04 Apr Hashtags and Trademarks: #ItsComplicated
Hashtags are an integral part of social media and are commonly used to make searching easier. A hashtag is a word or phrase preceded by the hash character, or pound sign (#), that is used to categorize the content of the accompanying text. Hashtags are used in social media to facilitate searches by keywords and to group topics of interest, and enable businesses to promote products and services, share news and engage with consumers on social media. Examples of successful hashtag campaigns include the Throw Back Thursday Instagram tag #TBT, Kentucky Fried Chicken’s ad campaign #HowDoYouKFC and charity fundraisers, including the #IceBucketChallenge.
The main issue posed by use of hashtags is whether they can be protected as trademarks, and whether the use of someone’s trademark as a hashtag can be considered trademark infringement. Generally, a mark that is otherwise registrable remains so when a hashtag is added, and one that is not registrable does not become registerable simply because of the hashtag addition.
Regardless of the presence of the hashtag, it is whether the mark serves as the source identifier for the applicant’s goods and services that determines if the mark is registerable. The US Patent and Trademark Office (PTO) has processed hundreds of applications for marks containing a hashtag based on the following guidelines (TMEP 1202.18):
- If a mark consists of or has the symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the relevant goods or services, the entire mark would be refused as merely descriptive or generic.
- And, the symbol # and word HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media.
The PTO has granted U.S. registrations for some hashtag marks, for example: #Steakworthy for “restaurant services” (U.S. Reg. No. 4,695,901). Others have been refused by the PTO, including #PINUPGIRLCLOTHING for “online shopping site and retail stores featuring women’s vintage inspired clothing, swimwear, footwear, cosmetics, handbags, purses, wallets, belts, jewelry, sunglasses, scarves, and headwear” (U.S. App. Ser. No. 86/496,212).
Recently, courts have ruled inconsistently in cases involving the enforceability of hashtags as trademarks and/or whether the use of a mark in a hashtag constitutes infringement.
Cases NOT Supporting Enforcement of Trademarks against Hashtag Use or Hashtags as Trademarks.
In Eksouzianv. Albanese, No. CV 13-00728-PSG-MAN, 2015 WL 4720478, at *7-8 (C.D. Cal. Aug. 7, 2015), the court was analyzing whether the use of a hashtag (#cloudpen) was a violation of a settlement agreement clause that prohibited the use of the terms ‘cloud’ and ‘pen’ in close proximity as a unitary trademark. The court held that there was no breach “because hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves.” Id. At 15. The court found that even though the hashtag used the registered mark, that using the hashtag in this manner was not an infringing act likely to cause confusion. This decision was further supported in AOP Ventures, Inc. v. Steam Distribution, LLC, No.EDCV151586VAPKKX, 2016 WL 7336730, at *13 (C.D. Cal. Oct. 11, 2016), where the court again stated that merely using a trademark as a hashtag does not cause infringement of that mark.
Cases Supporting Enforcement of Trademarks against Hashtag Use or Hashtags as Trademarks.
Despite these two cases, there are courts that have looked at hashtag use as supporting a trademark infringement claim. In TWTB, Inc. v. Rampick, No. CV 15-3399,2016 WL 236313, at*8 (E.D. La. Jan. 20, 2016) the court found the use of hashtags to be relevant to a trademark claim and considered the use of the hashtags as evidence of a former licensee holding itself out to be the same business as a current licensee. While not a dispositive ruling, in Fraternity Collection, LLC v. Fargnoli, No.3:13-CV-664-CWR-FKB, 2015 WL 1486375, at*1-2 (S.D. Miss. Mar. 31, 2015), the Court refused to dismiss a trademark claim against a competitor’s use of a trademark as a hashtag and noted that the use of a competitor’s name or product as a hashtag “could, in certain circumstances, deceive consumers.” See CaseNo.3:13-CV-664-CWR-FKB, at 6‒7.
Also supporting the enforceability of trademark rights against hashtag use is Coca-Cola Company v. Who is Privacy Protection Service, Inc./Thien Le Trieu, Le Trieu Thien, 2016 WL692866, Case No. D2015-2078, at *3 (WIPO Feb. 10, 2016), where WIPO noted that once a mark was determined to be protectable (or by extension, not protectable) there was no reason to analyze the hashtag version of that same term or mark. It stated, however, that a hashtag mark not based on an existing mark would be treated the same as a non-hashtag mark in analysis, and whether the mark had acquired secondary meaning would determine if it were protectable.
Given the uncertainty provided by these court decisions, trademark owners should be very careful in how their marks are used on social media, and should periodically and routinely check for such uses. Owners should generally use and protect the underlying trademark used in a hashtag by itself, rather than try to rely on and protect the hashtag/mark combination. Additionally, one should be careful in using the mark of another as a hashtag, as there a court may find infringement in certain circumstances.