By Kristin Bergman

(Updated 10/31/2011 — see end of post)

Twitter owns a family of TWEET marks — cotweet, retweet, and tweetdeck — but in December 2010, its application to register the famous TWEET mark itself was denied. Why? In October 2009, the PTO granted registration of LET YOUR AD MEET TWEETS to Filmfitti, LLC, who assigned it to Twittad, a provider of online advertising. In the PTO’s denial of Twitter’s application, they cited a conflict with Twittad’s registration as LET YOUR AD MEET TWEETS and TWEET would be too similar from the consumer’s perspective.

After some ineffective attempts at resolving this dispute, Twitter has filed a complaint with the United States District Court in Northern California for the cancellation of Twittad’s registration under 15 U.S.C. §1119, which holds that “in any action involving a registered mark the court may determine the right to registration [and] order the cancellation of registrations, in whole or in part.”

In suing Twittad under the Lanham Act, Twitter alleges a dispute of the validity and “registerability” of Twittad’s mark. As the registration was issued less than five years ago, there are no available claims of incontestability to the petition to cancel a registration. 15 U.S.C. §1064(1) (2006).

Twitter alleges that Twittad’s registration of the mark “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 the mark.” Twitter argues that Twittad’s use of LET YOUR AD MEET TWEETS is a generic reference but for TWEETS and its association with Twitter, and on these grounds cannot serve as a mark. In addition, an applicant for registration must show use of the mark in United States commerce to qualify for registration. 15 U.S.C. §1051 (2002). If these grounds do not render the registration subject to cancellation, Twitter also argues that Twittad’s use of the mark considering Twitter’s preexisting rights in the TWEET mark constitutes trademark infringement under 15 U.S.C. §1052(d) (2006).

Twitter has a fairly strong case for its investment in the mark TWEET. In respect to the family of TWEET marks mentioned earlier, Twitter argues that consumers would face confusion as LET YOUR AD MEET TWEETS would mistakenly seem like part of this family. Similarly, Twitter emphasizes its role in giving meaning to TWEET. After Twitter’s launch, TWEET gained significant consumer recognition due to its association with this social networking site. Prior to this, the public simply associated TWEET with a bird’s call. Now the public knows TWEET as “an indication of services that originate from Twitter,” even found in the dictionary with this association.  Still, Twitter’s significant delay in filing a trademark application could be problematic.

If Twitter wins this case and Twittad’s registration is cancelled, Twitter will still face a challenge in applying to register its famous TWEET mark. With the popularity of the mark, TWEET is already on its way to becoming generic, and may be too far in this direction to allow Twitter to successfully register at this time. Nevertheless, considering Facebook’s limited ownership of “face,” despite the difficultly faced in this application process, how the USPTO would go is anyone’s guess. (http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78980756).

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Update (10/31/2011):   Twitter’s lawsuit against Twittad has been dropped, Twittad’s Twitter account is being restored, and now Twittad has agreed to transfer its registration of the “tweet” trademark over to Twitter. In an interview with the Wall Street Journal, Twitter spokeswoman Lynn Fox announced, “We’ve arrived at a resolution with Twittad that recognizes consistent use of Tweet while supporting the continued success of Twitter ecosystem partners like Twittad.” Due to confidentiality agreements, there’s no news on whether compensation or other exchanges took place between parties to enable this settlement. Still, Twittad’s CEO, James Eliason, uses this situation to remind people going forward: “The moral of the story is to make sure you trademark and patent-protect everything.”