Twitpic, the once-popular, photo-sharing add-on to Twitter, initially announced that it was shutting down on September 25, 2014, because it was unable to fight Twitter’s opposition to Twitpic’s trademark applications. Several days later, Twitpic announced that it was being acquired and that the service would live on. After almost a month of silence, Twitpic released a statement apologizing for the “acquisition false alarm” and confirming that Twitpic would shut down, this time on October 25. In an interesting turn of events, Twitpic announced on October 25 that while the service has shut down, it had reached an agreement with Twitter to give Twitter the Twitpic domain and photo archive, thus keeping the Twitpic photos and links alive for the time being.
Clearly, Twitpic had a rollercoaster ride and somewhere along the way it felt that attributing its failure to Twitter was a smart business move. So, the question remains: did a trademark dispute with Twitter sink Twitpic? The short answer is: No. We delve into the background of the two companies to analyze this further.
Since 2006, Twitter has provided a platform for its users to publish 140-character tweets. Subject to a terms-of-use agreement, Twitter allows third-party developers to access its platform and certain software tools to provide additional features to Twitter users. Twitpic did exactly that. Using Twitter’s application program interface (API), Twitpic let Twitter users attach photos to their tweets—a feature that Twitter did not support at the time.
But in 2011, relations between the two companies soured when Twitter launched a native photo-hosting and sharing service, thereby negating the need for Twitpic. And in an attempt to provide users with a “consistent Twitter experience,” Twitter started removing third-party image services, including Twitpic, from its applications in 2012. Then in 2013, Twitpic filed a federal trademark registration with the US Patent and Trademark Office for the “Twitpic” mark, running afoul of Twitter’s brand guidelines for third-party developers, which specifically caution against applying “for a trademark with a name including ‘Twitter’, ‘Tweet’, the Twitter bird, transliterations or similar variations thereof.”
Not surprisingly, Twitter—who filed for its own trademarks in 2008 and 2013—filed a formal opposition to Twitpic’s trademark, arguing that Twitpic’s mark was likely to cause confusion, mistake or deception in the trade and among consumers. In addition to the formal opposition, Twitpic alleged that Twitter threatened to withdraw access to the Twitter API if Twitpic refused to withdraw its pending trademark application, and Twitpic’s founder, Noah Everett, responded by declaring that he had no other choice but to shut the company down:
Unfortunately we do not have the resources to fend off a large company like Twitter to maintain our mark which we believe whole heartedly is rightfully ours. Therefore, we have decided to shut down Twitpic.
Given the formal opposition to the Twitpic trademark, Twitter’s response to the shutdown announcement seemed a little incongruous:
We’re sad to see Twitpic is shutting down. We encourage developers to build on top of the Twitter service, as Twitpic has done for years, and we made it clear that they could operate using the Twitpic name. Of course, we also have to protect our brand, and that includes trademarks tied to the brand.
Twitpic’s allegation that Twitpic could not continue to operate because of Twitter’s trademark opposition proceeding is incorrect. While federal registrations confer various legal benefits on a trademark owner and are recommended, a company does not need to federally register its name in order to use that name in commerce. In fact, Twitpic had been operating without a registered trademark for years. Moreover, Twitter had explicitly stated that Twitpic could continue to operate using the Twitpic name. Rebranding was another option that was worth Twitpic’s consideration. After all, several image-based services like Instagram and Yfrog that do not have names confusingly similar to Twitter continue to exist alongside Twitter.
So, did Twitter have a hand in Twitpic’s demise? Perhaps. But there was more to it than the trademark opposition.