Trademark Use on Twitter and Facebook

The use of a third party’s trademark on social networking sites such as Twitter and Facebook has recently been a topic of interest for trademark owners.

Twitter
On September 15, 2009, ONEOK, Inc., a publicly traded Fortune 500 company in the energy industry, filed suit against Twitter, Inc. for trademark infringement and contributory infringement of ONEOK’s registered trademarks in the District Court for the Northern District of Oklahoma.

ONEOK is the owner of U.S. Trademark Registration Number 2,985,073 for the word mark “ONEOK” and a Diamond design. ONEOK is also the owner of U.S. Trademark Registration Number 3,655,886 for a Diamond design. In the Complaint, ONEOK alleges the following:
1. Twitter has assigned the user name “ONEOK” to a party other than ONEOK, Inc.;
2. The current ONEOK Twitter account holder has generated Tweets on at least two occasions containing information regarding ONEOK, Inc., the ONEOK trademark name and the Diamond design;
3. The Tweets have the appearance of being an official statement issued by ONEOK and have been passed off to unsuspecting recipients as official statements by ONEOK on Twitter;
4. Twitter has provided the means by which the Twitter account holder generated the postings; and
5. Twitter has refused to transfer control of the ONEOK Twitter account to ONEOK, Inc.

ONEOK claims that if the situation is allowed to persist, it will cause irreparable damage to ONEOK’s reputation in the investor community and in the energy industry.

Twitter’s current Terms of Use do not provide a means for submitting a notice of trademark infringement. The Terms only provide a means for submitting a notice of copyright infringement.

Facebook
On June 13, 2009, Facebook allowed users to personalize a Facebook URL by selecting a unique “username” (www.facebook.com/username) which could include a trademark, brand name, or personal name. Companies could protect their registered trademark from a potential infringer registering their trademark as a username by filing out a “Preventing the Registration of a Username” form. The trademark owner was required to provide their trademark and registration number on the form.

Facebook’s current Terms of Use provide a means for submitting a notice of copyright infringement and non-copyright intellectual property infringement. Facebook allows users to provide a “Notice of Intellectual Property Infringement” by filling out an “automated IP infringement form” online if the user believes their non-copyright intellectual property rights are being infringed.

- Katie Cooper

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