US audio- and video-streaming company TWiT has brought a lawsuit against social media giant Twitter. The two companies had co-existed for years without issue until Twitter announced plans to launch a video-streaming service.

TWiT, an acronym for This Week in Tech, is a podcast network founded in 2005 by Leo Laporte. Laporte owns the TWIT trademarks, registered in May 2006, which he licenses to the company. Twitter was founded in March 2006 by Evan Williams, among others, as a free internet social networking service. It was first launched in July of the same year, and the ‘Twitter’ brand name was protected as a trademark in April 2007.

Auspicious beginnings

In 2007, Laporte invited Williams to promote his new company Twitter via a TWiT broadcast. The lawsuit alleges that Williams acknowledged at this time that his chosen brand name, Twitter, could be confused with the TWiT name. However, because the services were sufficiently different, the two companies decided that they could coexist, and a co-existence agreement was created, setting out the conditions of the use of both brands.

That happy co-existence seems to have come to an end in 2017 after Twitter announced plans to launch its own video-streaming service. TWiT reacted by issuing a summons to Twitter in which it demands that the company cease its plans to use the ‘Twitter’ brand for video streaming. The complaint also alleges breach of contract, breach of oral agreement and trademark infringement of the name and logo, especially Twitter’s use of the colour blue. The subsequent attempts by the parties to resolve the dispute without legal action have not been successful, and TWiT has now bought a lawsuit that seeks to prevent Twitter introducing video- and audio-streaming services under the Twitter brand.

The importance of co-existence agreements

The case highlights the importance of drafting and regularly reviewing co-existence agreements on the use of similar trademarks that may lead to confusion, even if the goods/services are not similar in the first instance, as Novagraaf’s Claire Jones explains:

“In instances where goods/services are offered in different geographic areas or are unrelated, co-existence agreements can easily set out how to avoid confusion in the marketplace and allow each party to continue their business activities without constant issues from the other side.

“It is important to draft agreements carefully,” she adds. “Money often does not change hands and so the contractual consideration is seen as the undertakings and promises contained within, and these cannot be too one-sided. In today’s modern technological age, geographical boundaries are much vaguer and more and more commercial activities are conducted online. Companies need to review older co-existence agreements when considering expansion plans, to avoid straying into each other’s territories and activities. It could be useful to build in mechanisms in agreements that call for regular review and renegotiation.”

Terms that are important to consider in an agreement include:

  • Trademark use – including name, logo, colours, and whether marks should be used with other elements etc;
  • Geographic territories;
  • Goods and services which each party can use;
  • Online activities (i.e. domain names, websites, user names, social media);
  • Who is bound to the agreement – current parties only, or are there licensing and assignment possibilities/successors in title;
  • Duration and termination, and
  • Breach – clauses should cover remedies for breach.

“Co-existence agreements can be very effective and resolve disputes,” explains Claire. “But care needs to be taken in regards to potential future expansion and overlap, even if that is not currently an issue. It does not take much for a previously harmonious relationship to turn bad.”