In today’s online world, trademark and brand ownership are valuable assets to companies. Many trademark owners are surprised to learn that their valuable trademarks can be registered and used by third parties on Twitter and other social media sites with seemingly little the owner can do about it.
Twitter’s Trademark Policy
A relevant portion of Twitter’s official trademark policy on trademark violations is quoted below:
What Is not a Trademark Policy Violation?
Using another’s trademark in a way that has nothing to do with the product or service for which the trademark was granted is not a violation of Twitter’s trademark policy.
Twitter usernames are provided on a first-come, first-served basis and may not be reserved. For information on why you may not be able to select a certain username, please see our Why Can’t I Register Certain Usernames help page.
Search and interest keywords advertisers choose are subject to applicable trademark law. Although Twitter may review reports of confusing keywords, we may not disable keywords in every case…
Trademark Issues Raised by the Policy
One obvious observation is that this policy allows for third parties to register as usernames and use another’s trademarks, even federally registered trademarks, so long as the use “has nothing to do with the product or service for which the trademark was granted.” That’s akin to Twitter stating that is not going to police trademark infringement unless it finds similarity between username/trademark and the product or service. This puts the onus on the trademark/brand owner to satisfy Twitter that the similarity is too close.
This policy also raises several other questions. What about trademarks that are so universal they are considered famous and widely recognized? By allowing third-party registration of these marks as user names, isn’t Twitter preventing the owner of a famous mark from stopping others from making use of the marks that dilute the brand, particularly where the usage is somewhat dissimilar to the registration? Similarly, what if the use of the trademark in the Twitter handle confuses the public into believing that the Tweets are associated with the trademark owner? Is this allowed as well? What if a disgruntled employee maliciously registers a company’s trademark as a username to retaliate against the company and deny it use of its name as a Twitter handle? Finally, what if the username and associate Tweets tarnish or dilute the distinctive reputation and goodwill associated with a famous mark?
Navigating the Trademark Policy
While these questions are best answered on a case-by-case basis, it is clear that trademark and brand owners should be proactive in registering their marks and brands as usernames to prevent third parties from registering them. Being able to point to a registration is likely helpful in getting Twitter to take down a username. Twitter’s policy suggests that a trademark owner is likely to have a greater chance of success enforcing trademark rights if the company has registered its trademarks. This is another reason why trademark registration is so important in today’s Internet dominated world.
Likewise, owners should police and monitor third-party trademark use on Twitter and other social media sites to prevent this from happening.
Finally, where the trademark in question is considered famous under the Lanham Act, 15 U.S.C. Section 1525(c), legal action may be necessary to prevent dilution of the mark if adopted on Twitter or other social media sites. Twitter’s trademark policy on its face suggests that a difference in the goods/service covered by the registered mark and the third-party usage is sufficient to deny a cancelation/transfer request.
For more information regarding trademark protection and trademark infringement online, please see our website.