The odd case of @YarnAttic vs. @TheYarnAttic.
[Editor’s tl;dr note: The @TheYarnAttic Twitter account has been wrongly suspended for 148 days based on an account that no longer exists, based on a brand that no longer exists, based on a trademark that no longer exists. This article highlight flaws in both the USPTO’s trademark application/registration process and Twitter’s trademark/username dispute policy.]
Twitter account suspended! Now what?
On December 2, 2015, The Yarn Attic LLC of NJ (TheYarnAttic.com) received an email from Twitter stating that its account (@TheYarnAttic) had been suspended for an alleged violation of Twitter’s trademark policy (https://support.twitter.com/articles/18367). The trademark complaint was filed by a competitor, Yarn Attic, LLC of NC (YarnAttic.com). TheYarnAttic.com was understandably frustrated by losing one of its social media channels and hired Clocktower Law to help.
Two ways to establish trademark rights.
Trademark use and trademark registration are closely related concepts. There are two ways to establish trademark rights: by using a trademark and by filing a trademark application. By using a trademark in commerce, a trademark owner establishes common law (unregistered) rights. By filing an intent-to-use trademark application, a trademark applicant establishes a de facto use date. In addition, trademark applications are examined by the USPTO in the order in which they are filed, so there are always advantages to being the first to file a trademark application.
While the USPTO (Trademark Office) determines the right to register a trademark, it is ultimately the courts that determine the right to use a trademark. Part of the trademark registration process involves submitting proof of use (called “specimens”) to the Trademark Office (via a Statement of Use (SOU) filing) to demonstrate that the applicant is properly using the trademark.
But what happens when an application is filed with use dates that pre-date the application’s filing date? What proof of use of the earlier dates does the Trademark Office require? Turns out it’s none! A trademark applicant only has to demonstrate current use and can allege the earlier use date. When a trademark applicant (or the applicant’s attorney) submits and electronically signs a trademark application, they are also making the following declaration:
The signatory believes that: if the applicant is filing the application under 15 U.S.C. § 1051(a), the applicant is the owner of the trademark/service mark sought to be registered; the applicant is using the mark in commerce on or in connection with the goods/services in the application; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an application under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e), the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the goods/services in the application. The signatory believes that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true. (Emphasis added.)
In other words, if your trademark application is screwed up, then bad things can happen to you and to your trademark registration.
Which first use matters from a trademark perspective?
Clocktower Law discovered that, although TheYarnAttic.com was the first to use THE YARN ATTIC trademark for online commerce and for brick-and-mortar commerce, YarnAttic.com had both registered its domain name first and filed its trademark application first. However, YarnAttic.com’s trademark application had a fundamental and fatal flaw, namely incorrectly claiming its domain name registration date as its use in commerce date.
The following table is helpful to visualize the chronology of events:
domain name registration date (which
evidence of no use of YARN ATTIC in
proof of first use of THE YARN ATTIC
proof of first use of THE YARN ATTIC
second use of YARN ATTIC for online
proof of first use of THE YARN ATTIC
YARN ATTIC trademark filed (with
second use of YARN ATTIC for
YARN ATTIC trademark registered
THE YARN ATTIC trademark filed
YARN ATTIC trademark canceled
While registering a domain name is important, mere registration does not qualify as use in commerce for the planned products or services. See Blast Blow Dry Bar LLC v. Blown away LLC d/b/a Blast Blow Dry Bar, Opposition No. 91204769 (January 2, 2014) (registration of domain name insufficient to show use in commerce).
While filing a trademark application is important, mere filing does not trump prior user’s registered or common law rights.
Trying to get the suspended Twitter account unsuspended.
To fix this situation, Clocktower Law did the following three things:
On 2015-12-09, Clocktower Law filed THE YARN ATTIC trademark application (https://tsdrapi.uspto.gov/ts/cd/casestatus/sn86843375/content).
Also on 2015-12-09, Clocktower Law sent letters to all of the social media service providers used by TheYarnAttic.com outlining the above chronology, asking them to restore TheYarnAttic.com’s account, and/or asking them not to suspend TheYarnAttic.com’s account (for pending complaints).
On 2015-12-30, Clocktower Law (via its agent) filed a Petition To Cancel (http://ttabvue.uspto.gov/ttabvue/v?qs=86581186) the YARN ATTIC registered with the USPTO Trademark Trial and Appeal Board (TTAB).
All of TheYarnAttic’s accounts were restored but one: Twitter.
The sad state of Twitter’s trademark policy.
There are so many things wrong with Twitter’s trademark policy (https://support.twitter.com/articles/18367), it is hard to decide where to begin!
First, Twitter’s trademark policy uses the undefined “clear intent to mislead” standard to determine whether it will suspend an account.
Second, Twitter inexplicably pretends that the owners of registered trademarks are inherently more equal (to paraphrase Orwell) than owners of unregistered trademarks. The policy states, “A federal or international trademark registration number is required.” Then, as if tacitly admitting that maybe there is more to the concept of trademark rights than mere registration, the next sentence states, “If the name you are reporting is not a registered mark (e.g., a government agency or non-profit organization), please let us know [the following details].” Since when are non-profits prohibited from getting registered trademarks? And if you are going to recognize the common law rights of non-profits, why not the common law rights of all companies?
Third, Twitter appears to give good faith users a chance to redeem themselves by stating, “When we determine that an account appears to be confusing users, but is not purposefully passing itself off as the trademarked good or service, we give the account holder an opportunity to clear up any potential confusion.” So what is the standard? Is it “clear intent to mislead”? Or “not purposefully passing itself off”? And what evidence must a party use to prove/disprove the “intent” and/or “purposefully” clauses?
Fourth, when your account is suspended, you may appeal, but that’s about it. The only thing that Twitter’s appeal policy (https://support.twitter.com/articles/15790) says is “you can appeal.” No actual procedures or standards are defined. Twitter’s suspended account appeals procedure is about as fair to suspended users as the NFL Commission’s appeals process is to suspended players. I have no evidence than any human being (much less a lawyer) actually read any of the appeals filed in this case.
A renewed call for a Uniform Username Dispute Resolution Policy (UUDRP).
In January 2009, I called for the creation of a Uniform Username Dispute Resolution Policy in connection with an article I wrote about how many of the top 100 brands had their usernames squatted on Twitter.
The @TheYarnAttic Twitter fiasco highlights, I hope, the need for such a policy.
On April 26, 2016, in connection with this article, I spent a couple hours creating a draft Uniform Username Dispute Resolution Policy (UUDRP), which is essentially the UDRP with “domain name” replaced with “username” (plus a few other changes). If there is demand, then maybe I’ll supply what’s missing (such as the UUDRP Rules). But my point is this: It’s really not that difficult to conjure up a fair trademark policy for username disputes.
I can think of many ways Twitter’s trademark policy can fail. What if it’s a battle of two common law trademark owners? What if two owners have identical trademarks in different classes of goods/services? What about trademark registration for the same goods/services in two different countries? What if a Complainant makes a prima facie case of “clear intent to mislead” and that case is rebutted by overwhelming evidence? What if a Complainant makes a prima facie case and the account holder supplies proof of ongoing litigation? Do you think Twitter would let both accounts continue while the courts settle things? I doubt it.
Interestingly, the Twittersquatting problem outlined in my 2009 article still exists today. Another nonsensical line from Twitter’s trademark policy states, “Twitter usernames are provided on a first-come, first-served basis and may not be reserved.” That’s like a restaurant saying, “You can call any number of days or hours ahead, give us your name, and we’ll hold a table for you at the requested time, but we don’t take reservations.” So yes, Twitter usernames can be “reserved” (AKA squatted) because Twitter allows them to be registered on a “first-come, first-served basis.”
Twitter’s flawed trademark policy is not the only bad social networking trademark policy, but it is clearly the worst. TheYarnAttic.com also had its Instagram account temporarily suspended, but Clocktower Law’s appeal was quickly processed and TheYarnAttic.com’s account was restored in only 9 days.
As of today, TheYarnAttic.com’s Twitter account (@TheYarnAttic) has been suspended for 148 days.
Since then, multiple complaints and appeals have been filed on behalf of TheYarnAttic.com, all of which have either been rejected or ignored.
As of 2016-03-08, YarnAttic.com has completed re-branding to WinstonWools.com:
- The http://www.yarnattic.com website redirects to https://winstonwools.com.
- The https://twitter.com/yarnattic page no longer exists.
- The https://twitter.com/winstonwools pages states “Formerly Yarn Attic.”
On 2016-04-25, the USPTO canceled the YARN ATTIC trademark (https://tsdrapi.uspto.gov/ts/cd/casestatus/sn86581186/content).
Yet today, the @TheYarnAttic account remains suspended. Based on an account that no longer exists, based on a brand that no longer exists, based on a trademark that no longer exists.
How much longer must we wait for justice, for the @TheYarnAttic account to be restored?
Finally, some advice for Twitter. It’s really not hard to figure out the right thing to do. Not in this case, not in any case. Follow the letter of your policy (such as it is) but also follow the spirit of your policy. To quote one of my mentors, “If you feel yourself losing sight of reality, fear not. I have the solution: Ask you mother.”