16 September 2011

The company behind social-networking and micro-blogging site, Twitter has taken action to sue a software developer in an attempt to cancel its registered trademark.

Although Twitter Inc. registered the trademark ‘TWEET’ as a pan-EU trademark in 2010 it has so far been unsuccessful in its efforts to register the mark in the US. Beating Twitter Inc. to the post, Twittad filed an application to register its trademark ‘Let Your Ad Meet Tweets’ in 2008 (2 years after Twitter’s launch). This has, in effect, blocked Twitter from registering the text mark ‘TWEET’ in the US.

Refusing to accept that a company which develops Apps specifically for use on Twitter should have a superior claim to the word ‘TWEET’, Twitter has recently launched proceedings to try to affect a cancellation of Twittad’s trademark. The complaint is based on the grounds that Twitter has pre-existing rights in the Tweet mark, and that the registered mark “unfairly exploits the widespread association by the consuming public of the mark ‘TWEET’ with Twitter…”

While the companies look set for a protracted legal battle, Twittad’s actions should serve as a warning for other companies that may be thinking of using a well-known unregistered brand in their trademarks. Although it may be possible to register the mark, registration  does not provide 100% security where there is established goodwill, (i.e. a strong reputation) in the unregistered brand. In the UK, as in the US, it is possible to invalidate a registered trademark if you can prove that you have earlier rights over an identical or confusingly similar brand. Although this can be an extremely high evidential barrier to surmount, if successful, the conflicting trademark will be removed from the trademark registry and the owner of that mark will be at risk of being sued for infringement in any future use.

Further reading:

http://www.courthousenews.com/2011/09/12/Twitter.pdf

By Katey Dixon