Plaintiff's Trademark Suit vs. X Is a 'Shakedown,' Says X's Motion to Dismiss
Plaintiff’s trademark rights are in X Social Media, not X, said X Corp.’s motion to dismiss Monday (docket 6:23-cv-01903) a trademark infringement suit in U.S. District Court for Middle Florida in Orlando. Marketing company X Social Media alleged the former Twitter caused irreparable harm to it when it began using the "X" mark in July as its brand for the social media platform (see 2310030044).
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X Social Media began using its “distinctive and dominant letter ‘X’” eight years, ago, the complaint said. Twitter launched a rebrand campaign in July, when it adopted the “X” as the brand for its social media platform, and its use and attempt to register the mark for social media, business data, promotion, advertising and market research services has and will continue to cause “serious” harm to X Social Media, said the complaint.
In its motion to dismiss, X called the lawsuit a “shakedown masquerading as trademark infringement and unfair competition claims.” X Social Media -- “an advertising agency for lawyers -- is opportunistically seizing” on the Twitter rebrand to X, “claiming that it will cause confusion in the marketplace,” said the motion.
X Social Media provides paid advertising services to law firms “to help connect them with putative class action plaintiffs via social media sites Facebook and Instagram,” the motion said. The business is different from X, which provides an online and app-based platform that allows users to “freely share information, photos, audio and video content,” it said. After he bought Twitter, Elon Musk rebranded to X partly for the “sentimental value” he associates with the letter X, dating back to his involvement with X.com and PayPal in 2000, “long before Plaintiff’s first use” of the X mark, the motion said.
Plaintiff’s trademark registration for X SocialMedia “does not confer upon it an exclusive monopoly to use X, one of only 26 letters in the alphabet,” the motion said. The plaintiff has “peacefully coexisted for years with hundreds of other registered X-formative trademarks,” the motion added, citing Meta, Microsoft, Sony and Google as companies owning registered “X” trademarks. X Social Media doesn’t own any registered trademarks for the letter “X” standing alone, it said.
X Social Media’s allegations of “likely confusion” are “implausible on their face,” the motion said. Of the seven factors courts consider in determining likelihood of confusion, “none favor Plaintiff,” it said, citing plaintiff’s mark’s strength; existence and extent of actual confusion in the consuming public; similarity of the marks and between the services offered by them; similarity of actual sales methods used, including customer base; similarity of advertising methods and “intent of the alleged infringer to misappropriate the proprietor’s good will.”
Additionally, the X SocialMedia mark “is weak, especially given the crowded field of X marks in which it operates," said the motion, saying the plaintiffs’ mark is “entitled to only thin protection.” The X SocialMedia mark “evokes the law-related services it provides, incorporating a blue human stick-figure holding up the scales of justice,” the complaint said, with an illustration. X’s mark, used in connection with different services, “is a simple, yet distinctive, modern, black and white X,” it said.
The complaint fails to allege any likelihood of confusion, said the motion. The test for infringement is whether there’s a “likelihood of confusion,” and that confusion must be “probable, not just possible,” it said. Also, plaintiff’s claim that X violated the Florida Deceptive and Unfair Trade Practices Act fails because it has not alleged consumer injury, the motion said. The complaint should be dismissed with prejudice, it said.