The news that X Corp. (formerly Twitter) is being sued over its use of “X” will be unsurprising to many. Indeed, such a possibility was predicted by numerous IP experts and media outlets. My previous article (linked at the end of this article [1]) discussed Twitter’s change to X, as well as some earlier rights that could be potential conflicts for X Corp. Whilst some of those earlier rights may still be a problem for X Corp., there is one company in particular that holds a trade mark including the letter X, which will certainly have the attention of X Corp.’s legal team.
X Social Media LLC (hereinafter referred to as XSM) is a Florida-based advertising agency specialising in Facebook and Instagram. They hold a US Registration of the Trade Mark “X SOCIALMEDIA” [2] which was filed and registered in 2018, but the mark has been in commercial use since 2016. It is this mark that forms the basis of their claim that X Corp.’s use of “X” infringes their registered and unregistered rights in the mark “X SOCIALMEDIA”. XSM filed a law suit in a Florida District Court on 2 October 2023, a full copy of which is linked at the end of this article [3].
In XSM’s complaint filed at the court, they outline the services for which their mark is used (advertising and social media services), as well as the duration and nature of the use. Whilst X Corp. is undoubtably the bigger fish in these proceedings, XSM have invested significantly in their brand and advertising, citing $400 million spent on advertising, and “over $2 million” spent on “building brand awareness and reaching customers”. XSM alleges that X Corp.’s use and attempt to register the mark X “has caused and will continue to cause serious irreparable harm to X Social Media”. XSM also claim that they have “information and belief” that X Corp. were aware of XSM’s pre-existing rights before launching Twitter’s re-brand to X.
An important part of establishing trade mark infringement in the US is showing that use of the later mark is likely to cause confusion in the minds of consumers about the source of the goods or services offered under the parties’ marks. XSM alleges that X Corp.’s use of X has already caused confusion, leading consumers to believe that XSM’s advertising services are being offered by, or associated with, X Corp., stating: “As “X” is a social media platform, consumers naturally conflate “X SocialMedia” as an X Corp.’s social media platform. Even media outlets covering Twitter’s rebrand are using the X SocialMedia Mark in its entirety in headlines while referencing X Corp.”. XSM claim that they have already suffered loss of revenue which correlates with X Corp.’s rebrand, although no evidence of this was filed.
According to the complaint, XSM sent a cease and desist letter to X Corp. in August 2023, to attempt to resolve the matter before initiating legal proceedings. Clearly X Corp. did not comply, as the X mark continues to be used. X Corp. also filed numerous US Trade Mark Applications for X in September 2023, after the cease and desist letter was sent.
XSM is seeking an injunction to stop X Corp. from using X, X SOCIALMEDIA, or any other confusingly similar mark, as well as seeking damages.
At the time of writing this article, all of X Corp.’s US Trade Mark Applications filed in September are pending, awaiting examination.
Of course, the world will be eagerly awaiting X Corp.’s reply. If successful, XSM’s claim could cause irreparable damage to Elon Musk’s plans for the letter X, and might even lead to the return of a well-known blue bird.
[1] https://www.dehns.com/insights/extraordinary-idea-or-expensive-mistake-the-trade-mark-issues-at-the-heart-of-twitters-re-brand-to-x/
[2] US Trade Mark No. 5554203, which is registered for “Advertising services” in Class 35.
[3] https://storage.courtlistener.com/recap/gov.uscourts.flmd.419126/gov.uscourts.flmd.419126.1.0.pdf
