Having just jumped on the Twitter bandwagon (barely catching it as it sped by my old-fashioned self), I’m still learning how to “tweet” — and even what “tweeting” means. Twitter’s attempt to register TWEET as a trademark with the U.S. Patent and Trademark Office is a good old-fashioned lesson, though, on the word game that is the federal trademark application process and why you should consider consulting a lawyer before assuming that, just because you’ve thought of the greatest trademark since COCA-COLA, you can use it risk-free and register it without a hitch.
Twitter’s trademark application for TWEET is pending. The Trademark Office has issued a preliminary response telling Twitter to get in line because at least three other pending applications may have beaten Twitter to the punch. Lesson No. 1: Before slapping down the nonrefundable application fee, check to see what other marks are out there like yours in the same or similar category of goods and services.
In Twitter’s case, we have three: First is COTWEET in connection with software hosting services, in use since January 2009. Next up, TWEETMARKS, in use since February in connection with a health and fitness website. Finally, TWEETPHOTO, in use since March in connection with a website for sharing photos and videos.
That doesn’t mean it’s all over for Twitter, though. Surely Twitter’s attorney searched for similar marks and filed with a plan to overcome them. Right now she’s likely analyzing each of those pesky obstacles to see if their position ahead of Twitter is warranted. COTWEET, after fixing some procedural hiccups, looks on its way to registration. To overcome COTWEET, Twitter will need to show that 1) it used TWEET before COTWEET was first used; 2) Twitter’s category of services is distinguishable; or 3) the TWEET mark is relatively weak and more than one similar mark can co-exist without confusing consumers. Case in point: TWEETMARKS. The Trademark Office didn’t find COTWEET an obstacle to TWEETMARKS’ registration. Why can’t Twitter’s TWEET co-exist peacefully, too?
TWEETPHOTO isn’t faring so well. The Trademark Office has preliminarily refused to register the mark, calling it…gasp…“merely descriptive.” Lesson No. 2: Consider whether your mark is even protectable as a trademark. Is it merely descriptive of your goods and services, and, if it is, can you prove you’ve been using it long enough and continuously enough that consumers think of you when they see the mark? Ironically, the Trademark Office dubbed TWEETPHOTO merely descriptive by defining “tweet” as “an entry posted on the microblogging service Twitter.” The Trademark Office is basically saying TWEET has become common jargon and can’t be monopolized as used in connection with Twitter.
Except, oddly, the Trademark Office didn’t make the same complaint with respect to Twitter’s attempt to register TWEET. Why the disparity? Each application is assigned a different examining attorney, so an application’s review is subjective, leaving trademark attorneys like me to make educated guesses about how an application will be treated.
Confused yet? Then there’s poor little guy TWEETMARK (not to be confused with TWEETMARKS far ahead of him in line), who arrived at the party dead last, lining up way outside the door behind Twitter and the others.
All this over a little TWEET?