Introduction
Twitter is a mobile social networking website. Although originally conceived as a way of linking people, companies are now jumping on the bandwagon as Twitter is proving to be a fast and free way of marketing to interested consumers and building brand loyalty.
How does Twitter work?
All Twitter users have their own profile page on which they post short messages called ‘tweets’ (up to 140 characters). For example, a recent tweet from Walmart1 stated ‘Walmart.com – Spalding NBA 52" Steel Framed Portable Basketball System – $398.00’.
Each user has a unique user ID which operates as their screen name. Users can search for and subscribe to other users’ pages. Someone that subscribes to a particular Twitter profile is known as a ‘follower’ of that profile. When a Twitter profile is updated by the user posting a new message, all its followers are notified.
What is Twitter squatting?
As each Twitter user ID is unique, Twitter squatters create IDs based on other entities’ trade marks precluding the trade mark owner from ‘tweeting’ under its trade mark banner. Coca-Cola and Nike are two such examples of companies that could not register their marks as Twitter IDs having to opt for the IDs CocaColaCo and NikePlus respectively instead.
The underlying rationale of Twitter squatting is that the squatter can sell the ID to the trade mark owner for a profit. Twitter squatters may or may not post messages on their Twitter profile. This discussion will cover your options in both scenarios.
So, as a trade mark owner, what recourse do you have?
Trade mark rights, unlike Twitter, are limited by geography and to certain products or services. If you sell clothing in Australia under the trade mark XYZ, your rights in XYZ are confined to Australia and clothing. In other words, XYZ can legitimately be used as a trade mark in Australia on electrical items, in America on clothing and so on. Therefore, just because your trade mark is already registered on Twitter as an ID does not mean someone has misappropriated it. Many people can have trade mark rights in the same word in different countries or industries. In these circumstances, you have not fallen victim to Twitter squatting. Someone with rights just as strong as yours has secured the ID before you. Therefore, the first thing to do is register your trade marks as Twitter user IDs. It is free and provided that you have trade mark rights in the word, you don’t need to actually use the service post registration. However, be aware that if you are not using the ID, Twitter may suspend your account on suspicion of squatting. This may be overcome by explaining to Twitter that you have rights to the mark.
If your trade marks are not available as Twitter IDs, these are your options:
Approach Twitter
Fortunately, under Twitter’s Terms of Service, it reserves the right to reclaim user IDs on behalf of rightful trade mark owners. If you are concerned that someone is infringing or simply squatting on your trade mark as a Twitter ID, send your complaint to Twitter2. Twitter will investigate your complaint and if necessary, will terminate the alleged infringing account.
Twitter appears to be committed to ensuring that the service is not used as a vehicle through which legal rights can be abused. As Twitter, like ebay, hosts information others post on its site, there is the obvious legal imperative for Twitter to act decisively in protecting the rights of trade mark owners. For example: The CocaCola Twitter ID has been suspended. Given that Coca-Cola Amatil was unable to register CocaCola as an ID, we suspect the account has been suspended while Twitter investigates Coca-Cola Amatil’s complaint.
Buy the user ID
If Twitter, for whatever reason, refuses to terminate the account, the cheaper option to legal proceedings may be to simply buy the user ID. The difficulty with this approach is you may not be able to access the ID holder’s details and make contact with them.
Institute proceedings
If you cannot access the ID holder, no deal can be struck or the user is dealing with the profile in a manner that concerns you, how else can you stop them?
- If the profile is blank, the trade mark is not being used in connection with an offering of goods or services. Therefore, an action based on trade mark infringement, passing off or breaches of the Trade Practices legislation is not available. Use that is likely to mislead or confuse is a prerequisite for such action. Therefore, if you consider Twitter to be an appropriate marketing tool for your business, you should pick an ID that is as close to your mark as possible. For example: CocaColaCo instead of CocaCola or Coke.
- If the profile is being used in connection with goods or services relevant to your business or covered by your trade mark registration, you may have an action for trade mark infringement, passing off and/or breaches of the Trade Practices legislation.
Conclusion
Given the increasing popularity of Twitter as a communication tool, it stands to reason that the sooner you register your trade marks as Twitter IDs, the better. This will add a new layer to your IP protection, secure your rights against other traders with interests in the same word mark and help avoid the frustration of trying to reopen a promotional channel that has been closed off through squatting.
Endnotes
1. Walmart tweet
2. Twitter enquiries email address
This article was written by Deborah Bell, Solicitor and Ike Papageorge, Consultant Freehills Patent & Trade Mark Attorneys, Melbourne.
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