Case: 1:11-cv-03052 Document #: 22-1 Filed: 06/15/11 Page 1 of 5 PageID #:183

UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION FACEBOOK, INC., Plaintiff, Case No. 11-cv-03052 v. TEACHBOOK.COM LLC. Defendant. Honorable Marvin E. Aspen Magistrate Young B. Kim

Case: 1:11-cv-03052 Document #: 22-1 Filed: 06/15/11 Page 2 of 5 PageID #:184

DECLARATION OF MICHAEL L. RODENBAUGH IN SUPPORT OF DEFENDANTS MOTION TO DISMISS I, Michael L. Rodenbaugh, declare as follows: 1. I am counsel to Defendant Teachbook.com LLC, and licensed to practice law in the state of California. I am admitted pro hac vice in this matter. 2. On its Press Room page, Facebook explains that it is a social utility that helps people communicate more efficiently with their friends, family and coworkers. The company develops technologies that facilitate the sharing of information through the social graph, the digital mapping of people's real-world social connections. Anyone can sign up for Facebook... Attached as Exhibit A is a true and accurate copy of the Press Room page from the facebook.com website at http://www.facebook.com/press (emphasis in original). 3. In defending Facebooks mark against a trademark challenge by the owners of Factbook, Facebook filed the following argument with the European trademark office (officially, the Office for Harmonization in the Internal Market (OHIM)) last October, two months after suing Teachbook. In that case, the competing marks differed in only the fourth letter, yet Facebook declaratively stated, inter alia: [T]he differences existing between the first parts of the confronted marks FACE- and FACT- respectively are sufficient to dispel any possible similarity between the marks and to determine their overall dissimilarity. [] A global assessment of the likelihood of confusion must be based on the overall impression created by the marks, bearing in mind, in particular, their distinctive and dominant components (which, as stated above would in this case be their initial part). The conceptual or aural differences between the marks will immediately draw the consumers attention, so they can be confirmed as overall different. [] In the light of the above, since the marks are different, likelihood of confusion can be clearly excluded. Attached as Exhibit B is a true and accurate copy of Facebooks Reply to the

Case: 1:11-cv-03052 Document #: 22-1 Filed: 06/15/11 Page 3 of 5 PageID #:185

Opposition and to the Proof of Use filed by Opponent dated Oct 1, 2010 and Facebooks Observations in Reply dated Oct 21, 2012. 4. Attached as Exhibit C is an Appendix listing USPTO registrations and notices of allowance for other formative-BOOK marks for relevant goods and services, including relevant identification numbers, dates of application and registration, and claimed date of first use. 5. Attached as Exhibit D are true and accurate copies of TARR records from the USPTO, indicating the relevant marks, dates and goods and services listed in Exhibit C and in the following paragraphs. 6. Facebook allegedly first used its mark in February, 2004. (Complaint, 6.) Prior to then, there were approximately 50 formative-BOOK marks registered with the USPTO for relevant goods and/or services. 7. Prior to Facebooks first trademark application in 2006, there were approximately 60 such marks registered with the USPTO. Since then, many other BOOK-formative marks have registered at the USPTO or been approved by its many various Examining Attorneys (and thus are registered or allowed for registration), without any apparent objection from Facebook. 8. Prior to filing of the Teachbook trademark application, there were some 90 BOOK formative marks which had been registered by the USPTO for relevant goods and services. 9. Facebook has never claimed distinctive rights to the word BOOK by filing a U.S. trademark application or using such mark in commerce. Attached as Exhibit E is a printout from a USPTO search attempt, proving this.

Case: 1:11-cv-03052 Document #: 22-1 Filed: 06/15/11 Page 4 of 5 PageID #:186

10. Facebook has claimed exclusive rights in the word FACE in the United States. Attached as Exhibit F is a copy of the TARR record. 11. Facebook also claimed intent-to-use rights in FBOOK for more than three years, but never proved use of such mark, and so those USPTO applications were abandoned. Attached as Exhibit G is a copy of the TARR records. 12. I searched the PTO records and found the word BOOK has never been registered as a trademark on the Principal Register of the USPTO, and thus has never been registered as distinctive of any good or service of any company, ever. 13. Also, the word BOOK (as well as the word FACEBOOK) is commonly defined in dictionaries as generic for a directory, and for collections of published works such as webpages. Attached as Exhibit H are true and accurate copies of dictionary definitions for the words book and facebook. 14. Facebook offers software apps called Dogbook, Catbook, Horsebook, Fishbook, Birdbook, Rodentbook and Ferretbook for lovers of such animals, as well as MyBabyBook for humans. Also, there have long been popular groups on Facebook which utilize other BOOK-formative trademarks for their networking services, including Faithbook, Lamebook and even Teachbook (unrelated to Defendant Teachbook.com). Attached as Exhibits I are true and accurate copies of webpages from the facebook.com website. 15. Various Facebook users have started their own group pages on Facebook, criticizing Facebook for suing Teachbook. Attached as Exhibit J are true and accurate copies of webpages from the facebook.com website.

Case: 1:11-cv-03052 Document #: 22-1 Filed: 06/15/11 Page 5 of 5 PageID #:187

Dated: June 15, 2011 Respectfully submitted, Teachbook.com LLC

By:

/s/

Mike Rodenbaugh

One of its attorneys. Michael L. Rodenbaugh (pro hac vice) (CA Bar No. 179059) RODENBAUGH LAW 548 Market Street, Box #55819 San Francisco, CA 94104 415-738-8087