Its not who is first to apply, or even who is first to be approved, it is first to use in commerce, and whoever can prove that, and more important, can afford to prove that, owns the trademark; that is if "Tweet" can even qualify to be a trademark. For Twitter, now the process is; if Twitter felt so inclined, is to dispute the other marks, (if) any of them make it past the examination period, and show it was their company that coined the phrase "CoTweet", "TweetPhoto" etc.., and it was them that used it first in connection to commerce. If they win the dispute, they then will go in and reapply for the mark. I had the exact same thing happen to me, this is why I know this.
It is possible that the other trademark applications will get approved, and twitter will lose their claim to tweet,and not prevail on disputing it either. But, do you really think Twitter is going to allow CoTweet.com and skate using the word containing "tweet", if they think they should own it? Having said that, Twitter should not prevail nor should anyone on the Tweet Mark. There is no question that it belongs in public domain. On Wed, Aug 19, 2009 at 10:57 AM, Sam Johnston <s...@samj.net> wrote: > > [refer to the article itself for the inline links - @samj] > > Twitter's "Tweet" Trademark Torpedoed > http://samj.net/2009/08/twitters-tweet-trademark-torpedoed.html > > Last month Twitter founder Biz Stone announced in a blog post (May The > Tweets Be With You) that they "have applied to trademark Tweet because > it is clearly attached to Twitter from a brand perspective". This > understandably caused widespread upset as the word "tweet" has been > used generically by users for some time as well as in any number of > product names by independent software vendors. Here's some samples > from the resulting media storm: > > * CNET News: Is Twitter freaking out over 'tweet' trademark? > * TechExpert: Twitter Trying to Trademark "Tweet" > * LA Times: Will Twitter trademark 'tweet' before it’s > genericized? > * PC Magazine: Twitter Trying to Trademark 'Tweet' > * TechCrunch: Twitter Grows “Uncomfortable” With The Use Of The > Word Tweet In Applications > * TechCrunch: Twitter To Developers: “Tweet” Your Heart Out, But > Don’t “Twitter” It > * Bloomberg: Twitter Lays Claim to ‘Tweet’ Trademark in Bid to > Protect Brand > > What they failed to mention though was that according to USPTO records > (#77715815) not only had they actually applied some months before (on > 16 April 2009) but that their application had been refused that very > same day (1 July 2009). > > According to documents from the Trademark Document Retrieval system, > their lawyers (Fenwick & West LLP) were notified of the rejection by > email to tradema...@fenwick.com that day. The USPTO had explained that > "marks in prior-filed pending applications may present a bar to > registration of applicant’s mark. [...] If the marks in the referenced > applications register, applicant’s mark may be refused registration > under Trademark Act Section 2(d) because of a likelihood of confusion > between the two marks", referencing and attaching not one, not two but > three separate trademark applications: > > * #77695071 for TWEETMARKS (pending receipt of Statement of Use) > * #77697186 for COTWEET (pending clarification) > * #77701645 for TWEETPHOTO (pending transfer to Supplemental > Register) > > Now I may not be a lawyer (I did play a role in overturning Dell's > "cloud computing" and Psion's "Netbook" trademarks) but given all > three of the marks identified look like proceeding to registration (it > only takes one to rain on their parade), it's my non-expert opinion > that Twitter has a snowflake's chance in hell of securing a monopoly > over the word "Tweet". > > That's too bad for Twitter but it's great news for the rest of the > community as it's one less tool for locking in Twitter's rapidly > growing microblogging monopoly. People do use the word "tweet" > generically (including with non-Twitter services) and if Twitter, Inc. > were successful in removing it from the public lexicon then we could > all suffer in the long run. > > In any case it is neither serious nor safe for one company to become > the "pulse of the planet" and that is why I will be following up with > a series of posts as to how distributed social networking can be made > a reality through open standards (if that stuff is of interest to you > then subscribe and/or follow me for updates). I've also got some > interesting things in the pipeline in relation to standards and > trademarks in general so watch this space. > > Anyway it just goes to show that with trademarks you need to "use it > or lose it". The "propagation delay" of the media has dropped from > months at the outset to near real-time today so companies need to move > fast to protect their marks or lose them forever. As for whether the 1 > July post was a scramble to protect the mark on receipt of the USPTO's > denial, whether the USPTO was acting in response to it, or whether it > was just a coincidence and particularly bad timing I don't know. I > don't really care either as the result is the same, but I would like > to believe that the USPTO is becoming more responsive to the needs of > the community (after all, they revoked Dell's cloud computing > trademark in the days following the uproar, despite having already > issued a "Notice of Allowance" offering it to them). > -- Dale Merritt Fol.la MeDia, LLC
