During the 2016 Super Bowl 50, the most-watched sports event in America, hashtags were in nearly half of the national ads, including #JungleBookTrailer, #EatASnickers, #HyundaiSuperBowl, and #CokeMini. During New York Fashion Week (NYFW) 2016, the biggest event in the fashion industry, designers launched custom hashtags such as #FentyXPuma, #YeezySeason3, and #ToryBurchFW16 to display their latest fashion collections and to allow followers live and behind-the-scenes looks at their NYFW shows, triggering more than 561,000 mentions on social media in a single week.
These are just a few examples of how hashtags play an integral role in companies’ overall marketing strategies. The hashtag has evolved from merely a search and categorization tool on social media to a valuable source-identifying trademark. The recent trend toward trademarking hashtags reveals a potential conflict between trademark protection and enforcement, a shift in trademark doctrine, and a heightened duty to police trademarks on social media.
A hashtag is a form of metadata comprised of a word or phrase prefixed with the # symbol. The hashtag started on Twitter in 2006 and then expanded to Instagram and Facebook in 2011 and 2013, respectively. When initially adopted, the hashtag was created as an online categorization tool by which users could identify or facilitate a search for a keyword or topic of interest by typing # along with a word or phrase (e.g., #OOTD or #scandal). Placing a hashtag at the beginning of a word or phrase on Twitter, Instagram, and Facebook turns the word or phrase into a hyperlink attaching it to other topically related posts, making that conversation sortable by topic on the respective social media platform. If the hashtag goes viral, it becomes a trending topic, which is the ultimate goal for any social media marketing activity.
In the last few years, there has been a major push for companies to communicate with their consumers using unique hashtags on social media. By reducing marketing costs, strengthening brand loyalty, encouraging consumer engagement, attracting new consumers, and driving sales, the use of hashtags on social media has revolutionized how companies conduct business in the twenty-first century.
The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof,” that identifies or distinguishes the goods or services of one party from those of another party and functions as a source identifier. As hashtags became increasingly more popular on social media, in 2013 the United States Patent and Trademark Office (USPTO) recognized hashtags as registrable trademarks “only if [the mark] functions as an identifier of the source of the applicant’s goods or services.” Prior to this change, many hashtag trademark applications failed to obtain approval from the USPTO or had been abandoned. Subsequent to this change, however, the USPTO allowed registration if the mark contained words or phrases that function as a source identifier independent of the # or hashtag.
As explained in the Trademark Manual of Examining Procedure (TMEP):
When examining a proposed mark containing the hash symbol, careful consideration should be given to the overall context of the mark, the placement of the hash symbol in the mark, the identified goods and services, and the specimen of use, if available. If the hash symbol immediately precedes numbers in a mark (#29 JONES, THE #1 APP, #TWELVE, etc.), or is used merely as the pound or number symbol in a mark (e.g., ICHIBAN#), such marks should not necessarily be construed as hashtag marks. This determination should be made on a case-by-case basis.
The TMEP further explains that “if a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.” Accordingly, the USPTO applies the same standard and examines hashtag trademark applications in the same manner as traditional trademarks.
As of 2015, 1,042 hashtag trademark applications were filed in the United States. The USPTO has granted registration for a number of hashtag marks, including:
To secure a federal registration, the USPTO requires that the applicant file a specimen demonstrating use of the applied-for mark in connection with the goods and services listed in the application. In the above-mentioned examples, the applicants filed acceptable specimens demonstrating use of the applied-for mark (or, in these cases, hashtag mark) on storefronts, in-store displays, websites, print and digital advertising, and actual products and merchandise.
Conversely, the USPTO has denied registration for a number of purported hashtag marks based on mere descriptiveness or failure to file an acceptable specimen of use, including:
As shown, where the applied-for mark is descriptive or used merely as a hashtag for online social media and therefore does not function as a trademark to indicate the source of the applicant’s goods or services, the USPTO will deny registration.
While the USPTO’s practice demonstrates that some hashtags can be registrable trademarks, the courts have posed questions and raised uncertainty surrounding the enforceability of hashtag marks. In Fraternity Collection, LLC v. Fargnoli, Fraternity Collection sued a former employee and fashion designer for trademark infringement and violation of the Lanham Act’s prohibitions on deceptive advertising when she subsequently became employed by a competitor and started using the hashtags #fratcollection and #fraternitycollection on her social media accounts to promote her competing fashion designs. Both parties filed competing motions to dismiss, which the court denied. Instead, the court stated in an order that “hashtagging a competitor’s name or product in social media posts could, in certain circumstances, deceive consumers.” However, the parties later settled and the court dismissed the suit. On balance, the Fraternity Collection court indicates that the use of a competitor’s name as a hashtag may be actionable as trademark infringement, unfair competition, or false advertising.
To the contrary, the court in Eksouzian v. Albanese offers a different perspective on the enforcement value of hashtag marks. In this case, two competing manufacturers and sellers of compact vaporizer pens reached a settlement agreement to resolve a prior trademark dispute involving use of the term CLOUD. The plaintiffs sued the defendants to enforce the settlement agreement, and the defendant counterclaimed, alleging that the plaintiffs’ use of #cloudpen on social media violated the settlement agreement. In particular, the settlement agreement prohibited the plaintiffs’ use of the words CLOUD, CLOUD V, and/or CLOUD VAPES in close association with the words “pen,” “penz,” “fuel,” and “pad” as a unitary trademark.
The Eksouzian court held that the plaintiffs did not breach the settlement agreement by using #cloudpen on social media because “hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves” and because #cloudpen was being used to direct consumers to the location of the promotion. As the only U.S. court that has directly addressed whether a hashtag can function as a trademark, the Eksouzian court indicates that the use of a hashtag on social media alone does not warrant trademark protection; but the court fails to address or confirm the USPTO’s standard that a hashtag being used in connection with the offering of goods or services can function as a source-identifying trademark.
In light of the Fraternity Collection and Eksouzian decisions, it is unclear how courts will treat trademark infringement and/or unfair competition claims involving hashtag trademarks in the future.
This trend toward trademark protection for hashtags has essentially expanded the definition of what constitutes a trademark, redefined the role of trademark attorneys, and heightened trademark enforcement efforts.
When the USPTO started to recognize the hashtag as a registrable trademark, it arguably added a new category to nontraditional trademarks. A nontraditional trademark is typically considered any type of trademark that does not belong to a preexisting category and is often difficult to register, but may fulfill the essential trademark source-identifying function. Historically, nontraditional marks have included color, sound, olfactory, taste, motion, and three-dimensional (3D) trademarks. As it does with traditional marks and other categories of nontraditional marks, the USPTO requires for registration that the hashtag trademark is distinctive and used extensively and exclusively in connection with goods or services in interstate commerce.
Further, the role of trademark attorneys has expanded beyond simply clearance and enforcement. Trademark attorneys now engage in various branding and marketing practices. For example, instead of receiving instructions to perform a clearance search and provide an opinion on availability after the selection of a proposed trademark, trademark attorneys are now working closely with in-house marketing teams during the preselection process to advise on potential hashtags as well as the costs and benefits (or lack thereof) of pursuing registration of the same.
In addition, because of the risk of competitors hijacking hashtags and the content stream tied to those hashtags by directing traffic to their social media pages, companies are increasingly seeking trademark protection for hashtags to thwart infringing third parties. Companies are closely monitoring social media for potential trademark misuse, and becoming more diligent in their policing efforts. Of course, because social media has a global reach and trademark rights stop at the border, there are territorial limitations and considerations with such enforcement efforts.
Overall, because brand cycles are moving quicker via social media, trademark attorneys are expected to be more responsive, willing to adapt to brand and marketing practices outside of their traditional roles, faster to enforce trademark rights when appropriate, and more prepared to help their clients make quick decisions.
In sum, hashtag trademarks can be valuable brand assets for companies. As with any other trademark, where there will be long-term use of a hashtag trademark in connection with actual goods or services (beyond use on social media platforms), registration may be a worthwhile consideration. However, as shown with the Fraternity Collection and Eksouzian cases, the enforceability power of hashtag trademarks remains to be seen.
©2016. Published in Landslide, Vol. 9, No. 2, November/December 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
