“We have applied to trademark TWEET because it is clearly attached to Twitter from a brand perspective but we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word TWEET”.
Ironically, their application was refused by the United States Patent and Trademark Office (‘USPTO’) in April 2009 and again in March 2011 due to the existence of the mark “LET YOUR AD MEET TWEETS” registered by an online advertising service provider called Twittad.
Now, Twitter has finally decided to sue the third party developer over the use of the word “TWEET” in Twittad’s trademark – “LET YOUR AD MEET TWEETS”. The mark was applied for back in July 2008, thereby blocking Twitter’s own application to trade mark the word TWEET. So, Twitter now wants to own the mark. It believes it has more legitimate right to use the mark TWEET. Its legal filing says “The defendant’s registration unfairly exploits the widespread association by the consuming public of the mark ‘TWEET’ with Twitter and threatens to block Twitter from its registration and legitimate uses of its own mark.”
Twitter contends that Twittad has used the strap line ‘LET YOUR AD MEET TWEETS’ solely as a generic phrase in advertising itself in connection with Twitter. Therefore it is not a trade mark within the meaning of trade mark law and thus, renders the mark subject to cancellation. Alternatively, they contend, even if Twittad is successful in establishing the strap line as a mark, then the mark should be cancelled due to Twitter’s pre-existing rights in the mark.
Twitter comments, “Twitter’s organic growth has taken many forms, including a widespread, dictionary-documented association of the word ‘TWEET’ with the use of Twitter. It is in the best interests of our users and developers for the meaning of ‘TWEET’ to be preserved to prevent any confusion, so we are taking action to protect its meaning.”
On the other hand, Twittad founder James Eliason said “We firmly stand by our position of the legitimacy of the trademark due to the fact that our mark was cleared by the Trademark office in 2008.”
Twitter already owns trade marks ‘COTWEET’ and ‘RETWEET’, however, in this case they were beaten by the third party developer Twittad who filed their trade mark application for the mark ‘TWEET’ earlier than them.
Twitter is not only determined to defend its brand name in the trade mark area, but also to third party app developers using Twitter site to aid their businesses. Generally, in such cases, Twitter either acquires these applications or suspends their use on its site. For example, Twitter has acquired TweetDeck, an application for organizing the display of tweets, for more than $40 million.
In the meantime, Twitter has suspended the twitter account of Twittad.