Trademark law update regarding hashtags based on US IP law. By Justin M. Jacobson, Esq., The Jacobson Firm, P.C.
As social media and digital marketing and promotions continue to dominate the business world, there is an increased importance on unique branded promotional campaigns. In today’s world, dominated by social media, one new key brand development utilized by many marketers and advertisers is to market and promote a company’s products and services with the “hashtag” (or hash/number symbol (#)).
The United States Patent and Trademark Office (U.S.P.T.O.) in T.M.E.P. § 1202.18 defines a hashtag as “a word or phrase prefixed with the symbol ‘#.’” A hashtag is “often used in social-networking sites to identify or facilitate a search for a keyword or topic of interest” (T.M.E.P. § 1202.18). Many of the world’s leading social networking sites, including Twitter, Facebook, Google+, Tumblr, Instagram and Kickstarter all support hashtags and permit a user to search the platform by using a hashtag to narrow the search results. For example, a Twitter user can search “#KanyeWest” to locate and solely display all the Twitter posts that utilize the phrase “#KanyeWest” in them. This is beneficial for brands, as it enables them to easily monitor and track users’ personal social media posts by searching a specified hashtag. This also permits the brand to search the hashtag in order to locate all the posts tagged with a particular brand. Companies can utilize these results to easily conduct promotional contests, sales and other events as well as any other giveaways centered on a particular hashtag themed campaign.
With the rise of new innovative hashtag marketing campaigns, new legal standards for protecting and registering these phrases were enacted by the U.S.P.T.O. For instance, T.M.E.P. § 1202.18 only permits the registration of a trademark or service mark “if [the mark] functions as an identifier of the source of the applicant’s goods or services.” This means that the applied-for mark must be utilized in commerce (i.e., in an advertisement or affixed to the product), to indicate the source of a particular good. It must also be arbitrary or suggestive. Consequently, the main factor in determining whether a particular hashtag will be registerable is the nature of the hashtag as well as the context of its use. Conversely, simply adding a hash symbol before an otherwise unregisterable mark (i.e., a generic or descriptive mark, geographically misdescriptive, etc.) will still not be permitted registration by the U.S.P.T.O. (T.M.E.P. § 1202.18). For example, Coca-Cola received protection for its recent “#ShareACoke” promotional campaign that urged all Coca-Cola consumers to capture a photograph of them enjoying and sharing a Coca-Cola product with the hashtag “#ShareACoke.” This permitted Coca-Cola to review any social media posts that ended with “#ShareACoke.” This allowed them to track these posts for its marketing campaign which focused on the concept of “sharing a Coke.”
While you may be able to obtain trademark protection for a particular hashtag, you cannot prevent another from utilizing a particular hashtag unless the third-party use is found to be directly competing with your own product. For instance, Twitter’s guidelines only permit trademark infringement claims against a user when the user is utilizing another company’s business name, logo or other trademark-protected materials (i.e., hashtag) in a manner that misleads or confuses consumers.
In conclusion, a unique hashtag utilized to publicly offer a particular good or service may be eligible for trademark protection; however, this protection does not permit the mark owner to prevent others from utilizing the hashtag, unless there is a competing product or the use is meant to confuse and mislead the consuming public.
© 2016 The Jacobson Firm, P.C.
Image via Mike DelGaudio on Flickr.