Sam Johnston has a great post on Twitter’s recent trademark trouble. The following post attempts to shed a little legal light on what is a rather complex intellectual property issue.
Telecommunication services; telecommunications services, namely, providing online and telecommunication facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; enabling individuals to send and receive messages via email, instant messaging or a website on the internet in the field of general interest; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing an online community forum for users to share information, photos, audio and video content about themselves, their likes and dislikes and daily activities, to get feedback from their peers, to form virtual communities, and to engage in social networking in Class 38
Providing on-line journals, namely, blogs featuring user-defined content in Class 41
Online social networking services; providing a website on the internet for the purpose of social networking; providing on-line computer databases and on-line searchable databases in the field of social networking in class 45
On July 1, 2009, the United States Patent and Trademark Office (USPTO) preliminarily denied the application. Citing three other pending third-party trademarks: TweetMarks, Cotweet and TweetPhoto, the USPTO noted these other trademarks might prevent Twitter from obtaining a federal registration for “Tweet.”
It is All About the Use
Trademark law is complex. In the United States, trademark rights stem not from filing an application, but from actual use of the trademark on a good or service. As soon as you start using a trademark, you have what are called “common law” rights in the trademark. The first to use the trademark, the “senior” user, has priority over any subsequent “junior” users of the trademark. Common law trademark rights extend only to the actual geographic market and goods or services into which your trademark has penetrated. It is possible to have two separate companies with valid common law rights to the same trademark in different geographic regions. One benefit of federal trademark registration is that it immediately extends the geographic penetration of your trademark to the entire country. Even if a junior user obtains a federal trademark registration, a non-registered senior user of the trademark still has rights in the trademark.
Intent to Use Applications
Under United States trademark law, even if you are not currently using a particular trademark, you can file what is called and “Intent to Use” (ITU) application. The USPTO allows ITU applications if the applicant is not using the trademark, but has a bona fide (good faith) intention to use the trademark at a later date. While an ITU application allows you to start the federal trademark registration process and receive a notice of allowance, you do not get your registration until you actually start using the trademark in commerce. The benefit of the ITU application is that the “filing” date of the ITU application acts as the all important date of first use. This means even if someone comes along and starts using the trademark before you do, as long as they did not use it before the filing date of your ITU application, you have priority and can stop them from using the trademark once your trademark registratioin issues.
The USPTO Response
Twitter’s federal trademark application on the word “Tweet” is an ITU application. That means that for purposes of priority, Twitter’s date of first use is April 16, 2009. On July 1, 2009, the USPTO responded by rejecting Twitter’s application. The basis of the rejection was three prior filed trademark applications:
Tweetmarks, having a date of first use of February 1, 2009, as used in association with hosting of digital content on the Internet; Providing a web site featuring technology that enables internet users to create, bookmark, annotate, and publicly share data; Providing a web site featuring technology that enables internet users to create, bookmark, annotate, and publicly share fitness-related data, as well as providing health and fitness professionals with a subscription-based client management system; Providing a web site featuring technology that enables internet users to submit comments of personal recognition in Class 42.
Cotweet, having a date of first use of January 6, 2009, as used in association with software as a service (SAAS) services, namely, hosting software for use by others for use in communications between people and organizations, using wireless and wired networks, through computers and mobile devices in Class 42.
Tweetphoto (design mark), having a date of first use of March 18, 2009, as used in association with providing a web site that gives computer users the ability to upload, exchange and share photos, videos and video logs in Class 42.
Typically, the USPTO cites a trademark registration against an application and requires the applicant either address the registration or allow the application to go abandoned. In this case, all of the marks the USPTO cited against Twitter are merely the subject of applications, not actual registrations. These applications may, or may not, eventually issue as full registrations. Instead of rejecting Twitter’s application, the USPTO suspended the application, pending disposition of the cited applications. Twitter therefore has the option of either responding immediately, or waiting until the cited applications either become abandoned or turn into full registrations.
The Polaroid Factors
To overcome the cited applications, Twitter will have to argue consumers are not likely to assume services associated with Twitter’s “Tweet” are associated with the owners of the cited applications. This likelihood of confusion is based upon the eight Polaroid factors:
1. the strength of senior mark;
2. the degree of similarity between the two marks;
3. the proximity of the users’ products;
4. the likelihood of the senior user entering the junior user’s market;
5. actual confusion;
6. the junior user’s good faith in adopting its mark;
7. the quality of the junior user’s product; and
8. the sophistication of the buyers.
Weighing the Factors
As long as there is no likelihood consumers will confuse the trademarks, different companies can have registrations for the same trademark. Examples include “Apple” for computers and “Apple” for records. The two identical trademarks can co-exit as long as they stay sufficiently in their respective categories so as to avoid the likelihood of confusion. The question then becomes can Twitter successfully argue against a likelihood of confusion.
In Twitter’s favor, there are already five federal trademark registrations for the word “Tweet” and dozens of pending applications containing the word “Tweet.” Additionally, all of the applications cited by the USPTO against Twitter are in different categories than the Twitter application. The cited applications are all in Class 42, whereas Twitter has filed in Classes 38, 41 and 45.
Working against Twitter is the fact that all of the applications relate to online activities. Whereas to you and me online activities can be as diverse as offline activities, to many examiners, judges and juries, everything online is heaped into one big category. Twitter must differentiate its services from those of the cited applications. Using the Polaroid factors, and possibly narrowing its own identification of services, Twitter will have to convince the USPTO that Twitter’s use of the “Tweet” trademark is not likely to cause confusion among consumers. The other option would be to work out a deal with the cited applicants to agree to restrict their respective uses to avoid the likelihood of confusion.
The Next Step
Earlier this year Biz Stone made a statement that Twitter would selectively enforce its Tweet trademark only against those involved with “confusing or damaging” projects. Stone went on to say Twitter encourages the use of the word Tweet. While such naked licensing is lauded by the online community, it is quite frowned upon under trademark law. Unbridled trademark licensing leads to situations like escalator, yo-yo and cellophane where a valuable trademark becomes so generic, it moves into the public domain. Although Twitter has money to spare, it seems unlikely it will put up a Herculean fight to obtain a trademark it does not seem interested in protecting. Only time will tell.