X marks the spot – what happens to Twitter’s IP now?

March 1st, 2024
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Picture source: Getty/iStock

In July 2023, Elon Musk announced the rebranding of Twitter to X. X is one of the most popular social media platforms with 368 million monthly active users in 2024 and the company has projected an estimated 652 million users by 2028. The dramatic rebranding included the changing of the Twitter bird logo (named ‘Larry the Bird’).

The renowned Twitter bird logo has been replaced by an ‘X’ as the company’s trade mark and trading logo. The rebranding spread throughout all social media platforms and has become the most talked-about logo and has attracted attention not only on social media, but in the intellectual property space as well. Many wondered why Musk would change the Twitter logo and replace it with an ‘X’ given that the Twitter logo is so well-known and has registered trade marks worldwide. However, when a company undertakes a major rebranding, it must take its intellectual property into consideration – this may not have been the case with X. With this in mind, it is no surprise that X would face a number of trade mark infringement lawsuits. This article will highlight the significance of intellectual property considerations when undergoing a rebranding in your company.

Trade mark searches

When undergoing a rebranding in your company, the very first step to consider is a trade mark search. A clear trade mark search will tell you whether the revamped trade mark is registrable under trade mark laws. This was not the case with X. Musk has been toying with the idea of using the ‘X’ letter as the official mark of Twitter since acquiring Twitter in 2022. Since the adoption of the letter, the ‘X’ mark may have legal consequences with Musk’s Twitter rebranding because a number of other well-known companies, like Meta (META.O.) and Microsoft (MSFT.O), X Social Media LLC have registered rights around the letter ‘X’ (see B Brittain ‘The problem with X? Meta, Microsoft, hundreds more own trademarks to new Twitter name’ (www.nasdaq.com, accessed 2-2-2024). It is no secret that Musk’s decision to use this mark stems from failure to properly conduct a search on the usage of the letter ‘X’ and considering the legal consequences of using this letter. A key takeaway from this is that conducting a trade mark search is an essential step to take when rebranding your company. Failure to do a proper search may result in you adopting someone else’s trade mark, which may result in major legal consequences for your company and in a worst case scenario, your company and brand may be forced to cease from using the trade mark.

Trade mark applications in relevant jurisdictions

X is a globally recognised social media network and has legally enforceable rights in its trade mark applications in all relevant jurisdictions. However, because other technology giants already have intellectual property rights in the letter ‘X’, including 900 other active companies in the United States in various industries (see Brittain (op cit)), X is unlikely to succeed with a trade mark application around its ‘X’ trade mark applications because the letter ‘X’ is already in use by many trade mark owners and the letter already lacks anything distinctive about it. As a result, the letter’s protection will most likely be limited since protection of a single letter is already difficult in trade mark law. For example, companies such as Meta (META.O), Microsoft (MSFT.O) and X Social Media LLC who have previously registered intellectual property rights in and around the letter ‘X’ are limiting the scope of protection of the letter ‘X’ for any company who intends to adopt the letter. It is, therefore, critical that your company file and register trade marks, particularly in the jurisdiction where the company plans to use the mark with a proper and extensive trade mark search before the adoption of the mark.

Trade mark dispute against X by X Social Media LLC

In October 2023, the Florida-based company X Social Media LLC sued X for trade mark infringement (W Davis ‘X Social Media is suing X, a social media company’ (www.theverge.com, accessed 2-2-2024)). This action is brought under ss 32 and 43(a) of the Lanham Act 15 USC for violation of the common law of the State of Florida arising from unfair competition and trade mark and service mark infringement and for violation of Florida’s Deceptive and Unfair Trade Practices Act. For X Social Media LLC to succeed with this application, they must be able to prove that consumers are likely to associate its business with X Corp. X Social Media LLC has significant investment in marketplace awareness, which resulted in creating a distinctive ‘X’ mark associated with its social media advertising services since 2016. Thus, X adopting the letter ‘X’ will likely cause confusion with the association of X Social Media LLC. However, since X Social Media LLC has been using the letter ‘X’ first and both companies arguably trade within related industries, X will have a hard time proving that there is no confusion with the marks. The key takeaway from this application is that X’s trade mark is likely to infringe on registered trade marks and that X is probably to face more trade mark infringement lawsuits.

Conclusion

What we can learn from the X rebranding is that intellectual property consideration is critical for any company that wishes to rebrand. However, before making major changes, there are a few intellectual property factors that must be considered. As illustrated above, the use of ‘X’ has a restricted protection because the letter is available to anyone who wants to use it and companies adopting the letter ‘X’ will unlikely succeed in proving distinctiveness and claim ownership on the letter. Even if Musk has been granted protection for X, enforcing the rights in and around the letter ‘X’ would be extremely difficult for X Corp given the circumstances, X should have continued to make use of Larry the Bird.

Lusapho Yaso LLB (UWC) is a legal consultant in Johannesburg.

This article was first published in De Rebus in 2024 (March) DR 24.

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