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The 140-Character Trademark Lesson

Posted in Branding, Genericide, Guest Bloggers, Loss of Rights, Mixed Bag of Nuts, Social Media, Social Networking, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC

When I think of Twitter, I think of — it’s really hard to define because we’re still coming up with the vocabulary — but I think it’s defined a new behavior that’s very different than what we’ve seen before.

— Jack Dorsey, Twitter Co-Founder in 2009

My, how time flies. Only four years ago, co-founder Jack Dorsey was still trying to figure out how, exactly, to define Twitter. Last week, Twitter filed its Form S-1 — the public prospectus required ahead of an initial public offering — with the Securities and Exchange Commission. In it, Twitter describes itself as “a global platform for public self-expression and conversation in real time” that has “democratized content creation and distribution.” Analysts evaluating Twitter’s S-1 suggest the company is worth $12 billion.

Trademark-types reading news coverage of Twitter’s S-1 discovered something else: Twitter is concerned that its trademarked 140-character messages, called “Tweets,” may become generic. Discussing the risks to its intellectual property assets, Twitter warns potential investors that “there is a risk that the word ‘Tweet’ could become so commonly used that it becomes synonymous with any short comment posted publicly on the Internet, and if this happens, we could lose protection of this trademark.”

For Twitter, such loss would be an unfortunate twist of fate because the brand was so well thought out in the beginning. Reading Jack Dorsey’s explanation of how the name “Twitter” (and from that, “Tweet”) came about provides an enlightening peek at how start-up entrepreneurs think about trademarks:

The working name was just “Status” for a while. It actually didn’t have a name. … So we did a bunch of name-storming, and we came up with the word “twitch,” because the phone kind of vibrates when it moves [from receiving an SMS message.] But “twitch” is not a good product name because it doesn’t bring up the right imagery. So we looked in the dictionary for words around it, and we came across the word “twitter,” and it was just perfect. The definition was “a short burst of inconsequential information,” and “chirps from birds.” And that’s exactly what the product was.

. . . So we just fell in love with the word. It was like, “Oh, this is it.” We can use it as a verb, as a noun, it fits with so many other words. If you get too many messages you’re “twitterpated” — the name was just perfect.

Like most start-up entrepreneurs, Jack Dorsey clearly understood the spectrum of trademark distinctiveness and the value of a suggestive name. Yet, a few other important trademark concepts eluded him.

First, he uses the dreaded D-word to tell the story of naming the company. This is a trademark no-no that has been discussed extensively here, here, and here. Second, he announces how versatile the word Twitter is: how it can be a “noun” (presumably generic?), how great it works with other words, and how it will make a great brandverb. Brandverbing – or turning a perfectly good trademark into a verb – is also a very dangerous trademark activity. It ranks right up there with with – I don’t know – tweeting while rollerblading (do that too often, and you’ll need a lot of band-aids.) Third, and perhaps most importantly, he is aware of trademark opportunities from extending the brand and is openly talking about them to the media, but he hasn’t filed an intent-to-use trademark application to protect them.

Case in point: Twitter ran into some trademark problems soon after the interview that produced the above quotes. About a month after the interview, Twitter filed for trademark protection for the word “Tweet” as applied to telecommunication services, blogging, and social networking services. But another company had already registered the trademark “Let your Ad Meet Tweets” for related services (yes, Tweet makes a great noun), and Twitter’s application for “Tweets” was refused. Adding to the refusal were two prior pending applications, one from the company Tweetdeck, Inc. for the trademark “Tweetdeck” (see how great Tweet works with other words?) and another for “Cotweet” filed by Launchability, Inc. (doesn’t Tweet make a great brandverb?). Twitter subsequently acquired all three trademarks, resorting to litigation in federal court for one.

Perhaps for that reason, we saw the following statement from another Twitter co-founder, Biz Stone, in a Twitter blog post just a few months after Jack Dorsey’s interview:

We have applied to trademark Tweet because it is clearly attached to Twitter from a brand perspective but we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word Tweet. However, if we come across a confusing or damaging project, the recourse to act responsibly to protect both users and our brand is important.

In this statement, Twitter acknowledges that it didn’t get its trademark act together quickly enough, but shows a sensitivity to the problem and a recognition that earning the label of a trademark bully would be even worse. When faced with the choice between managing a tribe by giving permission or building a bullet-proof brand by revoking it, Twitter clearly favored the tribe and the freedom to associate. That choice will have a huge payoff for Twitter’s founders in a few months.

That choice, however, could also have continuing consequences for Twitter. As trademark-types know, trademark rights are dynamic; and, as Twitter’s S-1 discloses, there is still a real risk that the word “Tweet” could become generic and unprotectable as a trademark. Some of this risk is because of Twitter’s ubqiuity, and some of it is because of Twitter’s early trademark choices. Investors looking at Twitter will have some tough trademark questions to answer.

What do you think, with 100 million daily Twitter users tweeting 500 million Tweets each day, is the word “Tweet” at risk for genericide? Would it matter? Will Twitter need to do an about face from Biz Stone’s permissive statements to prevent genericide, or dilution? Will doing so get Twitter labeled a Trademark Bully? How should Twitter balance these seemingly competing interests?