19 August 2009

Twitter's "Tweet" Trademark Torpedoed


Last month Twitter founder Biz Stone announced in a blog post (May The Tweets Be With You) that they "have applied to trademark Tweet because it is clearly attached to Twitter from a brand perspective". This understandably caused widespread upset as the word "tweet" has been used generically by users for some time as well as in any number of product names by independent software vendors. Here's some samples from the resulting media storm:
What they failed to mention though was that according to USPTO records (#77715815) not only had they actually applied some months before (on 16 April 2009) but that their application had been refused that very same day (1 July 2009).

According to documents from the Trademark Document Retrieval system, their lawyers (Fenwick & West LLP) were notified of the rejection by email to [email protected] that day. The USPTO had explained that "marks in prior-filed pending applications may present a bar to registration of applicant’s mark. [...] If the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks", referencing and attaching not one, not two but three separate trademark applications:
Now I may not be a lawyer (I did play a role in overturning Dell's "cloud computing" and Psion's "Netbook" trademarks) but given all three of the marks identified look like proceeding to registration (it only takes one to rain on their parade), it's my non-expert opinion that Twitter has a snowflake's chance in hell of securing a monopoly over the word "Tweet".

That's too bad for Twitter but it's great news for the rest of the community as it's one less tool for locking in Twitter's rapidly growing microblogging monopoly. People do use the word "tweet" generically (including with non-Twitter services) and if Twitter, Inc. were successful in removing it from the public lexicon then we could all suffer in the long run.

In any case it is neither serious nor safe for one company to become the "pulse of the planet" and that is why I will be following up with a series of posts as to how distributed social networking can be made a reality through open standards (if that stuff is of interest to you then subscribe and/or follow me for updates). I've also got some interesting things in the pipeline in relation to standards and trademarks in general so watch this space.

Anyway it just goes to show that with trademarks you need to "use it or lose it". The "propagation delay" of the media has dropped from months at the outset to near real-time today so companies need to move fast to protect their marks or lose them forever. As for whether the 1 July post was a scramble to protect the mark on receipt of the USPTO's denial, whether the USPTO was acting in response to it, or whether it was just a coincidence and particularly bad timing I don't know. I don't really care either as the result is the same, but I would like to believe that the USPTO is becoming more responsive to the needs of the community (after all, they revoked Dell's cloud computing trademark in the days following the uproar, despite having already issued a "Notice of Allowance" offering it to them).

Update: It turn out that USPTO most likely acted in response to Twitter's 10:37am blog post as (after months without action) they conducted an XSearch at 8:30pm and sent the rejection notice at 9:00pm. I'd chalk that up as a FAIL for Twitter and a WIN for the USPTO.

Update: See also: The Inquisitr: No Tweet trademark for Twitter, complete with the hilarious graphic at the top (used without permission but with thanks to the creative genius at The Inquisitr).

Update: See also: CNET News: Not so fast, Twitter: 'Tweet' isn't yours, which is a good, balanced, albeit unsourced article.

29 comments:

  1. Sam, found your post because I maintain an active search on Tweetdeck for several IP terms, including "trademark."

    I agree with the "use it or lose it" maxim, but this is precisely why I disagree with your conclusion. The first use dates of each of the prior filed apps cited in the TWEET Office action are certainly later than Twitter's first use date for all of the services listed in the app. So although the PTO is constrained to use the filing dates of the apps for a 2(d) analysis, Twitter will most likely slug it out with the other applicants outside the PTO, before proceeding with this app. I'm more than a little curious why Twitter didn't list a first use date in the app in the first place.

    That probably won't be the end of the story, however. I note that the TWEET Office action doesn't include what I'd expect; that is, a refusal based on genericness. I'm guessing even if Twitter secures a registration, it'll be challenged on (at least) this ground.

    Tim

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  2. Tim,

    That's an interesting take on the situation (and you obviously know the ropes) but I tend to agree that they're still stuffed. It would certainly be a shame if ISVs were manhandled over this but that was one of the first things I considered... fortunatly I reckon CoTweet at least will tell them to go jump.

    Anyway with any luck people will use it ad nauseum in the mean time so by the time they get around to it there'll be no doubt left whatsoever (as if there is any today).

    Sam

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  3. what I found interesting about this situation is that the term "tweet" was not initially applied to the service by the company, but by the customers. In some respects, it had already entered common usage before the company decided that they wanted to protect it. Problem is, the intellectual property that they were trying to protect was something that someone else (the general community) had come up with.

    best,

    Ross Rader
    Hover.com

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  4. Oh it's worse than that... they were said to be *embarrassed* by the term "tweet" in the lead up to trademarking it - they certainly didn't encourage anyone to use it so far as I can tell. That being the case they are clearly trying to coopt a term from the public lexicon and in doing so further secure their effective monopoly.

    I think we can be fairly confident that sanity will prevail.

    Sam

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  5. Interesting. I would think that they could narrow down the description of associated services to achieve registration on the mark.

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  6. @Tamara: That's another interesting point - have you had a look at the classes/services covered and if so, is what's left even worth trademarking? CoTweet at least is basically Twitter for multiple users so I'd say they'd take the teeth out of the trademark alone.

    Sam

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  7. (Found this via a Louis Gray share that showed up on Facebook, by the way.)

    I'm with Ross Rader. I really don't care about the monopoly issues, since many tech monopolies fail (remember when MySpace dominated the world?). And I wouldn't have a problem with Twitter trademarking the term tweet, if they had been the ones to originate it in the first place. It's like Apple claiming credit for jailbroken iPhones.

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  8. @Emporises: I do care about this particular monopoly because the "pulse of the planet" is a critical service that should be distributed like email. The world's getting smaller (think Iran) and such services provide a lifeline not only to non-western countries but to us at a time where politics, media, etc. are increasingly out of control.

    I'm not sure about the iPhone comparison but you're spot on about the source - we "invented" the term and it's ours to keep (not for them to beat off competitors, thus denying us choice in the process).

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  9. Update: It turn out that USPTO most likely acted in response to Twitter's 10:37am blog post as (after months without action) they conducted an XSearch at 8:30pm and sent the rejection notice at 9:00pm. I'd chalk that up as a FAIL for Twitter and a WIN for the USPTO.

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  10. So I've looked at the classes and while Twitter claim IC 38, 41 and 45 the other three are class 42. Also, Twitter have filed under section 1(b) "Intent to Use" while the others claim first use dates late 2008/early 2009. I'm not actually convinced that Twitter did use the term until migrating to it from "update" very recently (and may even have discouraged it) - indeed if you look at their documentation they distance themselves from the terminology and use it generically without any trademark symbols or attributions:

    "Twitter always asks the question, "What are you doing?" Each answer to that question is considered a Twitter status update, or what people often call a "tweet." Each update is 140 characters or less. Once you've signed up, just type your first tweet in the web box. We'll even count the characters for you! Click update to post the update to your profile. [...] Another way (some say the best way!) to post updates is from your cell phone". Furthermore they use the term both as a noun ("How to post your first tweet") and a verb ("What do people tweet about?") and even the FAQ gets it wrong:

    "Twitter is a service for friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent messages. People write short updates, often called "tweets" of 140 characters or fewer. These messages are posted to your profile or your blog, sent to your followers, and are searchable on Twitter search."

    None of this helps their case so while they may have had a chance to "negotiate" with their developer partners quietly to ensure a safe passage, there are far too many eyeballs on them now for that.

    Sam

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  11. Wow, it just keeps on getting better:

    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.

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  12. And as if that wasn't enough, a week or so they finally got around to applying to trademark their logo (both the "t" #77721757 and "twitter" #77721751). The word mark for Twitter, #77166246 (filed 2 years beforehand on April 26 2007) was also to proceed to registration the following month (#3619911 on 12 May 2009).

    The mind boggling thing is though that to this very day they appear to make no attempt whatsoever to claim any trademarks, anywhere on the site (including in the terms and conditions). They even invite people to "download our logo which is completely free of any ™ or ® symbols.

    Now that this meaning of the word has entered the dictionary (which has to be like kryptonite for a trademark) I wonder if Twitter itself isn't susceptible - after all the word means "(of a person) to talk in an excited or nervous manner" so the mark itself is already weak (descriptive).

    Sam (who's expecting to see ™ and ® symbols littering the site rsn)

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  13. Nexst up? "Twitter successful in its bid to trademark "Twit" as a label for its users... " *heh* Stranger things have happened. ;-)

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  14. Sam - not sure why the USPTO feels it has the right to allow Twitter as a trademark, when the word was in dictionaries long before the World Wide Web & the site (i.e. Webster's New World College Dictionary, 3rd edition, 1988 Simon & Shuster), as was the word Tweet.

    It's interesting to note that they were turned down on tweet - here's a direct quote from a letter received today from Twitter's lawyers:

    "5. add a trademark notice in a form satisfactory to our client to any purely descriptive use of any of our client's trademarks, including TWITTER and TWEET."

    Seems to me like they intend to use intimidation where legal matters fail - this was part of a demand to turn over to them any domains with the word twitter in the URL.

    Interesting days, these...

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  15. Many of Twitter messages are useless. Automated and without sense. I am dissapointed from Twitter and I don't care if it will be trademarked or no. I investigate new similar services, like http://gloggy.com to bring me this functionality without all the nonsense.

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  16. Just checked the UK Intellectual property Office and Tweet has been trademarked in April in 4 classes: www.ipo.gov.uk/ohim?/ohimnum=E8395441

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  17. Apologies, the filing date is June 16th: www.ipo.gov.uk/ohim?/ohimnum=E8395441

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  18. Correction [12th June], go see for yourself

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  19. And it is only an application, so if anybody wants to protest, now is the chance to file against the application

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  20. Good sleuthing but that won't be necessary as Community Trade Mark E8359441 is dependant on US Trademark #77715815 (which is set to be rejected).

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  21. Sam, I thought that you could trademark per country, maybe I should gen up on this area

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  22. Yes they could drop the priority date and file per country but it's more complicated/expensive and obviously means they won't have the time advantage.

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  23. Sam Johnston: you are wrong about the Community TM being dependent on the U.S. one. Please consult a trademark attorney before you make such pronouncements.
    Doug Champigny: you are wrong about dictionary words not being eligible for registration. It all depends on how the word is used. For example, APPLE is a registered trademark for computers as we all know, but would not be allowed for registration for apples (the fruit). Similarly, TWITTER and TWEET can be registered as trademarks.

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  24. @AC: Twitter consulted a trademark attroney from the outsed and look what good it did for them!

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  25. Wow good post. we really get confused to get the better trademarks. with this blog, i learn many things. thanks.

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  26. Wow very good read. I'm glad to hear that "tweet" won't be scooped up.

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  27. I think you're missing the point with trademark law. Just because a word is widely used doesn't mean it has become generic in trademark terms. Genericide only happens when the mark refers to the underlying "thing" (product, service, action, etc) versus the brand. For instance people use Kleenex to refer to ALL tissue. Conversely, people don't use Tweet to refer to ALL electronic status postings.

    Tweet refers specifically to Twitter. The main purpose of a trademark is the identification of origin. Tweet still passes muster on that test. If you were to ask the average online user what Tweet mean, the answer most often will be related to Twitter. Even if the word is found to be generic, which I doubt it will be (the classic example of genericide is Kleenex, yet it's still actually a valid trademark despite attempts and challenges), then Twitter can still claim secondary meaning. This means that when people see/use/hear the term it is in direct relation to that product/service - in this case Twitter.

    Therefore Twitter has established both a strong mark and secondary meaning, therefore I believe the mark will pass and become registered. Furthermore, just because a mark is registered doesn't mean people need to stop using the mark - it only prevents the use of the mark as a product/service identifier in commerce.

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  28. Is the word Twit safe to use in a domain name registration? Such as Twit******.com Where ****** is a generic phrase.

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  29. This may be old news, but I just ran across your blog while researching my current response to Twitter. Twitter has cut off both of my applications that use it's API. One of them, Krumlr.com, is a social bookmarking site that lets you Tweet your bookmark finds on Twitter. Hence the name TweetMarks. I launched it initially in late 2007. The other application, PayMeTweets, has nothing to do with the issue but they cut it off anyway. I filed for the trademark application a long time ago (it seems). Twitter now claims that I violated their terms of service. I have been unable to find any such terms from the time I filed the trademark. But that may be neither here or there. At this point, since Twitter has killed both my applications by cutting of API access (this is not the first time by the way), I am in no mood to comply with their highhanded and arrogant bullying tactics. I'm sure legal action from them is next. They say I have not been amicable. I haven't done anything other than politely retain my right to my application. I have invested many months of work on their "free" API platform and let me tell you nothing is really free. I am not going to waste anymore effort with them but I am going to get that Trademark. It is still a free country and the USPTO says my mark has precedence so take your ever-changing terms of service and cram them up a bird's butt.

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