We’ve previously explained how trademark rights stem from actual use in commerce. Well, for one small Iowa based company, their early use of the word “Tweet” was enough to beat out tech giant Twitter! The history of this case is a great example of why it is important to seek federal protection as soon as possible.
Iowa based Twittad, LLC, began using the mark “Let Your Ad Meet Tweets” back in 2008. It quickly filed for federal protection and obtained a registration a year later without any objection from Twitter (or from any other company for that matter).
As a result, Twittad obtained exclusive rights to use that mark as well as any other mark that would be confusingly similar in connection to online advertising. Not surprisingly, Twitter, Inc. became upset about this when it learned about the registration!
Unfortunately for Twitter, in order for it to obtain rights to use the word “Tweet”, the corporation had to file a petition seeking to cancel Twittad’s trademark registration.
It filed suit and argued that the word “Tweet” was already a famous Twitter term prior to Twittad’s filing of its trademark application and, further, that Twittad’s registration and use of the word “Tweet” was an unfair attempt “to exploit the popularity and fame of Twitter’s TWEET brand.”
Twitter used this reasoning to claim that Twittad’s registration should be canceled and that Twitter should be deemed the owner of the “Tweet” mark.
First Use Principle
However, Twittad’s registration created a legal presumption that said Twittad was the rightful owner of the mark. As a practical matter, that meant Twitter was forced to either deal with Twittad and settle on terms that might be favorable to Twittad or spend a lot of money and time fighting Twittad in court. Not surprisingly, the parties settled.
Although the specific terms were not disclosed, it is clear that Twitter obtained the rights to the mark and Twittad was granted the right to keep using “Let Your Ad Meet Tweets.” The parties did not disclose whether Twitter paid Twittad, but based on the strength of Twittad’s case, it is likely that some chunk of cash changed hands.
In short, Twittad lost exclusive rights to the word, but it was allowed to keep using the mark and likely pocketed some nice spare change.
Twittad’s registration gave it the upper hand and is a great example of the power of a federal trademark registration. If you have a brand, you should check out MightyMarks.com to learn how you can protect your rights!
Image Credit: Thinkstock/Kristina Heiner
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.