Twitter Stakes Its Claim to TWEET

UPDATE: Twitter and Twittad have settled their dispute. Click here for details.

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The online “microblogging” service Twitter filed suit last month against Twittad, LLC, a company that enlists Twitter users to participate in advertising campaigns for pay. Twittad has registered the phrase LET YOUR AD MEET TWEETS with the United States Patent and Trademark Office (PTO) as an identifier for its advertising-related services. The lawsuit represents the latest step in Twitter’s efforts to assert proprietary rights in the term “tweet,” which, according to the Online Etymology Dictionary, has been used since at least 2007 as “the word for what one does” on Twitter.

Twitter launched its service in 2006 and first filed to register its trademark in the name TWITTER in 2007. When it came to filing trademark registration applications for TWEET, however, Twitter was a bit late to the party. It first applied to register TWEET for blogging, telecommunications, and social networking services on April 16, 2009. This application has been suspended pending resolution of three applications previously filed by third parties for marks that the PTO thinks could be confusingly similar: TWEETMARKS, COTWEET, and TWEETPHOTO. On August 26, 2010, Twitter filed a separate application to register TWEET for software and for advertising and marketing services. By that time, the PTO was able to cite ten previously filed, potentially confusing applications. In addition, Twittad’s LET YOUR AD MEET TWEETS mark, filed on July 2, 2008, had proceeded to registration on October 20, 2009. Finding a likelihood of confusion with an already registered mark, the PTO provisionally rejected Twitter’s second application.

Twitter appears to be employing a multifaceted strategy in addressing these earlier filers. In some cases, it has been able to find a business solution. For example, it obtained an assignment of the registration for COTWEET and is now licensing the mark back to the developers of the CoTweet service. In May of 2011, Twitter acquired TweetDeck, Inc., which owned an application for TWEETDECK that had been cited against Twitter’s second TWEET application. Other roadblocks have disappeared with no obvious intervention from Twitter. For example, the company behind TWEETPHOTO (a mark that also borrowed from Twitter’s font and trade dress) rebranded and changed its focus, abandoning its TWEETPHOTO application. In still other cases, Twitter has adopted a more aggressive stance. It has initiated an opposition proceeding before the Trademark Trial and Appeal Board (TTAB) attacking TWEETMARKS, the final remaining obstacle to Twitter’s first TWEET application.

The Twittad case is the first time Twitter has sought the intervention of the federal courts in defense of its asserted trademark rights, and the fact that it chose to bring a civil action rather than a cancellation proceeding before the TTAB suggests that it means business. Twitter’s complaint raises no infringement claim and simply asks the court to order cancellation of Twittad’s registration. As grounds for the cancellation, Twitter argues that Twittad has not used the phrase LET YOUR AD MEET TWEETS as a trademark to identify its services; that the phrase is generic or, at best, descriptive; and that, if Twittad has used the phrase in a trademark sense, such use is confusingly similar to Twitter’s prior use of TWEET.

Twittad’s answer to the complaint, if it chooses not to settle, is likely to raise some interesting issues about the arguable genericness of TWEET. According to the Wall Street Journal, Twittad’s founder is of the opinion that “because Twitter’s users came up with ‘tweet,’ the word is fair game.” The Oxford Dictionaries and Merriam-Webster web sites have added definitions for “tweet” – as both a noun and a verb, in lowercase – that refer to posting on Twitter. And the PTO has raised mere descriptiveness objections to applications for TWEETPHOTO and SPONSORED TWEETS, citing such dictionary definitions of “tweet”; both companies eventually abandoned their applications.

Twitter itself must walk a fine line faced by many brand owners who want their marks to achieve broad consumer recognition and market dominance, but want to protect their trademark significance. This tension is perhaps especially fraught in the Internet space, where users can participate so effectively in coining and popularizing new terms for new concepts. Twitter is attempting to hold its ground while enabling growth on the Twitter platform through a set of policies laid out on its website. These guidelines allow other companies to use names beginning with Tw- or Twit- and containing “Tweet,” as long as their services are designed to be used exclusively with Twitter, and as long as they don’t apply to register a trademark containing “Twitter” or “Tweet.” (Perhaps Twitter learned some of these lessons from TweetMyJobs.com, which works with Twitter, Facebook, and a number of others services, and sailed through the PTO application process back in 2009 to obtain a registration for TWEETMYJOBS.) The guidelines also, somewhat quixotically, admonish everyone to “capitalize the T in … Tweet!”

While Twitter may well prevail on Twitter’s arguments that TWEET is a famous mark solidly associated with its services in the public mind, the game of catch-up it currently finds itself playing should serve as a reminder of the importance of paying attention to trademark protection early in the development of new brands, products, and services.

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