Lessons In Smart Trademark Management: Free Licensing Of The Mark From Twitter

from the a-good-way-to-do-things dept

Fri, Sep 3rd 2010 7:39pm — Mike Masnick

A year and a half ago, we noted how nice it was to see Twitter's rather laissez-faire attitude towards trademarks, where it seemed to have no problem with third parties making use of Twitter-related terms in their own names -- such as TwitPic, Stocktwits, Tweetdeck and many others. So, at first I was a bit surprised to see a report claiming that Twitter might be cracking down on those who use such names. The truth, however, actually demonstrates how many companies should respond to many trademarked situations.

First off, it's worth pointing out, as people always do, that one of the oddities of trademark law is the idea that a trademark holder has to prevent others from using the mark without permission, or they run the risk of losing the mark. That leads to lots of nasty cease and desist letters from lawyers, and people defending them claiming they "have to" do this. But that is not so at all. First off, they only have to do that for cases where there is a likelihood of confusion, so they can certainly leave many other cases alone. But, more importantly, there's another option out there, which very few trademark holders embrace: they can just give a free license out.

The story about Twitter is really just that the company has filed for a trademark on TWEET, which is perfectly reasonable. Just because you're getting a trademark, it doesn't mean you're going to stop others from doing things (and, the TechCrunch post seems confused by a different trademark on Tweet -- but trademarks are specific to areas of use, so it's possible to have multiple trademarks on the same term in totally different areas of use). And, in fact, Twitter made a statement pointing out that it does, in fact, freely license its marks:

"We freely license "Tweet" for ecosystem partners who are using it correctly as part of accessing the Twitter API. That said, "Tweet" means something specific and we aim to protect that meaning. More on this can be found here: http://support.twitter.com/forums/26257/entries/77641."

This seems like not just a perfectly reasonable trademark policy, but a smart one for encouraging others to help promote you and feel comfortable working with you as a partner. It's really surprising how quickly most other companies go for the legal nastygram, rather than "freely license" trademarks in cases where the use is clearly promoting the brand.

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Filed Under: free, licenses, trademark
Companies: twitter

15 Comments

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Nick Coghlan (profile), 3 Sep 2010 @ 11:25pm

Liberal trademark licensing
It sounds like Twitter are following a style of trademark control that is "as much control as we have to exert, but no more".

The Python Software Foundation (the non-profit that holds the IP behind the Python programming language) tries for a similarly permissive-but-still-trademarked approach with its own trademark policy: http://www.python.org/psf/trademarks/

I think in a lot of cases, the legal nastygrams come out early because of a fundamental lack of understanding of how trademark law works. It took us quite a while in the PSF to hammer out a policy where most normal uses don't need to seek PSF permission, while still requiring a tick from our board for more borderline cases.
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- Anonymous Coward, 4 Sep 2010 @ 2:36am
  
  Re: Liberal trademark licensing
  I sometimes wish that companies would see that their trademark is just that- a mark used in trade. You own the mark or brand, and are due that. I am not able to setup a Sony shop and start selling Sansui DVD players with a Sony logo on it, that is unless Sony Authorizes it.
  
  However when people use your trademark, well that should be seen as critical commentary.
  
  Let's say someone sets up "TechDirtSucks.com". Indeed, this may cause some confusion with the TechDirt "brand" but based on the positions he's taken over the years, the CEO would probably let it ride for a while until they start selling loooooooooots of T-shirts.
  
  But if they started selling loooooooooots of T-Shirts, they probably would work something out beforehand.
  
  Indeed, a "TechDirtSucks.com" website would probably be positioned to capture crappy comments such as this.
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Anonymous Coward, 4 Sep 2010 @ 1:09am

I don't think anyone cares about their control over twitter, Mike.

Neat way to end the week.
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TWEET, 4 Sep 2010 @ 3:29am

"the company has filed for a trademark on TWEET, which is perfectly reasonable." -- sigh, it's much like Dell or whoever trying to trademark CLOUD COMPUTING. It's not reasonable and they should not have been awarded the mark, though sure, they could try. But preventing others to use TWEET before they have Registration (wrt USPTO) is bull. Lots of applications have been using tweet in their names much before Twitter liked to think it means something special.
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- abc gum, 4 Sep 2010 @ 6:10am
  
  Re:
  Are you giving them the tweety-bird?
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Jon Renaut (profile), 4 Sep 2010 @ 4:52am

How unfortunate
It's a sad commentary on the state of IP law when a company behaving reasonably is newsworthy.
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David Canton, 4 Sep 2010 @ 5:47am

twitter trade-mark policy
I'm a trade-mark agent and lawyer, and agree with Mike. Twitter has done a good job of making clear how others can use their marks. What is not allowed is any use that could lead to confusion, or any passing off. This approach in the long run probably protects the mark by retaining its distinctiveness more effectively than the traditional nastygram don't use it all all approach.
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Anonymous Coward, 4 Sep 2010 @ 8:55am

I think the same logic applies to patents. Not every patent holder is a troll, some patent holders are reasonable.
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- Anonymous Coward, 5 Sep 2010 @ 6:55pm
  
  Re:
  Yes. But Patent trolls shouldn't even exist in the first place.
  
  It's the US legal system that allows lawsuits to be used like cudgels.
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Anonymous Coward, 4 Sep 2010 @ 7:17pm

Small point, but important. Failure to police does not mean that one loses their mark, but only that they may find themselves in a position where they are unable to "enforce" their mark. They will still be able to use it, but their ability to enforce it against others will be diminished.
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Matthew Stinar (profile), 5 Sep 2010 @ 11:09am

The first thing we do, let's kill all the lawyers.
I have a suspicion that much of this is driven by lawyers giving self-serving advice to their clients. On the other hand, I'm sure it's at least half driven by the crazy culture of ownership we see in the IP world today.
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dnball (profile), 6 Sep 2010 @ 6:56am

licensing options
Under EVERY trademark license [paid or free] the trademark owner remains obligated to police the licensee's use of the mark to ensure that whatever is being offered under the mark meets the quality standards consumers have come to associate with the mark. If that standard is not met then the trademark owner is obligated to take steps to remove the low-quality goods or services from the marketplace.

It may be that the cost of policing untold thousands of free licensees makes economic sense for Twitter [which asserts it will "aim to protect" the meaning consumers have come to associate with TWEET].

But for the vast number of consumer product and service companies the cost of policing untold thousands of free licensees is prohibitive.

The options are free licensing with very costly policing efforts, paid licenses with manageable policing costs, or no licensing at all.

Free licensing makes no sense for most businesses.
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- Chronno S. Trigger (profile), 7 Sep 2010 @ 5:22am
  
  Re: licensing options
  You may have to cite the location in trademark law requiring the removal of low-quality goods or services. As long as I've been reading about trademark law, not once have I heard anything about policing legally licensed use.
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  - dnball (profile), 7 Sep 2010 @ 8:12am
    
    Re: Re: licensing options
    Abandonment through naked licensing occurs when a trademark owner fails to take the reasonable steps necessary to monitor the quality of goods produced by a licensee. First Interstate Bancorp v. Stenquist, 1990 WL 300321, at *3 (N.D.Cal. July 13, 1990) (Patel, J.). This failure to ensure quality control "may result in the trademark ceasing to function as a symbol of quality and controlled source." 3 McCarthy § 18:48. As a result, "a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark." Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 596 (9th Cir.2002) (citing Moore Bus. Forms, Inc. v. Ryu, 960 F.2d 486, 489 (5th Cir.1992)).
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Jade Wood (profile), 6 Sep 2010 @ 5:22pm

Why they did this
My guess as to why they did this is because someone I know bought retweet.com (a domain that was registered before twitter), trademarked 'retweet' and then told twitter to either pay a licensing fee to use the word or buy them out.

As far as I know twitter bought out retweet.com

Twitter have now learnt their lesson and are trademarking their stuff.
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