[refer to the article itself for the inline links - @samj]
Twitter's "Tweet" Trademark Torpedoed
http://samj.net/2009/08/twitters-tweet-trademark-torpedoed.html
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:
* CNET News: Is Twitter freaking out over 'tweet' trademark?
* TechExpert: Twitter Trying to Trademark "Tweet"
* LA Times: Will Twitter trademark 'tweet' before it’s
genericized?
* PC Magazine: Twitter Trying to Trademark 'Tweet'
* TechCrunch: Twitter Grows “Uncomfortable” With The Use Of The
Word Tweet In Applications
* TechCrunch: Twitter To Developers: “Tweet” Your Heart Out, But
Don’t “Twitter” It
* Bloomberg: Twitter Lays Claim to ‘Tweet’ Trademark in Bid to
Protect Brand
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 tradema...@fenwick.com 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:
* #77695071 for TWEETMARKS (pending receipt of Statement of Use)
* #77697186 for COTWEET (pending clarification)
* #77701645 for TWEETPHOTO (pending transfer to Supplemental
Register)
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).
