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Twitter's TWEET apparently distinctive - blue dog blog™
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littlebluedog
littlebluedog
Tim
Wednesday, August 19th, 2009 11:52 am
Twitter's TWEET apparently distinctive

Twitter, Inc. applied to register the mark TWEET in April 2009. The services listed in the application, paraphrased, are
  • providing online and telecommunication facilities for real-time interaction between and among users of computers and communication devices
  • providing an online community forum for users to share information and engage in social networking
  • providing on-line journals featuring user-defined content
  • providing a social networking website
Incidentally, these are the same services listed in Twitter's current registration of TWITTER, and its co-pending application to register TWITTER in stylized text.

The Twitterverse is making much ado today that the PTO has initially refused registration of the mark, but I think the main articles being retweeted (Sam Johnston's, and Brian Solis') miss the mark slightly on what this means. Here's my take.

To be registrable, a mark must be distinctive when applied to the goods and services listed, and can't create a likelihood of confusion with any marks in prior-filed applications of registrations. Two separate questions.

Also, that's prior-filed, not prior-used. If you've been using your mark for 20 years and some junior user files an application to register it (or a similar one) before you file to register yours, the PTO makes you wait in line while it processes the one that's been filed first. You have to slug it out with that junior user in court.

So it's interesting that Twitter waited so long to apply to register TWEET, considering that so many third-party services have sprung up around the Twitter phenomenon, several of which incorporate the word "tweet" in their names.

But what's more interesting is that, despite just about every Twitter user uses the word "tweet" to refer to the action of posting on Twitter, or to refer to a post on Twitter, the PTO didn't assert that the mark TWEET is no longer distinctive -- or, in other words, that it is merely descriptive of the listed services, or even generic (i.e., the commonly used term) with respect to the listed services.

Rather, in the July 1 Office action issued by the PTO in this app, registration is refused based on a potential likelihood of confusion of TWEET with the marks in three prior-filed applications (for TWEETMARKS, COTWEET, and TWEETPHOTO, all for services related to Twitter).

All three prior-filed apps list first-use dates in early 2009. Twitter's TWEET app doesn't list a first-use date. I'm just guessing here, but Twitter probably used the term prior to that. And if so, Twitter's going to have to slug it out in court with these three applicants, or somehow persuade the PTO that no likelihood of confusion will exist, before the PTO will move forward on the TWEET app.

But back to distinctiveness (or lack thereof): it won't be the end of the story if Twitter secures this registration. Registered marks can be challenged on a number of grounds, including allegations that the mark shouldn't have registered in the first place, for example because it's merely descriptive, or generic. In other words, the PTO's conclusions based on distinctiveness can be challenged.

Also, there might be a substantial question of ownership. Only the owner of the mark can apply to register it, and the ownership concept is sometimes sticky. Many Twitter users believe that users coined the term "tweet," not Twitter; if this argument has merit, it'll be another challenge Twitter will have to defeat.

In essence, I don't think Twitter will have as much of a difficult time getting a registration as it will have keeping it.

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