In Battle Over The ‘Tweet’ Trademark, Twitter Sues Twittad

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You may remember that back in July 2009, Twitter made a big stink about developers using the term ‘tweet’ in their Twitter apps. Oddly enough, while Twitter has long been trying to register the ‘tweet’ trademark in the United States, it has so far failed despite its efforts mainly because one or more third-party developer(s) actually beat them to the punch in – successfully – filing for trademarks including the word ‘tweets’.

Now, Twitter has moved to sue one of those developers, online advertising service provider Twittad (see launch coverage), in an attempt to cancel the latter’s registration of the “Let Your Ad Meet Tweets” trademark.

In the complaint, which is embedded below, Twitter alleges as follows:

This action arises from the registration of the mark “LET YOUR AD MEET TWEETS” by Twittad, LLC (“Twittad” or “Defendant”) in connection with online advertising services for use on Twitter. Defendant’s LET YOUR AD MEET TWEETS registration 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 its own mark.

In fact, it appears that Defendant has used LET YOUR AD MEET TWEETS solely as a generic phrase to refer advertising in connection with Twitter itself, and as such it is incapable of serving as a mark, rendering the registration subject cancellation on that ground. Alternatively, if Defendant is able to establish use of LET YOUR AD MEET TWEETS as a mark, its registration is subject to cancellation based on Twitter’s preexisting rights in the TWEET mark.

Accordingly, Twitter seeks cancellation of Twittad’s LET YOUR AD MEET TWEETS trademark registration under the Lanham Act 15 U.S.C. § 1052(d), § 1064 and § 1119.

Twittad originally filed its trademark application on July 2, 2008. From their website:

I have contacted Twittad, but haven’t heard back yet. Twitter comments:

“Twitter’s organic growth has taken many forms, including a widespread, dictionary-documented association of the word ‘Tweet’ with the use of Twitter. It is in the best interests of our users and developers for the meaning of ‘Tweet’ to be preserved to prevent any confusion, so we are taking action to protect its meaning.”

Dictionary-documented, really, you ask? Yup!

In a response to an inquiry made by NyDailyNews.com back in March 2011, Twittad founder James Eliason acknowledged that Twitter had expressed “concern” over the Let Your Ad Meet Tweets trademark and “wanted us to assign our trademark to them.”

However, Eliason called the dispute “a timeline issue” and that his company acquired the rights “well before the word ‘Tweet’ became widely used in the Twitter ecosystem”. He also wrote:

“We firmly stand by our position of the legitimacy of the trademark due to the fact that our mark was cleared by the Trademark office in 2008.”

Fighting words indeed.

However, reading between the lines, it seems like Eliason is trying to cut a deal with Twitter, i.e. sway the company into acquiring Twittad’s U.S. trademark.

Doesn’t look that that’s ever going to happen, though. Notably, Twitter has not only sued them but also suspended Twittad’s @Twittad account. It’s also worth noting that, in the complaint, Twitter asserts that there have been “numerous attempts to resolve the dispute amicably”.

More as the story develops.

Update: Eliason has provided us with the following statement:

Beginning in 2008, when Twittad was formed as the first sponsored tweet network, we took appropriate legal action through trademark and patent processes. We also had communication with then CEO Evan Williams – in which he recommended that we should “continue to experiment” with an ad model that might succeed on the network.

From when Twitter launched through late 2010 there were no “developer rules of the road” with regards to trademarking or using the word “Tweet”. In fact, our trademark was up for opposition in Nov 08- Oct 09 – in which Twitter did not oppose the mark. We fully believe in free communication and in the Twitter network as a whole (especially all the 3rd party developers who helped grow the Twitter network).

It is disappointing that Twitter suspended our Twitter account and that they have decided to file this suit against us based on the multitude of facts in this case.