For the last month or so I’ve been following the antics of Twitter as they attempt to assert rights to the word "tweet". Based on their completely inconsistent—one might even say schizophrenic approach, I feel justified in using the word "antics".
Until very recently, Twitter didn’t seem to care much about what third-party apps were named. In fact, in a blog post from July 2009, founder Biz Stone said, "Regarding the use of the word Twitter in projects, we are a bit more wary although there are some exceptions here as well. After all, Twitter is the name of our service and our company so the potential for confusion is much higher. When folks ask us about naming their application with "Twitter" we generally respond by suggesting more original branding for their project. This avoids potential confusion down the line."
Note the phrasing: “suggesting more original branding”. What happens if the developers don’t take the suggestion? By allowing so many third party apps to use the name already, they’ve tacitly given permission for others to infringe on their trademark. If they then try to defend their trademark against the new filers, what can they say?
A look at the USPTO database reveals that although Twitterrific applied for a trademark in March 2009, they voluntarily dropped it in April, right around the time that Twitter started sending out cease and desist letters. Other applicants – Twitter Twail, TwitterTag, TwitterTool, and Twitter Package – still have active applications which have not yet been refused by the USPTO examiners.
But wait, what? Twitter’s sending out C&Ds?
Dean Collins, developer of MyTwitterButler (a Windows Twitter app), received a C&D in August, which asked him to stop using the word "twitter" in his app name, along with a claim of violation of terms of services for the API. The letter says in part:
"As you are likely aware, Twitter’s extensive and widespread use of its TWITTER trademark provides Twitter with strong and defensible rights in the mark, and has caused the mark to become well-known, if not famous, in today’s online marketplace. Twitter owns trademark applications and registrations for its mark in the United States and numerous other countries for use in connection with its online services, which will provide Twitter with exclusive rights in the mark."
And here’s where it gets more interesting. Collins posted the following comment to CNET on August 20th (SIC):
Speaking from personal experience www.MyTwitterButler.com was sent a C&D not only to change the name but cease selling the software that uses the Twitter API forever (which btw conforms to all of the daily account limits set by Twitter when using the API so that confuses us even more), however that’s for another time.
My conciliatory gesture to Twitters legal representative was that I would be happy to rename my application www.MyTweetButler.com on the basis on Biz Stone’s blog post…only to be told that no Twitter wouldn’t allow me to rename my application to Tweet as they also held the trademark to this as well.
So not only did they not want him to use "twitter", but they forbade him from using "tweet" as well! How does that work, exactly? Sam Johnston has written an excellent overview of the situation, so I’ll summarize his points:
– In the same blog post in which he made the "suggesting more original blah blah blah", Stone revealed that Twitter was also trying to trademark the word "tweet" "because it is clearly attached to Twitter from a brand perspective".
– "Tweet" was essentially an organic term, developed by users, to describe a post on Twitter. Twitter itself, in its online documentation, says
Twitter always asks the question, "What are you doing?" Each answer to that question is considered a Twitter status update, or what people often call a "tweet."
strongly implying that it’s not an officially sanctioned name.
– Twitter’s application for the mark "Tweet" was filed in April of 2009 (remember, that’s when those C&Ds started going out) but was initially refused in July. This was due to prior applications for marks containing the word "tweet": CoTweet, Tweetmarks, and TweetPhoto.
By the way, I checked with Collins at MyTwitterButler and as of August 25th, he told me "Apart from their lawyers stating I wasn’t going to be allowed to just change the name to mytweetbutler.com there has been no progress. I’ve asked for them to specifically tell me what exactly my application is doing wrong against their API but am still waiting for more confirmation."
Let’s get back to Stone’s blog post. He says, regarding "tweet": [… W]e 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."
Twitter encourages the use of the word "tweet", which they demonstrated by sending out cease & desist letters and/or revoking Twitter accounts, even though Twitter’s rights to the name is on shaky ground and they don’t use "tweet" as an official word at Twitter, plus they’ve only just applied for a trademark but been initially refused, and they don’t appear to be following up the threatening letters with any kind of action.
Seriously, it seems that Twitter can’t make up its mind whether it should be nice to third party developers, or be big meanies. The key to good trademark protection – even if you don’t have an actual registered trademark – is consistency. This means using the mark in a proprietary way all the time, not letting other folks get away with using it when you’re not paying attention, and asserting your rights where you actually have some. Of course, Twitter needs to protect its intellectual property, but they should have had a strategy for how to do that early on, not as an afterthought. They own "Twitter", but should they prevent other people from using it? Are they really going to make Twitterrific, the most popular iPhone app for Twitter, change its name? Really?
Owning "Tweet", however, seems like a losing battle, and from the press I’ve seen, it’s putting Twitter in a very bad light, especially from the developers’ point of view.