While the term trademark infringement is less than 140 characters, its implications could be costly to a ubiquitous online communications giant.
Twitter, the online news and social networking service, has been accused of trademark infringement and breach of contract by TWiT LLC. The suit, TWiT LLC v. Twitter, Inc., (N.D. Cal. January 2018) alleges that Twitter has intentionally infringed on the Plaintiff’s TWiT trademark. Since 2005, TWiT has been in the business of distributing video and audio content over the internet. TWiT’s programming is available to the public by downloading or streaming from the internet, otherwise known as netcasts. TWiT is also the owner of U.S. Trademark Registration No. 3,217,759 of TWiT which was registered in March 2007. The parties are familiar to one another; in fact, one of Twitter’s founders, Evan Williams, appeared on TWiT’s netcast show the same month and year that TWiT received its trademark registration.
So why is the plaintiff chirping so loudly? TwiT alleges that the parties had a coexistence agreement that Twitter would limit its activities under the TWITTER mark to a text-based blogging service. Sometime in 2009, the Plaintiff had read that Twitter had plans to expand beyond microblogging and into video and audio streaming. When TWiT voiced its concern, Twitter gave assurances that such reports of business expansion were inaccurate. The twelve-count complaint goes on to allege that in or about May 2017, the Plaintiff became aware of Twitter’s intention to indeed offer video and audio streaming services, thereby creating the current controversy. Twitter has yet to file an answer or otherwise respond to the allegations.
This case raises an interesting lesson on the interplay between trademark infringement and trademark coexistence agreements. Quite often, competitors are quick to enter into such agreements. This permits them to proceed with their business activities without interference from the other side, if and only if, the parties adhere to the contract terms. Quite often, months or years can go by and the coexistence agreement is quickly forgotten. It is only when one of the parties commits an alleged breach of the contract that the Agreement once again is revisited. Since most coexistence agreements have penalty clauses, the impact on the breaching party could be severe.
It is vitally important for companies to record and track their coexistence agreements and other contracts that could impact their brand protection and marketing activities. Brand owners should review these agreements on an annual basis and consider using contract management software to ensure compliance with third-party agreements. These and other trademark best practices are part of an effective brand management strategy.