Twitter and Twittad Settle Trademark Infringement Suit; Twitter agrees to restore Twittad’s account

Due to the popular social networking site Twitter, the noun/verb “tweet” is now a familiar and exhausted term in everyday discourse. However, it is also a registered trademark, and Twitter expressed its protectiveness over the mark in a recent complaint against advertising company Twittad’s registration of “Let Your Ad Meet Tweets.”

Twittad, a limited liability company with its principal place of business in Iowa, maintains the website twittad.com, which offers advertising services contingent on Twitter’s services. Twittad currently pays a network of over 27,000 private users for tweeting commercial ads. In its federal trademark application for “Let Your Ad Meet Tweets,” Twittad specified that the registration was namely for providing advertisement space on the internet for others.

In its complaint, Twitter points out that Twittad failed to mention that its advertising services were meant to be used solely in connection with Twitter’s services. According to Twitter, “Tweet” is the only distinctive portion of this mark, which was registered in order to exploit the “popularity and fame of Twitter’s ‘Tweet' brand." (2011 WL 3983379 (N.D.Cal.)). As Twitter also owns a host of “tweet” marks including “Cotweet,” “Tweetdeck,” and of course “Retweet,” Twittad’s mark could appear to be in this family of marks and confuse consumers.

Twitter is specifically claiming that “Let Your Ad Meet Tweets” should be cancelled pursuant to 15 U.S.C. §1502(d), §1064, and §1119. Also known as the Lanham act, the federal statute provides that a trademark registration should be refused if it “comprises a mark which so resembles a mark registered in the Patent and Trademark Office,” 15 U.S.C.A. § 1502(d) (West)). A petition to cancel registration may be filed by “any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment.” Id. § 1064 (West). Courts have the power to cancel such registrations under §1119.

However, according to JurisNotes, as of 10/19/2011, Twitter has agreed to drop its suit against Twittad in exchange for being assigned the entire interest in the mark. While other terms of the settlement are confidential, it seems that Twittad’s Twitter account will be restored and it can continue its advertising services while still using the tagline “Let Your Ad Meet Tweets.”

For more information, see the original complaint for declaratory judgment filed in the Northern District Court of California. (2011 WL 3983379 (N.D.Cal.). The trademark registration for “Let Your Ad Meet Tweets” can be found here: http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:bpjbqg.2.1The assignment of title history for the mark clearly indicates that Twitter was assigned the entire interest on 10/11/2011. http://assignments.uspto.gov/assignments/q?db=tm&qt=sno&reel=&frame=&sno=77513740

Symposium: Global Trademark Protection

The second panel presentation discussed trademark protection in a globalized world. Panelists discussed the economics of trademark protection, new issues in protecting trademarks internationally, and the impact of the recession on counterfeiting. Speakers on the panel included:

Moderator: The Honorable Kent Jordan, Third Circuit Court of Appeals
Glenn Gundersen, Dechert LLP
Marcia Paul, Davis Wright Tremaine LLP
Jef Pearlman, Public Knowledge
Martin Schwimmer, Trademark Blog and Moses & Singer
Peter Vogl, Jones Day

Symposium: Trademark Use in Virtual Environments

The first panel presentation of the day discussed the use of trademarks in virtual environments. Panelists discussed what it means to have virtual trademark, how trademarks in virtual worlds differ from real-world trademarks, and what types of issues arise in the new medium. Speakers on the panel included:

Moderator: Professor Christopher Yoo, University of Pennsylvania Law School
Bryce Coughlin, Steptoe & Johnson
Kevin Goldstein, Stradley Ronon Stevens & Young, LLP
James Grimmelmann, New York Law School
Sharon Marsh, US Patent & Trademark Office

Video Coming Soon

PIPG to Host International Trademark Symposium

Penn Intellectual Property Group's second annual symposium, to be held on Wednesday, April 1st, is titled "Trademark Law in a Global Economy." We are interested in exploring modern issues in trademark law that have arisen as a result of the globalization of businesses and the rise of the Internet. Specific panel topics are (1) trademark use in virtual environments, and (2) trademark protection in a globalized world (discussing the trademark problems businesses face as they attempt to expand globally, as well as the increasing importance of the Internet for global IP law).

The symposium will be held on the Penn Law campus in Philadelphia, and will run from approximately 10:00am - 3:00pm.

PIPG would like to thank Jones Day for its generous support.

The full schedule is as follows:

10:00: Check-in and breakfast

10:30-12:00: Panel 1
“Trademark Use in Virtual Environments”
Moderator: Prof. Christopher Yoo
• Bryce Coughlin, Steptoe & Johnson
• Kevin Goldstein, Stradley Ronon Stevens & Young
• James Grimmelmann, New York Law School
• Sharon Marsh, U.S. Patent & Trademark Office

12:00-12:30: Lunch

12:30-1:15: Bret Parker, VP, Chief Trademark & Copyright Counsel, and Asst. GC, Wyeth
"View from the Corporate Frontline: Practical Thoughts on the Benefits and Pitfalls for Brand Owners in the Global Online World"

1:15-1:30: Break

1:30-3:00: Panel 2
“Trademark Protection in a Globalized World”
Moderator: The Hon. Kent Jordan
• Glenn Gundersen, Dechert
• Marcia Paul, Davis Wright Tremaine
• Jef Pearlman, Public Knowledge
• Martin Schwimmer, Moses & Singer
• Peter Vogl, Jones Day

If you are a practicing attorney or a law student and you would like to attend, please contact me at karenac@law.upenn.edu. There are 3.5 CLE credits available for this event.

No You Can't: Obama Campaign Sued for Trademark Infringement (but not really)

Generally, politics and IP law don't come into contact much, but this story was too fun to ignore. According to a humor column in New Jersey's Politicker, the phrase "yes we can" is trademarked by the National Center for Home Food Preservation and Canning, a D.C. lobbying group. (Get it?) A protest rally against the campaign's alleged trademark infringement drew a whopping 35 people. Asked about the lawsuit, a canning executive stated, "That slogan is known all over the country for just one thing: canning.”

Although not a real claim, we thought it would be interesting to give it a brief analysis. Since no consumer would reasonably believe Obama has entered the canning industry, presumably the claim here would be one of dilution. Under the Trademark Dilution Revision Act of 2006, the NCHFPC need only show that the campaign's use of the phrase is likely to cause dilution. However, they must also demonstrate that their use of the phrase is "famous" and "distinctive." Canning executives' claims aside, the "plaintiffs" here would be unlikely to meet this burden.

The full story can be accessed here.