Recently, hashtags have become important tools for driving online interaction between entertainers and consumers on social media. The law is still being developed in this area, but the increased use of hashtags has nevertheless gotten the attention of brands and companies, who have rushed to trademark hashtags in an effort to stake a claim to this gray area. There are constant stories of athletes and entertainers trademarking hashtags that went viral on social media, but I often hear questions about the purpose of actually doing so.
What Is a Hashtag?
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. See hashtag definition, MERRIAM-WEBSTER.COM, www.merriam-webster.com/dictionary/hashtag. Hashtags are used in social media to facilitate searches by keywords and to group topics of interest. Hashtags allow businesses to promote products and services, share news, and otherwise engage with their audiences on social media.
The USPTO’s Treatment of Hashtag Marks is Just Like Its Treatment of Traditional Marks
In 2013, the 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. Since then, examples of trademark registrations accepted by the USPTO include:
#HOWDOYOUKFC for “restaurant services” (U.S. Reg. №4,695,901);
#MYCHASENATION for “entertainment services, namely, conducting motorsports racing events; regulating, governing and sanctioning motorsports racing” (U.S. Reg. №4,699,905);
In each of these cases, the USPTO concluded that the specimen submitted in support of the registration application evidenced use of the hashtag mark as a trademark, not merely as a means of facilitating online searching. These applicants generally displayed the hashtag mark in a non-Internet context, such as on advertisements or other signage in connection with the goods or services being offered.
Additionally, the USPTO will not allow registration of marks which consist only of the hash symbol or the term “hashtag” combined with merely descriptive or generic wording for goods or services. Examples of marks that were refused federal trademark registration include:
#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. №86/496,212); and
HASHTAGSKATE for “skateboards, skateboard decks, skateboard grip tapes, skateboard rails, skateboard riser pads, skateboard trucks, skateboard wax, skateboard wheels, bags for skateboards, ball bearings for skateboards, nuts and bolts for skateboards…” (U.S. App. Ser. №85/848,661).
It appears that the USPTO’s treatment of hashtag marks is similar to its treatment of domain names, which it generally regards as addresses on the Internet but which can sometimes serve a source-identifying function. A domain name will be registered only if the “mark, as depicted on the specimen, [is] presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website.” TMEP § 1215.02(a).
Courts and the USPTO Appear to Not Be on the Same Page on This Issue
While the USPTO holds that hashtags can sometimes qualify as protectable trademarks, at least one court has suggested that hashtags may never be protectable as trademarks. In Eksouzian v. Albanese, 116 U.S.P.Q.2d (BNA) 1972 (C.D. Cal. 2015), the district court considered whether the use of “#cloudpen” in social media posts and promotional contests violated a settlement agreement that prohibited the use of “CLOUD PEN” as a trademark. The court held that the “#cloudpen” hashtag was being used functionally, to direct consumers to the location of the promotion, and therefore was not actually violating the trademark.
Although the court quoted the TMEP section that recognizes the possibility of hashtags serving as source identifiers, it continued to state that “hashtags are merely descriptive devices, not trademarks… in and of themselves.” Id. at 1979. The latter is much broader, and may have far reaching consequences given the lack of case law on the subject.
While the USPTO allows for the registration of hashtags where they function as a source identifier of a party’s goods or services, the Eksouzian decision may have actually stripped away any power to that idea. Until the law becomes more settled in the area, trademark owners should develop other strategies to minimize the risk of their misuse on social media.