Twitter Rebrand Faces Trademark Challenges
Elon Musk’s move to rebrand Twitter as X will face many challenges, not the least of which will be obtaining and protecting trademarks, licensing executives said. To begin with, the federal Patent and Trademark Office (PTO) has long been reluctant to grant trademarks for a single letter.
“It has always been a challenge to get a single letter trademarked because the PTO doesn’t like it. You need to file it in a stylized way and can’t file it in the regular block form. And the PTO doesn’t want people to own letters for an entire category,” said Jed Ferdinand, Senior Managing Partner at Ferdinand IP Law Group.
Further complicating things is the sheer number of similar applications and registrations. A search of the PTO website for pending applications as well as current and abandoned registrations for “X” garners 34,118 hits across all classes of marks.
And a check of Class 41 (education, entertainment, etc.) and Class 42 (scientific, technical, etc.) service marks produce 2,481 and 1,870 hits, respectively. A search of “X” combined with “social media” returns 988 hits. And there are 900 active trademark registrations that cover the letter X across a variety of businesses, said Josh Gerben, founder of the Gerben Law Firm.
Microsoft has controlled the X mark in connection with communications for its Xbox video game system since 2003. And Meta, formerly Facebook, in 2019 trademarked its own X logo for use across internet-related services, including social networking and digital messaging. Other companies also hold rights to X for clothing, drones, cryptocurrency, and other applications.
There will also likely be an issue with companies that have business agreements with Twitter that include use of its blue bird logo.
“I would be very surprised if the deals give X the right to swap out for a new trademark, especially if any of their agreements were reliant on the value of the Twitter brand or the goodwill of it,” Ferdinand said. “That could give rise to voiding the agreements.”
It isn’t clear, however, whether any of the potential barriers to rebranding Twitter matter to Musk. He started the business X.com in 1999 as a platform for services including electronic payments and checking accounts. Upon merging with Peter Thiel’s Confinity, which developed PayPal, Musk (who was CEO) sought to rename the combined company X. Amid opposition to his plans, Musk left the company.
It is possible that, moving forward, X could take lessons from a famous example of trademarking a single letter—Oprah Winfrey’s O The Oprah Magazine, which launched in April 2000. Following the magazine’s debut, a German fetish publication sued Winfrey for trademark infringement, claiming it had the rights to the letter “O” for magazines and that it had been a popular publication across Europe since 1988. The case was dismissed on a summary judgement motion. Winfrey’s O Magazine continues, although the print version was discontinued in December 2020.
“The rollout of a new mark is not without problems and [it’s a] pain with one like X,” said Gregory Battersby, Managing Member of the Battersby Law Group. “You will end up identifying other conflicting marks and then maybe cut a deal with the owners of those marks to acquire the rights. You will end up having to pay money to use your own mark. And I am not sure you can make X a distinctive mark unless you try a different configuration that separates it from the normal letter.”