IP Law Daily, TRADEMARK NEWS—Florida advertiser claims rebranded Twitter infringes its X Social Media mark, (Oct 3, 2023)

By Linda O’Brien, J.D., LL.M.

Rebranded Twitter’s use of the mark “X” has caused actual confusion and will likely continue to lead consumers to incorrectly conclude that advertiser X Social Media is connected with X Corp.

The rebranding of Elon Musk’s Twitter to “X” infringes a Florida-based advertiser’s registered trademark and subsequent wide-scale media coverage has caused confusion and has led consumers to believe that its advertising services are being offered by or associated with X Corp., according to a complaint filed in the federal district court in Orlando, Florida. The suit also alleges that the plaintiff advertiser has already suffered losses in revenue due to the Twitter rebranding and is highly probable that the confusion will continue to its financial detriment (X Social Media LLC v. X Corp., October 2, 2023).

According to the complaint, X Social Media LLC is an advertising agency based in Windermere, Florida for law firms that uses social media, such as Facebook, and marketing technology for lead generation. X Social Media advertises its services under the federally registered trademark X SOCIALMEDIA and has continuously used the mark in commerce since 2016. X Corp., formerly Twitter Inc., is an online news and social networking site that was acquired by billionaire Elon Musk in 2022. Twitter publicly launched a rebrand campaign in July 2023, announcing the adoption of the mark “X” as the brand for its social media platform. X Corp.’s use of the “X” mark and attempt to register the mark in connection with social media, business data, promotion and advertising, business consulting, market research, and advertising has caused and will continue to cause irreparable harm to X Social Media.

X Social Media advertises its services to consumers, businesses, and law firms through its website “xsocialmedia.com”, books authored by its founder Jacob Malherbe, a quarterly magazine, and by participation in tradeshows and conferences. X Social Media frequently emphasizes the “X” portion of its mark throughout its advertising, blogs, and newsletters highlighting its services, such as The X Blog and X Weekly. The company has invested over $2 million to date in building brand awareness and over $400 million in advertising on the Facebook platform. Its consistent messaging and strategic use of social media and data analytics to assist law firms has resulted in impressive growth and INC 5000 ranked X Social Media as the 159th fastest growing private company in the U.S. in 2020, with its 2,439% three-year revenue growth, the complaint alleges.

Prior to Twitter’s announcement of its plan to rebrand its popular social media application under the mark “X”, X Corp. made international filings for “X” in March 2023 which were used as the basis for seven applications before the USPTO. The applications were granted a federal priority date of March 24, 2023. The media coverage and attention generated by the launch of the “X” rebrand of Twitter has quickly caused reverse confusion and led consumers to believe that X Social Media advertising services are being offered by or are associated with X Corp. Since “X” is a social media platform, consumers naturally conflate “X SocialMedia” as X Corp.’s social medial platform and media outlet’s covering Twitter’s rebrand are using the X SocialMedia mark in its entirety in headlines while referencing X Corp., the complaint states.

The complaint alleges that X Social Media has already suffered a loss in revenue that correlates with the X Corp.’s rebrand and use of the mark “X” and it is highly probable that this reverse confusion will continue to X Social Media’s financial detriment. The adoption of the “X” mark by X Corp. exemplifies exceptional willful conduct as it had a legal duty to conduct due diligence and avoid infringing the existing rights of X Social Media. X Social Media attempted to resolve the infringing use its trademark by sending X Corp. a cease-and-desist letter in August 2023, however, X Corp. declined to cease its use of the mark and continued to disregard the rights of X Social Media.

The lawsuit alleges claims for trademark and service mark infringement, state common law unfair competition, as well as violations of the Florida Deceptive and Unfair Trade Practices Act. X Social Media seeks: an injunction permanently enjoining X Corp. from marketing, selling or distributing services bearing the mark “X” or “X SocialMedia”, engaging in deceptive trade practices; the removal of all references to “X” and “X SocialMedia” contained in its advertising, marketing, and social media posts; the publication of corrective advertising; the accounting of all profits resulting from the use the defendant’s use of “X” and “X SocialMedia”; and an award of damages.

The Case is No. 6:23-cv-01903-JA-EJK.

Attorneys: Kathryn G. Kent and Sophie Edbrooke (Gerben Perrott, PLLC) for X Social Media LLC.

Companies: X Social Media LLC; X Corp.

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