Twitter v Twittad Case No. CV 3:11-4480-EDL (N.D. Cal. 8 September 2011) (Complaint) Twitter filed a complaint for declaratory judgment against Twittad, seeking cancellation of Twittad’s trademark. The dispute was recently settled, and Twittad assigned ownership of the LET YOUR AD MEET TWEETS trademark to Twitter. Background Twitter, Inc. is the founder of the popular ‘real-time’ social networking and communications website Twitter.com, which was first launched in 2006 and has since gained over 150 million users worldwide1. The company claims to own a ‘family’ of TWEET marks, such as COTWEET, RETWEET and TWEETDECK. However, Twitter has been attempting to register ‘Tweet’ since 2009, which the United States Patent and Trademark Office (USPTO) rejected in 2010 based on likelihood of confusion with Twittad, LLC’s ‘LET YOUR AD MEET TWEETS’ registered trademark. Twittad, LLC provides an advertising service whereby advertisers can connect with Twitter users that are willing to promote the advertiser’s brands through ‘sponsored’ targeted ‘Tweets’. A federal application to register LET YOUR AD MEET TWEETS as a trademark was filed by Filmfitti, Inc. in 2008 in connection with online advertising services, and the mark was registered in 2009. The registration was then assigned to Twittad, LLC in March 2011. The USPTO based its rejection of Twitter’s trademark application for ‘Tweet’ on its assessment that ‘Tweet’ was confusingly similar to LET YOUR AD MEET TWEETS ‘in sound, appearance and connotation’ in as much as ‘the marks both contain the term TWEET which is identical in sound, appearance and meaning’. Furthermore, the USPTO stated that Twitter’s goods and services were similar to those of Twittad’s, namely advertising services. Twitter brought a complaint for declaratory judgment against Twittad in September of 2011, seeking to cancel Twittad’s trademark registration. According
to Twitter, the company was unable to come to an amicable solution with Twittad and Twittad continued to claim exclusive rights in the LET YOUR AD MEET TWEETS trademark. Cancellation for failure to service as a mark Twitter sought to cancel Twittad’s registration on the grounds that the distinctive portion of the Twittad’s registered mark, ‘TWEET’, was a direct reference to Twitter’s services and messages posted through Twitter’s platform, more commonly referred to as ‘Tweets’, and exploited the popularity of Twitter’s ‘Tweet’ brand. Specifically, Twitter claimed that LET YOUR AD MEET TWEETS was a generic phrase and incapable of serving as a trademark that identified the source of Twittad’s goods and services. Specifically, Twitter alleged that Filmfitti’s initial application failed to disclose that the online advertising services referred to in its application were sponsored messages posted through Twitter’s social media platform. Furthermore, the complaint calls into question the use of LET YOUR AD MEET TWEETS as a trademark. At most, Twitter argued, LET YOUR AD MEET TWEETS, was a descriptive statement, describing how its advertising services utilized Twitter’s Tweet messages, and had not gained secondary meaning. Cancellation based on Twitter’s prior trademark rights Twitter further claimed that even if Twittad were to establish use of LET YOUR AD MEET TWEETS as a trademark, the registration was invalid and subject to cancellation based on Twitter’s prior established rights in the ‘Tweet’ mark. Under the Lanham Act, a
trademark may be refused registration if it consists of a mark that is likely to cause consumer confusion with another mark or trade name previously used in the United States by another entity2. Furthermore, a petition to cancel a mark can be filed within five years from the date of registration of the mark by any entity that believes that it will or is damaged by the registration3. After five years, a registered mark becomes incontestable, meaning it can only be cancelled under limited circumstances4. Twitter argued that prior to the launch of Twitter’s services, ‘Tweet’ was only known to the general public according to ‘its dictionary meaning relating to birdsong, and it had no association with webbased social networking and communication services’. Twitter stated that the term ‘Tweet’ has only become recognized as messages on Twitter’s social media platform after Twitter’s continued use of and significant investment in the term since 2006, which would pre-date Twittad’s 2008 use. Accordingly, Twitter claimed that Twittad’s use of ‘Tweet’ was in fact virtually identical to Twitter’s ‘Tweet’ mark and was used through identical channels of trade and to an identical consumer audience since it is used solely to provide advertising services through the Twitter platform. Furthermore, Twittad’s use of ‘Tweet’ was likely to confuse consumers in light of Twitter’s family of ‘Tweet’ marks. Thus, Twitter argued, Twittad’s mark must be cancelled to protect the goodwill and investment Twitter had previously made in ‘Tweet’. Protect the brand Twitter and Twittad ended their trademark battle for ‘Tweet’ on 10 October 2011, under a confidential settlement agreement. Twittad e-commerce law reports volume 11 issue 05
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assigned the rights in LET YOUR AD MEET TWEETS to Twitter on 13 October 2011, and it appears Twittad continues to use the phrase on its website, presumably with Twitter’s blessing. The lesson learned from this trademark dispute is the importance of protecting a brand early. Although Twitter launched in 2006 and provided a new meaning for the term ‘Tweet’, it only attempted to register ‘Tweet’ in 2009, at which point ‘Tweet’ may have been in danger of becoming generic, given the popular (and continuing use) of ‘Tweet’ as an inclusive term for real time status updates rather than as a direct reference to messages posted on Twitter using the Twitter service. Many other marks have teetered on the verge of genericism (think Xerox and its continued battle against ‘Xerox’ as a replacement for ‘photocopy’), but the owners of such marks, like Twitter, have started reclaiming their marks by establishing appropriate trademark guidelines, preventing the use of their marks as generic terms, and making significant investments in marketing and public awareness programs to increase the strength of the mark. At the very least, Twitter’s failure to protect its marks early opened the door for others to beat them to the Trademark Office when ‘Tweet’ became a more popular part of the public vernacular. Twitter’s battle with Twittad should serve as a reminder to all entities that it is never too early to begin to protect a brand.
Act, a registered mark that becomes incontestable may still be cancelled if it: (a) becomes generic; (b) is functional; (c) is abandoned; (d) was obtained through fraud; (e) is immoral, deceptive or scandalous; (f) disparages or suggests a false association with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; (g) is a geographical indication; (h) consists of a national flag, coat of arms or insignia; (i) consists of a name, portrait, or signature identifying a living person without consent; or (j) consists of the name, signature, or portrait of a deceased U.S. President during the life of his widow, if any, except with his widow’s consent. Id.
Monique N. Bhargava Associate Winston & Strawn LLP [email protected] 1. Twitter v Twittad, Case No. CV 3:114480-EDL, at (N.D. Cal. 8 September 2011) (Complaint). 2. 15 U.S.C. §1052(d). 3. 15 U.S.C. §1064(a). 4. 15 U.S.C. §1065. Under the Lanham e-commerce law reports volume 11 issue 05