he #hashtag, once confined to Twitter, has become ubiquitous across virtually all social media platforms. The hashtag (formerly known as the “pound” sign) has revolutionized the way information is organized, discovered, and shared online. Social media users use hashtags – i.e., a keyword or phrase preceded by the hashtag symbol (#) – to identify social media posts or messages on a specific topic. The hashtag functions as a searchable link, which can be clicked on to find other posts related to that specific topic. The phenomenon is not just for millennials; brand owners have embraced the hashtag as a way to boost brand recognition, generate buzz around new products, engage with their consumers, and attract new ones.
It is no wonder that brand owners look to trademark law to protect their valuable hashtags. The United States Patent and Trademark Office (“USPTO”) has recognized the registrability of “hashtag marks,” but the legal community is still grappling with the legal nuances of this trend-turned-staple.
The USPTO first recognized the potential registrability of the hashtag in 2013, defining it as a form of metadata comprised of a word or phrase prefixed with the symbol “#.” See Trademark Manual of Examining Procedure (“TMEP”) 1202.18. The USPTO has granted trademark protection to hundreds of hashtag marks since then, including the following:
- #FRIENDSGIVING for charitable fundraising services (U.S. Reg. No. 4,924,403)
- #ALLERGICTOEVERYTHING for advice relating to allergies (U.S. Reg. No. 4,922,405)
- #STEAKWORTHY for restaurant services (U.S. Reg. No. 4,695,901)
- #NOBASICS for hats, shoes, and t-shirts (U.S. Reg. No. 4,759,534)
Although hashtag marks have their own section of the TMEP, the traditional rules of examination apply. See TMEP 1202.18. Like ordinary trademarks, a mark containing the word “hashtag” or the hashtag symbol (#) is registrable as a trademark only if it functions as an identifier of the source of the applicant’s goods or services and satisfies the other threshold requirements for trademark registration, such as use in commerce, distinctiveness, and unlikely to cause confusion with a pre-existing mark. See TMEP 1202.18; 15 U.S.C. 105(2). More specifically, brand owners interested in obtaining trademark protection for their hashtags should consider the following when deciding whether registration is right for their particular hashtag:
#Source-identifying. The USPTO will only register a hashtag if it functions as a trademark, meaning if it is used in commerce in conjunction with goods or services to identify their source or origin. The USPTO is likely to refuse registration of a hashtag that is solely used in the usual social media sense and appears where hashtags generally appear – i.e., after a public comment and/or in close proximity to a post, picture or video. For example, the trademark examiner refused registration of #KICKHUNGER for charitable services promoting public awareness of hunger in America, pointing to statements on the applicant’s website showing that the applied-for mark was merely being used as a typical social media hashtag – i.e., “See your photos featured on our website . . . by posting on Twitter or Instagram using #KICKHUNGER.”
#Distinctive. The addition of the word “hashtag” or the hashtag symbol to an otherwise unregistrable mark does not render it registrable. See TMEP 1202.18. Generally, this means that the USPTO will not register a mark that combines a hashtag with a word that is generic or that merely describes the applicant’s goods or services. See TMEP 1202.18. For example, the USPTO refused to register the mark HASHTAG CLOTHING for various clothing items (U.S. Ser. No. 85/918,214) and #WORLDTRAVELER for travel-related social networking services (U.S. Ser. No. 86/595,734) on the grounds that these marks actually described the qualities of the applicants’ respective goods and services. As with all trademarks, hashtag marks that incorporate fanciful (#9RGNG for athletic apparel, baseball caps, and other clothing items (U.S. Reg. No. 4,537,669)), arbitrary (#THECODE for retail stores services featuring headwear, shirts, t-shirts and sweatshirts (U.S. Reg. No. 4,581,939)), or suggestive terms (#JUGLIFE for jugs (U.S. Reg. No. 4,588,946)) are considered the most distinctive, and therefore the strongest and most likely to be registered. (For further discussion, see CDAS Trademark Law Basics, Part 4).
#Confusing. The USPTO will generally also refuse to register any mark that is confusingly similar to a pre-existing mark or application on the registry, and the addition of the hashtag word or symbol is generally not enough to differentiate a mark from a pre-existing mark or application. For example, the USPTO refused registration of #RESPECT for clothing items (U.S. Ser. No. 86/430,034) due to a likelihood of confusion with the previously registered mark, RESPECT, for the same clothing items (U.S. Reg. No. 3,572,661). This rule is also not unique to hashtag marks; it is consistent with the USPTO’s registration policies regarding the addition or deletion of punctuation and top level domains such as “.com.” See TMEP 807.14(C) (“Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.”); In Re Bunabu Inc., 86148376, 2015 WL 7273022, at *6 (Oct. 21, 2015) (the addition of “.COM” to applicant’s mark fails to distinguish it from the cited marks because “it is merely an indicia of a commercial internet address and has no source-indicating function”). As such, it is important to conduct an investigation into the availability of your hashtag mark – with and without a hashtag – before commencing use and registration.
In sum, while the hashtag has revolutionized social media, when it comes to trademark registration, not much has changed. The addition of a hashtag to a trademark that is otherwise unregistrable does not transform it into one that is registrable. Rather, the USPTO examines applications for hashtag marks in much the same way as ordinary trademarks, with careful attention to the overall context of the hashtag mark to ensure that it is truly functioning as an identifier of the source of the applicant’s goods or services, and not merely to identify or facilitate a social media search. As a result, before applying to register a hashtag mark, it is important to perform the same due diligence as ordinary trademarks, including researching any potential conflicts.
Filed in: Legal Blog, Social Media, Trademarks and Brands
May 13, 2016