application are replaced with the new "Other Appointed
Attorneys" listed below.
Newly Appointed Attorney:

Anne H. Peck
Palo Alto, California 94306
United States
(650) 843-5000
(650) 849-7400
Other Appointed Attorneys:
Janet L. Cullum, Peter J. Willsey, John W. Crittenden, Todd S. Bontemps, Gretchen Stroud, Susan
Berney-Key, Emily Burns, Christine DuBois, Heather Dunn Navarro
The following is to be used as the correspondence address:

Anne H. Peck
United States
(650) 843-5000
(650) 849-7400
trademarks@cooley.com
Signature: /Michael Richter/ Date: 04/30/2008

Signatory's Name: Michael Richter
Signatory's Position: Deputy General Counsel IP & Product

Internet Transmission Date: Wed Apr 30 17:27:18 EDT 2008
TEAS Stamp: USPTO/RAA-209.10.219.196-200804301727187
73797-78574726-4005374826efdbf5513dccdb6
20e1ed20-N/A-N/A-20080430170355236604
To: Facebook, Inc. (sv-trademark@hellerehrman.com)
Subject: TRADEMARK APPLICATION NO. 77287043 - SOCIALADS - 41446-
1000
Sent: 12/31/2007 8:12:30 PM
Attachments: Attachment - 1
Attachment - 2
Attachment - 3
Attachment - 4
Attachment - 5
Attachment - 6
Attachment - 7
Attachment - 8
Attachment - 9
Attachment - 10
Attachment - 11
Attachment - 12
Attachment - 13
Attachment - 14
Attachment - 15
Attachment - 16
Attachment - 17
Attachment - 18
Attachment - 19
Attachment - 20
SERIAL NO: 77/287043
MARK: SOCIALADS
*77287043*
CORRESPONDENT ADDRESS:
HAROLD J. MILSTEIN RESPOND TO THIS ACTION:
HELLER EHRMAN LLP http://www.uspto.gov/teas/eTEASpageD.htm
MENLO PARK, CA 94025-3506 GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/main/trademarks.htm
APPLICANT: Facebook, Inc.
CORRESPONDENT’S
REFERENCE/DOCKET NO:
41446-1000
CORRESPONDENT E-MAIL ADDRESS:
OFFICE ACTION
TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 12/31/2007
The assigned examining attorney has reviewed the referenced application and determined the following.
REFUSAL OF REGISTRATION: MARK IS MERELY DESCRIPTIVE OF THE SERVICES

The examining attorney refuses registration on the Principal Register because the proposed mark merely
describes the services. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section
1209 et seq.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. 1052(e)(1), if it describes
an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods or service.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791
F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re
Bright?Crest, Ltd. , 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).
The applicant has applied to register the mark SOCIALADS for “advertising and information
distribution services, namely, providing advertising space via the global computer network; promoting
the goods and services of others over the Internet” in International Class 35. The definition of SOCIAL
is: “relating to interaction of people.” (See attached definition.) The definition of “AD” is:
“advertisement”. The mark immediately describes and names the characteristics and features of the
services, namely, it refers to advertisements that are triggered by and/or relate to the interactions of
people. The examining attorney also refers to the excerpted articles from the examining attorney's
search in a computerized data base which show that the applicant provides advertising that is based on
user actions on its online social network. Accordingly, the mark is refused registration on the Principal
Register under Section 2(e)(1) of Trademark Act.
Specimen Omitted
The application is incomplete because it does not include the required specimen showing use of the
applied-for mark in commerce for the goods and/or services identified in the application. An
application based on Section 1(a) of the Trademark Act must include a specimen showing the applied-
for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1(a) and
45, 15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56; TMEP §§904, 904.07(a).
Therefore, applicant must submit the following:
(1) A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each
class of goods and/or services based on use in commerce; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R.
§2.20: “The specimen was in use in commerce at least as early as the filing date of the
application.” 37 C.F.R. §2.56(a); TMEP §904.05. If submitting a specimen requires an
amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R.
§2.71(c).
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that
show the mark on the goods or packaging, or displays associated with the goods at their point of sale.
TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website
printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP
§§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis
(use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required. However,
should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later
amends the application back to use in commerce by filing an acceptable allegation of use with a proper
specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
In order to amend to Section 1(b), applicant must submit the following statement, verified with an
affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to
use the mark in commerce on or in connection with the goods or services listed in the application
as of the filing date of the application.” 15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2) and 2.35(b)(1);
TMEP §806.03(c).
Pending a proper response, registration is refused because applicant has not provided evidence of use in
commerce of the applied-for mark. 15 U.S.C. §§1051(a), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56;
TMEP §§904, 904.07(a).
Prior Pending Applications

The examining attorney has searched the Office records and has found no similar registered mark which
bars registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section
1105.01. Please note that the examining attorney has found potentially conflicting pending
applications. The examining attorney encloses information regarding pending Application Serial Nos.
77028006 and 77163257. The filing dates of the referenced applications precede the applicant's filing
date. There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15
U.S.C. Section 1052(d). If any of the referenced applications mature into a registration, the examining
attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP section
1208.01.
The applicant may present arguments related to the potential conflict between the relevant applications
or other arguments. The applicant's election to present or not to present arguments at this time will not
affect the applicant's right to present arguments later.
John Kelly /jmck/

Trademark Attorney
Law Office 117
571.272.9412
Fax: 571.273-9117 (official responses only)
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the
assigned examining attorney. A response to this Office action should be filed using the form available
at http://www.uspto.gov/teas/eTEASpageD.htm. If notification of this Office action was received via e-
mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not
attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the
mark, the filing date and the name, title/position, telephone number and e-mail address of the person
signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial
filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online
system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of
the complete TARR screen. If the status of your application has not changed for more than six months,
please contact the assigned examining attorney.
To: Facebook, Inc. (sv-trademark@hellerehrman.com)
Subject: TRADEMARK APPLICATION NO. 77287043 - SOCIALADS - 41446-
1000
Sent: 12/31/2007 8:12:34 PM
Attachments:
IMPORTANT NOTICE
USPTO OFFICE ACTION HAS ISSUED ON 12/31/2007 FOR
APPLICATION SERIAL NO. 77287043
Please follow the instructions below to continue the prosecution of your application:
VIEW OFFICE ACTION: Click on this link

http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77287043&doc_type=OOA&mail_date
(or copy and paste this URL into the address field of your browser), or visit
http://tmportal.uspto.gov/external/portal/tow and enter the application serial number to access
the Office action.
PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24
hours of this notification.
RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if
a response is required; (2) how to respond; and (3) the applicable response time period. Your response
deadline will be calculated from 12/31/2007.
Do NOT hit “Reply”to this e-mail notification, or otherwise attempt to e-mail your response, as
the USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you
respond online using the Trademark Electronic Application System response form at
http://www.uspto.gov/teas/eTEASpageD.htm.
HELP: For technical assistance in accessing the Office action, please e-mail
TDR@uspto.gov. Please contact the assigned examining attorney with questions about the Office
action.
WARNING
1. The USPTO will NOT send a separate e-mail with the Office action attached.
2. Failure to file any required response by the applicable deadline will result in
the ABANDONMENT of your application.
*** User:jkelly ***
# Total Dead Live Live Status/ Search
Marks Marks Viewed Viewed Search
Docs Images Duration
01 1 0 1 1 0:01 77287043[SN]
02 22 0 20 20 0:01 Facebook[on]
03 1064 N/A 0 0 0:01 *social*[bi,ti]
04 1079 N/A 0 0 0:01 *so{"csz"}{v:3}al*[bi,ti]
05 0 0 0 0 0:01 *so{"csz"}h{v:3}al*[bi,ti]
06 0 0 0 0 0:01 *{"csz"}o{"csz"}h{v:3}al*[bi,ti]
07 1131 N/A 0 0 0:02 *{"csz"}o{"csz"}{v:3}al*[bi,ti]
08 181485 N/A 0 0 0:02 *ad*[bi,ti]
09 51 22 29 25 0:01 7 and 8
10 2 N/A 0 0 T/0:02 4 and ad$[gs]
11 135 N/A 0 0 0:08 4 and ad$[gs]
12 86 N/A 0 0 0:02 4 and promot$[gs]
13 705 N/A 0 0 0:02 4 and 035[cc]
14 389 N/A 0 0 0:01 (11 12 13) not dead[ld]
15 105 0 105 89 0:01 14 and 035[ic]
16 284 0 284 220 0:01 14 not 15
Session started 12/31/2007 5:26:12 PM
Session finished 12/31/2007 5:46:06 PM
Total search duration 0 minutes 28 seconds
Session duration 19 minutes 54 seconds
Defaut NEAR limit=1ADJ limit=1
Sent to TICRS as Serial Number: 77287043

From: TMDesignCodeComments
Sent: Friday, September 28, 2007 00:09 AM
To: sv-trademark@hellerehrman.com
Subject: Notice of Pseudo Mark for Serial Number: 77287043
ATTORNEY REFERENCE 41446-1000

NUMBER:
The USPTO may assign pseudo marks, as appropriate, to new applications to assist in searching the USPTO database for
conflicting marks. They have no legal significance and will not appear on the registration certificate.A PSEUDO MARK
may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can
have alternative spellings or meanings. For example, if the mark comprises the words 'YOU ARE'
surrounded by a design of a box, the pseudo mark field in the USPTO database would display the mark
as 'YOU ARE SQUARE'. A mark filed as 'URGR8' would receive a pseudo mark of 'YOU ARE
GREAT'. You are not required to respond to this notice. However, if you would like to suggest
additions or changes to the pseudo mark assigned to your mark, please send an email to
TMDesignCodeComments@USPTO.GOV or call 1-800-786-9199 to speak to a Customer Service
representative. No fee is necessary. (Please include the serial number of your application on ALL
correspondence with the USPTO.) The USPTO will review your request and update the record if
appropriate. The USPTO will not send any further response to your e-mail. Check TESS in
approximately two weeks to see if the requested changes have been entered. Requests deemed
unnecessary or inappropriate will not be entered. Pseudo marks assigned to the referenced serial
number are listed below.
PSEUDO MARK:
SOCIAL ADS
PTO Form 1478 (Rev 9/2006)
OMB No. 0651-0009 (Exp 12/31/2008)
Trademark/Service Mark Application, Principal Register

Filing Date: 09/24/2007

Input Field Entered
MARK INFORMATION
*MARK SOCIALADS
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
LITERAL ELEMENT SOCIALADS
MARK STATEMENT
The mark consists of standard characters, without claim to any
particular font, style, size, or color.
REGISTER Principal
APPLICANT INFORMATION
*OWNER OF MARK Facebook, Inc.
*STREET 156 University Avenue
*CITY Palo Alto
*STATE
(Required for U.S. applicants)
California
*COUNTRY United States

*ZIP/POSTAL CODE
(Required for U.S. applicants 94301
only)
LEGAL ENTITY INFORMATION

TYPE corporation
STATE/COUNTRY OF
Delaware
INCORPORATION
GOODS AND/OR SERVICES AND BASIS INFORMATION

*INTERNATIONAL CLASS 035
Advertising and information distribution services, namely,
*IDENTIFICATION providing advertising space via the global computer network;
promoting the goods and services of others over the Internet.
FILING BASIS SECTION 1(a)
FIRST USE ANYWHERE
DATE
At least as early as 09/20/2007
FIRST USE IN
COMMERCE DATE
At least as early as 09/20/2007
ATTORNEY INFORMATION
NAME Harold J. Milstein
ATTORNEY DOCKET
41446-1000
NUMBER
FIRM NAME Heller Ehrman LLP

STREET 275 Middlefield Road
CITY Menlo Park
STATE California
ZIP/POSTAL CODE 94025-3506
PHONE 650-324-7000
FAX 650-324-0638
EMAIL ADDRESS sv-trademark@hellerehrman.com
AUTHORIZED TO
Yes
COMMUNICATE VIA EMAIL
OTHER APPOINTED Lisa Greenwald-Swire, Thayer M. Preece, Chelseaa E. Larsen,

ATTORNEY Beth M. Goldman, John C. Wilson
CORRESPONDENCE INFORMATION
NAME Harold J. Milstein
FIRM NAME Heller Ehrman LLP
STREET 275 Middlefield Road
CITY Menlo Park
STATE California
ZIP/POSTAL CODE 94025-3506
PHONE 650-324-7000
FAX 650-324-0638
EMAIL ADDRESS sv-trademark@hellerehrman.com
AUTHORIZED TO
COMMUNICATE VIA EMAIL
Yes
FEE INFORMATION
NUMBER OF CLASSES 1
FEE PER CLASS 325
*TOTAL FEE DUE 325
*TOTAL FEE PAID 325
SIGNATURE INFORMATION
* SIGNATORY FILE \\TICRS2\EXPORT14\772\870\77287043\xml1\APP0003.JPG
SIGNATORY'S NAME Michael Richter
SIGNATORY'S POSITION Associate General Counsel, IP
PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2008)
Trademark/Service Mark Application, Principal Register

Filing Date: 09/24/2007
MARK: SOCIALADS (Standard Characters, see mark)
The literal element of the mark consists of SOCIALADS.
The mark consists of standard characters, without claim to any particular font, style, size, or color.
The applicant, Facebook, Inc., a corporation of Delaware, having an address of

156 University Avenue
United States
requests registration of the trademark/service mark identified above in the United States Patent and
Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051
et seq.), as amended.
International Class 035: Advertising and information distribution services, namely, providing
advertising space via the global computer network; promoting the goods and services of others over the
Internet.
Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or
licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in
commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as
amended.
In International Class 035, the mark was first used at least as early as 09/20/2007, and first used in
commerce at least as early as 09/20/2007, and is now in use in such commerce. The applicant will submit
one specimen(s) showing the mark as used in commerce on or in connection with any item in the class of
listed goods and/or services, .
The applicant hereby appoints Harold J. Milstein and Lisa Greenwald-Swire, Thayer M. Preece, Chelseaa
E. Larsen, Beth M. Goldman, John C. Wilson of Heller Ehrman LLP
275 Middlefield Road
Menlo Park, California 94025-3506
United States
to submit this application on behalf of the applicant. The attorney docket/reference number is 41446-1000.
Correspondence Information: Harold J. Milstein
275 Middlefield Road
Menlo Park, California 94025-3506
650-324-7000(phone)
650-324-0638(fax)
sv-trademark@hellerehrman.com (authorized)
A fee payment in the amount of $325 has been submitted with the application, representing payment for 1
class(es).
Declaration
Signatory's Signature: signatory file

Signatory's Name: Michael Richter
Signatory's Position: Associate General Counsel, IP
RAM Sale Number: 10438

RAM Accounting Date: 09/24/2007

Internet Transmission Date: Mon Sep 24 13:44:52 EDT 2007
TEAS Stamp: USPTO/BAS-66.28.245.154-2007092413445270
0428-77287043-40086ba3d6c9138689ecfab90f
911a6e5cd-ET-10438-20070924133619891345

77287043

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UNITED STATES PATENT AND TRADEMARK OFFICE

SERIAL NO: 77/287043

APPLICANT: Facebook, Inc.

This is a non-final action.

REFUSAL: LIKELIHOOD OF CONFUSION UNDER SECTION 2(d)

CONTINUED REFUSAL UNDER SECTION 2(e)(1) OF THE TRADEMARK ACT

Accordingly, the refusal is continued and maintained.

INFORMATION ABOUT SERVICES REQUIRED

VIEW OFFICE ACTION: Click on this link

REG NUMBER 0000000 REG DATE N/A

REGISTER PRINCIPAL MARK TYPE SERVICE MARK

INTL REG # N/A INTL REG DATE N/A

TM ATTORNEY KELLY, JOHN M L.O. ASSIGNED M80-NOT FOUND

PUB DATE N/A

STATUS 661-RESPONSE AFTER NON-FINAL-ACTION-ENTERED

STATUS DATE 07/01/2008

LITERAL MARK ELEMENT SOCIALADS

DATE ABANDONED N/A DATE CANCELLED N/A

SECTION 2F NO SECTION 2F IN PART NO

SECTION 8 NO SECTION 8 IN PART NO

SECTION 15 NO REPUB 12C N/A

RENEWAL FILED NO RENEWAL DATE N/A

DATE AMEND REG N/A

1 (a) YES 1 (a) NO 1 (a) NO

1 (b) NO 1 (b) YES 1 (b) YES

44D NO 44D NO 44D NO

44E NO 44E NO 44E NO

MARK DRAWING CODE 4-STANDARD CHARACTER MARK

COLOR DRAWING FLAG NO

CURRENT OWNER INFORMATION

NAME Facebook, Inc.

ADDRESS 156 University Avenue

GOODS AND SERVICES

DESCRIPTION TEXT Advertising and information distribution services, namely,

GOODS AND SERVICES CLASSIFICATION

PSEUDO MARK SOCIAL ADS

07/16/2008 ACEC I AMENDMENT FROM APPLICANT ENTERED 015

07/16/2008 CRFA I CORRESPONDENCE RECEIVED IN LAW OFFICE 014

07/14/2008 MAIL I PAPER RECEIVED 013

07/01/2008 TEME I TEAS/EMAIL CORRESPONDENCE ENTERED 012

06/30/2008 CRFA I CORRESPONDENCE RECEIVED IN LAW OFFICE 011

07/01/2008 ALIE A ASSIGNED TO LIE 010

06/30/2008 TROA I TEAS RESPONSE TO OFFICE ACTION RECEIVED 009

04/30/2008 REAP I TEAS REVOKE/APPOINT ATTORNEY RECEIVED 007

12/31/2007 GNRN O NOTIFICATION OF NON-FINAL ACTION E-MAILED 006

12/31/2007 GNRT F NON-FINAL ACTION E-MAILED 005

12/31/2007 CNRT R NON-FINAL ACTION WRITTEN 004

12/05/2007 DOCK D ASSIGNED TO EXAMINER 003

09/28/2007 MPMK O NOTICE OF PSEUDO MARK MAILED 002

09/27/2007 NWAP I NEW APPLICATION ENTERED IN TRAM 001

CURRENT CORRESPONDENCE INFORMATION

CORRESPONDENCE ADDRESS Anne H. Peck

DOMESTIC REPRESENTATIVE NONE

REGISTER PRINCIPAL MARK TYPE SERVICE MARK

TM ATTORNEY KELLY, JOHN M L.O. ASSIGNED M80-NOT FOUND

PUB DATE N/A

STATUS 661-RESPONSE AFTER NON-FINAL-ACTION-ENTERED

STATUS DATE 07/01/2008

LITERAL MARK ELEMENT SOCIALADS

DATE ABANDONED N/A DATE CANCELLED N/A

SECTION 2F NO SECTION 2F IN PART NO