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Blog Entry on Hashtag Infringement

CAN YOU REGISTER A HASHTAG AS A TRADEMARK?:

The answer is not only #YES – you can also sue for infringement of hashtags.

 

In a world dominated by technology, companies and brand owners have turned to social media platforms as marketing channels. What do platforms such as Instagram, Facebook and Twitter all have in common? #HASHTAGS

 

A dictionary definition of “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. Companies have realized that posting photos on social media of a product along with the right hashtag can increase customer engagement. Consequently, higher customer engagement often leads to more likes, followers and most importantly, more publicity.

 

REGISTERING YOUR #HASHTAG WITH THE USPTO

 

The increase in the popularity of hashtags has raised a valid question: 

 

Can you trademark a hashtag?

 

In 2013, the United States Patent and Trademark Office (USPTO) recognized that a term containing the hash symbol or the term “hashtag” may be registered as a trademark, but “only if it functions as an identifier of the source of the applicant’s goods or services.” See TMEP §1202.18 The office also notes that a hashtag may be registrable as a trademark if it includes a disclaimer of the wording “hashtag” or the hash symbol “in cases where they are separable from other registrable matter.” 

 

In the last year, approximately 2,200 applications were submitted for trademark-specific hashtags. Hashtag trademarks that have been successfully registered in the United States include: 

 

#SMILEWITHACOKE for The Coca-Cola Company, 

#McDSTORIES for McDonalds, and 

#MAKEITCOUNT for Nike. 

 

Conversely, the USPTO has denied the registration of a number of purported hashtag marks based on mere descriptiveness or failure to file an acceptable specimen of use, including #TEAMNOSLEEP for party planning and #PINUPGIRLCLOTHING for online shopping.

 

ENFORCING YOUR #HASHTAG 

The Courts have been inconsistent when it comes to infringement and/or enforceability of hashtag marks. In 2015, the court in Eksouzian v. Albanese ruled that the plaintiff’s use of the hashtag “#CLOUDPEN” on social media platforms was considered merely “a functional tool to direct the location of the plaintiffs’ promotion” such that it was viewed by a group of consumers, and not considered an actual trademark. 

In Pub. Impact, LLC v. Boston Consulting Grp., Inc., a Massachusetts court found that the use of the defendant’s Twitter handle “@4PublicImpact” and hashtag #PUBLICIMPACT created a likelihood of confusion with the plaintiff’s registered trademark “PUBLIC IMPACT.” The court also noted the fact that both plaintiff and defendant were competitors making it even more likely that consumers would be confused by the hashtag.

 

In a Mississippi case, Fraternity Collection, a company that designed and manufactured clothing sued one of its designers because she began selling her designs to a competitor. The designer used the hashtags “#FRATCOLLECTION” and “#FRATERNITYCOLLECTION in her social media accounts. The court found that the company stated a cause of action for false advertising saying that “hashtagging a competitor’s name or product in social media posts could, in certain circumstances, deceive consumers.” 

 

IS #HASHTAGING THE FUTURE?

 

The amount of businesses that have started to protect their brands on social media in the past decade has skyrocketed. With this increase in online presence comes along the need of protecting your brand from competitors.  Competitors can easily misuse a brand’s hashtag mark to attract similar clientele to their brand either through confusion or assimilation of marks. 

 

A trademark attorney can help you enforce a registered hashtag mark. Trademark attorneys can also help you perform a clearance search and provide an opinion on the availability of your proposed hashtag trademark. Consequently, trademark attorneys are now also working with in-house marketing teams during the preselection process to advise on potential hashtags.  

 

#WHATNEXT?
Hashtags can be very valuable to your company; but try to avoid the use of your competitors’ trademarks in hashtags for social media posts promoting your own goods and services. If you are looking to register a #hashtag affiliated with your service or good, or need help enforcing your registered hashtag, contact a Florida Trademark Attorney today at 305-374-8303 to discuss your rights.