It was recently reported that Twitter had, as part of its proposed listing, warned that several of its trade marks might be at risk. As trade marks are very important assets – in some cases the trade mark is the most important asset that a company has – information of this nature is clearly very relevant for potential investors.
Incidentally, if you’re wondering how valuable tech brands can be, it’s worth noting that in Interbrand’s 2013 Best Global Brands survey Apple comes in at number one with an estimated value of US$98 billion, Google at number two (US$93 billion), Amazon at no.19 (US$26 billion), and Facebook at no. 52 (US$7 billion).
Twitter listed its trade marks as follows: TWITTER, TWEET, RETWEET and the Bird Logo. What Twitter was saying to potential investors was that some of its trade mark registrations might become open to attack on the basis that the trade marks have become generic.The trade mark that Twitter’s apparently most concerned about is TWEET, which is of course the name of the message that you send via Twitter. The company said this: ‘There is a risk that the word “Tweet” could become so commonly used that it becomes synonymous with any short comment posted publicly on the Internet, and if this happens, we could lose protection of this trademark.’
It’s a fundamental requirement of trade mark law that a trade mark must be distinctive in order to be registered. The trade mark might be inherently distinctive, for example a word that is coined and meaningless like OOBA, or a word that has a meaning but is used fancifully or out of context like BLACKBERRY. Or the trade mark might be a word that is descriptive of the product, but has in fact become distinctive of one company through considerable use, like SOUTH AFRICAN AIRWAYS.
Sometimes, however, something different happens – a trade mark is used extensively but instead of becoming associated with one particular company it becomes the generic term for the product. A famous example was ‘oven chips’, a term that was coined by McCain for a product that had never been seen before, but became the accepted and generic term for the product rather than the protectable trade mark of McCain.
Twitter seems to fear that a similar situation may arise with TWEET. The word, being an existing word that’s used fancifully or out of context, is inherently distinctive for short messages that are sent via Twitter. It’s therefore a registrable trade mark. Yet it clearly has the potential to become the generic term for a short message sent by any means or service. If that happens, trade mark registrations for the trade mark may become vulnerable to cancellation. This is a problem that companies that bring out genuinely new products do face from time to time.
There are, of course, lots of trade marks that have become generic words, for example ‘escalator’, ‘aspirin’, ‘nylon’ and ‘gramophone’ (in some cases a word may still be a registered trade mark in one country but a generic word in others). A more recent example is ‘club,’ which was used exclusively as the name of the business class service of British Airways, but over time became a generic word and eventually started appearing in dictionaries - it’s bad news having your trade mark appear in a dictionary, because those seeking to cancel your registration will invariably use this as proof that the word has become generic, even if the dictionary does have one of those disclaimers to the effect that the word’s appearance in the dictionary does not mean that it isn’t proprietary.
Incidentally, the word ‘Tweet’ has already found its way into the Merriam-Webster dictionary where it’s defined as ‘a post made on the Twitter online message service.’
There are a number of trade marks that are used loosely (somewhat generically) from time to time, but they are probably still valid trade marks. Examples that come to mind include Xerox, Hoover, Jacuzzi, Windsurfer, Vaseline, Jeep and Kreepy Krauly. The owners of these marks sometimes take steps to educate the public about how these names should be used. Some go for the subtle approach: the owners of Kleenex have used their brand name in the form ‘Kleenex Brand Tissues’, which reminds people that it’s a tissue that you blow your nose with and not a Kleenex; the makers of Jeep have used the expression ‘There’s only one’ to remind us that Jeep is a make of car rather than a type of car.
There are other steps that you as the brand owner can take to make sure your trade mark doesn’t become generic. The most obvious way is to use your trade mark correctly. Your trade mark is an adjective not a noun, so if you’re Apple you should offer the consumer an ‘Apple computer’ rather than a plain ‘Apple’. If you’re offering the consumer more than one, it’s ‘two Apple computers’ rather than ‘two Apples’. And you shouldn’t use your trade mark as a verb – if you’re Google don’t suggest that people ‘google’ things, rather suggest that they ‘search on Google’ (this is, of course, an obvious problem with Tweet, as it is used as a verb).
But I should perhaps mention that not everyone see things this way – when Steve Ballmer of Microsoft launched Microsoft’s Bing search engine, he famously said that he hoped that Bing would soon ‘verb up’, by which he apparently meant that he hoped people would soon start saying that they were ‘binging’ in the same way as they sometimes say they’re ‘googling’, adding that he wasn’t too concerned about the trade mark implications because in the tech age trade marks have such short life-spans that it doesn’t really matter if they become generic.
The news reports even suggest that there may be some concerns about the trade mark TWITTER itself. If TWITTER were to become a generic word it would truly be a disaster for the company. But in my view that’s a very long way off, and I’m sure that the company will do whatever is required to make sure it never happens. One IP lawyer is quoted in one of the news reports as follows: ‘I suspect “Twitter” might eventually fall into the “xerox” category – but not for a long time. In Internet time, that is. Even if it does, I don’t see any long-term problems for Twitter itself.’
Rachel Sikwane: Senior Associate in ENSafrica’s IP Department