Media outlets have hinted that hashtags may soon be an outdated trend, but the public has not abandoned the ubiquitous organizer of social media posts. As a further testament to the importance of hashtags, brands are claiming ownership of them as intellectual property. Indeed, Coca-Cola filed trademark applications this year for two Twitter hasthags–#cockecanpics and #smilewithacoke. 2015 may end up being the year of the branded or proprietary hashtag, and brands need to learn when, how, and whether they can convert their hashtags into registered trademarks.
Like any other trademark, a hashtag can function as a trademark and be registrable with the United States Patent and Trademark Office (USPTO) only if it identifies a source of goods or services. To meet this goal, the hashtag should not be merely descriptive or generic. For instance, the USPTO would not grant trademark registrations for the hashtags “#celebrity” or “#news.” Similarly, the USPTO tells us that it would not grant a registration for #SKATER for skateboarding equipment because it is descriptive. Instead, the hashtag should be arbitrary or suggestive. The viewer should see the hashtag and immediately think of a particular source of goods or services rather than multiple sources.
The USPTO considers the following factors in deciding whether to register a hashtag:
- Placement of the hash symbol in the mark
- Types of identified goods/services
- How the hashtag has been used
If the hashtag mark has been used solely to reference or organize keywords or facilitate searching on a topic, the USPTO will refuse registration. On the other hand, if a brand can show that the hashtag phrase has been used to identify the brand’s goods or services, then the USPTO will consider the application. Notably, in granting hashtag applications, the USPTO typically requires a disclaimer of ownership for the “hash” mark itself. Because filing for registration of a hashtag has layers of complexity in the registration process, brands would be well-served to clear their trademarks and do the registration applications with qualified legal counsel.
Let’s look at two registrations for hashtags for some lessons:
#BLAMEMUCUS for pharmaceutical preparations and substances for the treatment of coughs and symptoms of colds and for information about pulmonary issues provided via the Internet, owned by Reckitt Benckiser LLC
The specimen of use for this trademark shows an in-store display for Mucinex prominently bearing the hashtag. The company’s tweet feed also shows repeated use of the hashtag in conjunction with visuals of its “mucus” television characters. While many consumers have picked up the hashtag, it is clear that Reckitt Benckiser has created a successful association between this phrase and its Mucinex products. If a competitor began using the hashtag, it could be subject to a trademark infringement lawsuit or even an unfair competition claim.
- Lesson: This case study shows a strong use of a hashtag as a trademark. Its use clearly conjures a particular company’s goods and services. Furthermore, the trademark registration gives broad protection to the owner because of the addition of information provided via the Internet.
#StraightJuicin for sweatshirts and t-shirts, owned by Regal Wellness Solutions
In this registration, the owner of the trademark describes itself on its Facebook page as “a functional staffing firm specializing in wellness related placements.” It runs a website www.straightjuicin.com related to juice regimens, and it is claiming its trademark rights only relating to the sweatshirts and t-shirts that bear the hashtag. While the owner also uses the hashtag prominently on social media, its trademark is limited to clothing goods. Therefore, it would be most successful enforcing its trademark rights against a competitor who uses it on clothing. Unlike the owners of the Mucinex hashtag, Regal Wellness did not file for a trademark covering its actual products or services or for information dissemination on the Internet. It only filed to protect clothing items that advertise its services, limiting its potential rights.
- Lesson: This case study demonstrates the importance of considering carefully the goods/services for which a brand claims trademark rights. While we cannot presume to know why Regal filed the way it did, and indeed, perhaps it had a strategy in mind, for optimal protection, brands should seek to protect their hashtags not only for advertising materials but also for the underlying goods and services. Notably, Coca-Cola’s pending trademarks are for “soft drinks”.
Sometimes, brands convert registered trademarks into hashtags. For example, last year, the Mid-American Conference of the Division 1 level of the NCAA has registered its “MACtion” word mark and uses the word both with and without the hashtag symbol. Similarly, in 2011 Mississippi State’s college football team painted its team logo with a hashtag in the end zone. Despite the hashtag, the NCAA has registered only the word mark “Hail State” without the hash symbol. These examples demonstrate the possibility of claiming trademark rights in a phrase, regardless of whether it has the “hash” symbol in front of it. At the same time, when using pre-existing trademarks in hashtags, consider how this practice may transform the mark into a “fluid trademark” and legal ramifications.
If a brand is going to try to register its use of a hashtag as a trademark, it should consider the following:
What is the duration of the proposed use? Considering the length of time it takes to obtain a federal registration (at least nine months), it is not worth pursuing trademark registration for a short-term use. In addition, your marketing team should consider whether the hashtag would provide sustained brand growth. Of course, consider that Coca-Cola filed on an intent to use basis, but not every company can afford to file applications every time it intends to use a mark. For those companies, they should consider prudently their long term marketing plans before filing for trademark protection.
In choosing a brand’s hashtag, remember that the hashtag can also function as an advertising claim. Just because the marketers add a hashtag does not obviate the need for substantiation. For example, if Mucinex were to adopt the hashtag #bestcoldmedicine, it would likely see a challenge from a competitor.
In addition, a brand should consider the value of a hashtag trademark. In one famous case, Taco John’s relied on its federal registration for “Taco Tuesday” and sent a cease desist letter to Iguana Grill for its use of #tacotuesday. In the end, the challenge brought more positive buzz to Iguana Grill than gaining any legal traction. The lesson here is to choose a hashtag that has some distinctiveness and is catchy or the public may turn on your efforts to enforce your trademark rights.
So for your next hashtag campaign, consider whether your brand can benefit from trademark protection. If you are not certain whether the hashtag will function as a trademark, #askanattorney.