South of the Border: Learning from Twitter and TWEET

Twitter’s U.S.’s trade-mark application for TWEET has been refused.

The reason? Three companies had previously filed U.S. trade-mark applications for TWEET-containing marks claiming Internet services.

Twitter already owns a U.S. trade-mark registration for TWITTER, applied for in 2007, but apparently did not file its TWEET trade-mark application until April, 2009. The U.S. Patent and Trademark Office’s (USPTO) decision means that Twitter may have to go to the considerable expense of opposing the cited trade-mark applications unless Twitter can convince the USPTO that its TWEET mark should be allowed to coexist on the U.S. register.

Given that the cited trade-marks appear to be for Twitter-related applications, Twitter not only faces considerable legal costs, but also the potentially unpalatable decision of whether to go after trade-mark applicants that potentially support its business.

The lesson? Trade-mark owners should file trade-mark applications for all of their important trade-marks as soon as possible in an attempt to secure trade-mark rights with reduced expense and hassle. One of the reasons is that many countries (including Canada and the U.S.) consider applications on a first come, first serve basis.  In Canada, this means that if two applicants file applications for confusingly similar marks, even if the earlier filed application is filed on a proposed use basis while the later filed application claims use before the earlier application’s filing date, the subsequent applicant will probably have to oppose the earlier filed application. Oppositions are a separate, often considerable, legal cost on top of the application process.

One way to spread out the costs of filing trade-mark applications in multiple jurisdictions is to use priority claims, if available. A priority claim is made when a trade-mark applicant files an identical trade-mark application within six (6) months of filing a trade-mark application claiming the same goods and/or services in its home country. Priority claims can be used to spread out trade-mark application costs in different countries over six (6) months.

What if your business has yet to use the trade-mark in a particular country but it is likely that the mark will be used and does not infringe another’s legal rights? See whether the application can be filed before the mark has been used. In most countries, applicants can file on a proposed use (e.g. Canada) or intent to use (e.g. U.S.) basis. Such claims allow applicants to file their trade-mark applications before using their marks.

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