“The Infringing Mark adopted and used by the Calibra Defendants is not only confusingly similar to, but virtually identical to the CURRENT Marks.” – Current complaint in the SDNY
Facebook is being sued by online banking company, Finco Services, Inc., which operates as Current, for trademark infringement, unfair competition, and false designation of origin relating to Facebook’s controversial subsidiary, Calibra, which plans to launch the digital currency Libra by 2020.
Current’s complaint, filed in the U.S. District Court for the Southern District of New York on October 10, says that the company hired Character, a branding and design agency, in 2016 to develop a logo and branding strategy for Current’s banking services and mobile app. The resulting logo, pictured above right, and iterations thereof, pictured left, have been used by the company since at least as early as 2016.
Current and Calibra Compared
Current owns a use-based application to register the logo at the U.S. Patent and Trademark Office (USPTO) for banking services in Class 36, downloadable software for enabling the electronic transfer of money between users in Class 9, and providing the use of online non-downloadable software for enabling processing of electronic funds transfer, electronic checks, and electronic mobile and online payments in Class 42. It also owns an intent-to-use application for the logo in connection with a mobile computer software app for enabling cryptocurrency-based transactions in Class 9 and SaaS services for enabling cryptocurrency-based transactions in Class 42. The company uses the logo on its mobile app, debit cards, and on its website.
Both applications were filed on June 26, 2019, just after Calibra began marketing its digital wallet.
In 2018, Facebook announced the launch of Calibra and also hired Character to do its branding campaign. Character created the logo pictured right, and Calibra began using the logo in advertising and promotions of the Calibra digital wallet in June 2019. “The Infringing Mark adopted and used by the Calibra Defendants is not only confusingly similar to, but virtually identical to the CURRENT Marks,” said Current’s complaint.
Failed Attempts to Resolve Amicably
Current became aware of the Calibra logo in June 2019 and sent a letter to Calibra in July but received no response. The company then sent a letter to Facebook’s General Counsel and began engaging in discussions about a mutually acceptable solution, but “to date, these efforts have not been fruitful,” claims the Current complaint, adding that Facebook has given no indication that it will cease using the mark.
The complaint alleges federal and common law trademark infringement and unfair competition against Calibra; vicarious trademark infringement, vicarious federal unfair competition and false designation of origin, and vicarious trademark infringement and unfair competition under common law against Facebook; contributory trademark infringement, contributory federal unfair competition and false designation of origin, and contributory trademark infringement and unfair competition under common law against Character; and breach of covenant and good faith against Character.
Among other forms of relief, Current is seeking a finding of infringement, willful infringement, an award of treble damages, punitive damages and attorneys’ fees and pre and post-judgment interest, and that all defendants be enjoined from using the marks in any capacity.
Calibra Faces Other Challenges
Separately, Congress has expressed skepticism about the Calibra business model and the Libra digital currency and has held several hearings into the antitrust and other implications of such ventures. In July, the Senate Committee on Banking, Housing and Urban Affairs tore into David Marcus, Head of Calibra, and Senator Martha McSally (R-AZ) summed up the comments of many of her colleagues when, pointing to Facebook’s various recent missteps and violations, she said, “I don’t trust Facebook…. And now instead of cleaning up your house you’re launching into another business model.”
Images Source: SDNY complaint