20 August 2009

"Twitter" Trademark in Trouble Too

Yesterday I apparently struck a nerve in revealing Twitter's "Tweet" Trademark Torpedoed. The follow up commentary both on this blog and on Twitter itself was interesting and insightful, revealing that in addition to likely losing "tweet" (assuming you accept that it was ever theirs to lose) the recently registered Twitter trademark itself (#77166246) and pending registrations for the Twitter logo (#77721757, #77721751) are also on very shaky ground.

Trademarks 101

Before we get into details as to how this could happen lt's start with some background. A trademark is one of three main types of intellectual property (the others being copyrights and patents) in which society grants a monopoly over a "source identifier" (e.g. a word, logo, scent, etc.) in return for being given some guarantee of quality (e.g. I know what I'm getting when I buy a bottle of black liquid bearing the Coke® branding). Anybody can claim to have a trademark but generally they are registered which makes the process of enforcing the mark much easier. The registration process itself is thus more of a sanity check - making sure everything is in order, fees are paid, the mark is not obviously broken (that is, unable to function as a source identifier) and perhaps most importantly, that it doesn't clash with other marks already issued.

Trademarks are also jurisdictional in that they apply to a given territory (typically a country but also US states) but to make things easier it's possible to use the Madrid Protocol to extend a valid trademark in one territory to any number of others (including the EU which is known as a "Community Trademark"). Of course if the first trademark fails (within a certain period of time) then those dependent on it are also jeopardised. Twitter have also filed applications using this process.

Moving right along, there are a number of different types of trademarks, starting with the strongest and working back:
  • Fanciful marks are created specifically to be trademarks (e.g. Kodak) - these are the strongest of all marks.
  • Arbitrary marks have a meaning but not in the context in which they are used as a trademark. We all know what an apple is but when used in the context of computers it is meaningless (which is how Apple Computer is protected, though they did get in trouble when they started selling music and encroached on another trademark in the process). Similarly, you can't trademark "yellow bananas" but you'd probably get away with "blue bananas" or "cool bananas" because they don't exist.
  • Suggestive marks hint at some quality or characteristic without describing the product (e.g. Coppertone for sun-tan lotion)
  • Descriptive marks describe some quality or characteristic of the product and are unregistrable in most trademark offices and unprotectable in most courts. "Cloud computing" was found to be both generic and descriptive by USPTO last year in denying Dell. Twitter is likely considered a descriptive trademark (but one could argue it's now also generic).
  • Generic marks cannot be protected as the name of a product or service cannot function as a source identifier (e.g. Apple in the context of fruits, but not in the context of computers and music)
Twitter
Twitter's off to a bad start already in their selection of names - while Google is a deliberate misspelling of the word googol (suggesting the enormous number of items indexed), the English word twitter has a well established meaning that relates directly to the service Twitter, Inc. provides. It's the best part of 1,000 years old too, derived around 1325–75 from ME twiteren (v.); akin to G zwitschern:
- verb (used without object)
1. to utter a succession of small, tremulous sounds, as a bird.
2. to talk lightly and rapidly, esp. of trivial matters; chatter.
3. to titter, giggle.
4. to tremble with excitement or the like; be in a flutter.
- verb (used with object)
5. to express or utter by twittering.
- noun
6. an act of twittering.
7. a twittering sound.
8. a state of tremulous excitement.
Although the primary meaning people associate these days is that of a bird, it cannot be denied that "twitter" also means "to talk lightly and rapidly, esp. of trivial matters; chatter". The fact it is now done over the Internet matters not in the same way that one can "talk" or "chat" over it (and telephones for that matter) despite the technology not existing when the words were conceived. Had "twitter" have tried to obtain a monopoly over a more common words like "chatter" and "chat" there'd have been hell to pay, but that's not to say they should get away with it now.

Let's leave the definition at that for now as twitter have managed to secure registration of their trademark (which does not imply that it is enforceable). The point is that this is the weakest type of trademark already and some (including myself) would argue that it a) should never have been allowed and b) will be impossible to enforce. To make matters worse, Twitter itself has gained an entry in the dictionary as both a noun ("a website where people can post short messages about their current activities") and a verb ("to write short messages on the Twitter website") as well as the AP Sytlebook for good measure. This could constitute "academic credability" or "trademark kryptonite" depending how you look at it.

Enforcement


This brings us to the more pertinent point, trademark enforcement, which can essentially be summed up as "use it or lose it". As at today I have not been able to find any reference whatsoever, anywhere on twitter.com, to any trademark rights claimed by Twitter, Inc. Sure they assert copyright ("© 2009 Twitter") but that's something different altogether - I have never seen this before and to be honest I can't believe my eyes. I expect they will fix this promptly in the wake of this post by sprinking disclaimers and [registered®] trademark (TM) and servicemark (SM) symbols everywhere, but the Internet Archive never lies so once again it's likely too little too late. If you don't tell someone it's a trademark then how are they supposed to avoid infringing it?

Terms of Service

The single reference to trademarks (but not "twitter" specifically) I found was in the terms of service (which are commendably concise):
We reserve the right to reclaim usernames on behalf of businesses or individuals that hold legal claim or trademark on those usernames.
That of course didn't stop them suspending @retweet shortly after filing for the ill-fated "tweet" trademark themselves, but that's another matter altogether. The important point is that they don't claim trademark rights and so far as I can tell, never have.

Logo


To rub salt in the (gaping) wound they (wait for it, are you sitting down?) offer their high resolution logos for anyone to use with no mention whatsoever as to how they should and shouldn't be used ("Download our logos") - a huge no-no for trademarks which must be associated with some form of quality control. Again there is no trademark claim, no ™ or ® symbols, and for the convenience of invited infringers, no less than three different high quality source formats (PNG, Adobe Illustrator and Adobe Photoshop):
Advertising

Then there's the advertising, oh the advertising. Apparently Twitter HQ didn't get the memo about exercising extreme caution when using your trademark; lest be the trademark holder who refers to her product or service as a noun or a verb but Twitter does both, even in 3rd-party advertisements (good luck trying to get an AdWords ad containing the word "Google"):
Internal Misuse

Somebody from Adobe or Google please explain to Twitter why it's important to educate users that they don't "google" or "photoshop", rather "search using Google®" and "edit using Photoshop®". Here's some more gems from the help section:
  • Now that you're twittering, find new friends or follow people you already know to get their twitter updates too.
  • Wondering who sends tweets from your area?
  • @username + message directs a twitter at another person, and causes your twitter to save in their "replies" tab.
  • FAV username marks a person's last twitter as a favorite.
  • People write short updates, often called "tweets" of 140 characters or fewer.
  • Tweets with @username elsewhere in the tweet are also collected in your sidebar tab; tweets starting with @username are replies, and tweets with @username elsewhere are considered mentions.
  • Can I edit a tweet once I post it?
  • What does RT, or retweet, mean? RT is short for retweet, and indicates a re-posting of someone else's tweet. This isn't an official Twitter command or feature, but people add RT somewhere in a tweet to indicate that part of their tweet includes something they're re-posting from another person's tweet, sometimes with a comment of their own. Check out this great article on re-tweeting, written by a fellow Twitter user, @ruhanirabin. <- FAIL x 7
Domains

According to this domain search there are currently 6,263 domains using the word "twitter", almost all in connection with microblogging. To put that number in perspective, if Twitter wanted to take action against these registrants given current UDRP rates for a single panelist we're talking $9,394,500 in filing fees alone (or around 1.5 billion nigerian naira if that's not illustrative enough for you). That's not including the cost of preparing the filings, representation, etc. that their lawyers (Fenwick & West LLP) would likely charge them.

If you (like Doug Champigny) happen to be on the receiving end of one of these letters recently you might just want to politely but firmly point them at the UDRP and have them prove, among other things, that you were acting in bad faith (don't bother coming crying to me if they do though - this post is just one guy's opinion and IANAL remember ;).

I could go on but I think you get the picture - Twitter has done such a poor job of protecting the Twitter trademark that they run the risk of losing it forever and becoming a lawschool textbook example of what not to do. There are already literally thousands of products and services [ab]using their brand and while some have recently succombed to the recent batch legal threats they may well have more trouble now that people know their rights and the problem is being actively discussed. Furthermore, were it not for being extremely permissive with the Twitter brand from the outset they arguably would not have had anywhere near as large a following as they do now. It is only with the dedicated support of the users and developers they are actively attacking that they have got as far as they have.

The Problem: A Microblogging Monopoly

Initially it was my position that Twitter had built their brand and deserved to keep it, but that they had gone too far with "tweet". Then in the process of writing this story I re-read the now infamous May The Tweets Be With You post that prompted the USPTO to reject their application hours later and it changed my mind too. Most of the media coverage took the money quote out of context but here it is in its entirity (emphasis mine):
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.
Do you see what's happening here? I can't believe I missed it on the first pass. Twitter are happy for you to tweet to your heart's content provided you use their service. That is, they realised that outside of the network effects of having millions of users all they really do is push 1's and 0's around (and poorly at that). They go on to say:
However, if we come across a confusing or damaging project, the recourse to act responsibly to protect both users and our brand is important.
Today's batch of microblogging clients are hard wired to Twitter's servers and as a result (or vice versa) they have an effective microblogging monopoly. Twitter, Inc has every reason to be happy with that outcome and is naturally seeking to protect it - how better than to have an officially sanctioned method with which to beat anyone who dare stray from the path by allowing connections to competitors like identi.ca? That's exactly what they mean with the "when associated with Twitter" language above and by "confusing or damaging" they no doubt mean "confusing or damaging [to Twitter, Inc]".

The Solution: Distributed Social Networking

Distributed social networking and open standards in general (in the traditional rather than Microsoft sense) are set to change that, but not if the language society uses (and has used for hundreds of years) is granted under an official monopoly to Twitter, Inc - it's bad enough that they effectively own the @ namespace when there are existing open standards for it. Just imagine if email was a centralised system and everything went through one [unreliable] service - brings a new meaning to "email is down"! Well that's Twitter's [now not so] secret strategy: to be the "pulse of the planet" (their words, not mine).

Don't get me wrong - I think Twitter's great and will continue to twitter and tweet as @samj so long as it's the best microblogging platform around - but I don't want to be forced to use it because it's the only one there is. Twitter, Inc had ample chance to secure "twitter" as a trademark and so far as I am concerned they have long since missed it (despite securing dubious and likely unenforceable registrations). Now they need to play on a level playing field and focus on being the best service there is.

Update: Before I get falsely accused of brand piracy let me clarify one important point: so far as I am concerned while Twitter can do what they like with their logo (despite continuing to give it away to the entire Internet no strings attached), the words "twitter" and "tweet" are fair game as they have been for the last 700+ years and will be for the next 700. From now on "twitter" for me means "generic microblog" and "tweet" means "microblog update".

If I had a product interesting enough for Twitter, Inc to send me one of their infamous C&D letters I would waste no time whatsoever in scanning it, posting it here and making fun of them for it. I'm no thief but I am a fervent believer in open standards.

10 comments:

  1. Sam, I replied to your post yesterday and I'm replying today try to clarify the point I made. Much of your commentary investigates the descriptive (and possibly even generic) natures of the marks Twitter is attempting to register. This is certainly something that the USPTO considers, and a basis upon which registration may be refused.

    However, it's not raised in any of the Twitter applications, indicating that the USPTO has concluded that the marks are sufficiently descriptive of the services listed to function as a trademark. This conclusion is buttressed by Twitter's original registration of the word mark TWITTER.

    Rather, the TWEET application is rejected on a different basis entirely. The USPTO Examiner asserts that there would be a likelihood of confusion with the marks in three other prior-filed applications, and refuses on this ground. Descriptiveness, or lack thereof, doesn't enter the equation (or hasn't yet; the Examiner may yet assert this as a basis for refusal).

    Distinctiveness also isn't a factor in the applications you discuss today. From a look at the pending Office actions, the only obstacle is a clarification of the wording used to describe the services. In the world of trademark prosecution, this is a fairly straightforward matter more akin to correcting a typo than something so insurmountable as to place either application "on very shaky ground."

    All this is to say that unless the Examiners handling these applications decide to assert new bases of refusal (say, on grounds of lack of distinctiveness), the stylized TWITTER and stylized T apps are headed toward allowance. As I mentioned yesterday, if Twitter can demonstrate senior use of TWEET or otherwise overcome the likelihood of confusion refusals, that one looks good too.

    The upshot of all this is that after a mark is allowed, it is published for opposition, and any member of the public who feels that it would be damaged by registration of the mark can file an opposition with the PTO. This is likely when registration would be challenged, and I'd be surprised if any of these apps sail through the opposition period unscathed.

    Even if they do, however, registered marks can still be challenged for want of distinctiveness, in a cancellation proceeding.

    To summarize, the point I'm making is that although your arguments on Twitter's use of the various marks, and how that goes hand in hand with establishing a lack of distinctiveness, have merit, the applications are in the USPTO's court right now, who seems to have concluded they're just fine on that ground. Once they clear that hurdle, though, that's where the fight will be.

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  2. Tim,

    Thanks again for the detailed explanation. As you can see in the update (which may have come after your comment), I don't so much care for the logos as for the words themselves. The "Twitter" trademark was applied for on 2007-04-26, long before every man and his dog (including cricket commentators!?!) were talking about it. There were some trivial problems to resolve in 2007, it was published at the start of 2008, allowed under section 1b this time last year and finally registered in May after specimens of use (screenshots) were received in March. The point is that the conditions under which the trademark was assessed were very different to the conditions today - hardly anybody knew what twitter was back then and had Twitter['s lawyers] done their job then there wouldn't be thousands of domains containing "twitter", countless products, and a rather unhappy developer community.

    Sam

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  3. Twitter Inc has long neglected to enforce the mark "Twitter". "Twitterific" was released in Jan 2007. There may even be earlier examples. I assumed this was intentional and clever marketing. Maybe they recently got a new lawyer who disagreed with this strategy.

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  4. Apparently they did, though according to the trademark filings they replaced Fenwick & West LLP's Tanda L. Neundorf, Esq. with Karen A. Webb (of the same firm) around April/May. The Twitter trademark was filed by Connie L. Ellerbach, Esq. back in 2007 which would suggest they have used the same firm the whole time. No idea what this new hire was about then, nor how it came about that they got this far with apparently no trademark protection whatsoever - after all Fenwick & West LLP are apparently the #2 law firm in Silicon Valley so you would think they'd know what they're doing. Perhaps they do and Twitter's clueless execs ignored them. I guess we'll never know... in any case whoever's responsible ought to busy themselves batoning down the hatches.

    Sam

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  5. I run http://twitterpowersearch.com and believe we add a service to twitter and would call it bad tast if thet did a C&D letter on us, as you say any site with google in the titel is fair game for Google but the word Twitter has been arround for countless years.

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  6. Did Twitter, Inc. got the trademark for tweet? I'm doing a university project on that topic. Thanks!

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  7. Not yet, but they haven't given up either.

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  8. Interesting reading from all of you.
    Regarding the word twitter.
    if I bought a domain name with the word example twitter.us - an information portal site
    or any other worldwide extension.
    would there be any issue with me doing this ?

    Thanks
    D

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  9. Sam, So what's the latest on Twitter trademarking? I'm referring to Twitter in a manual I'm writing and can't find a clear answer even today. Is it trademarked or not?

    On the other hand, Linkedin's own trademark guidelines say Linkedin must be used as an adjective ONLY and accompanied by R or TM (which is it?). The funny thing is that the first sentence in their explanation uses Linkedin as a noun! Go figure. Still researching Facebook, too, if you have any info on that trademark.

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