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The Hashtag / Trademark Paradox: #Trending, but #Proprietary?

Posted in Advertising, Branding, Famous Marks, First Amendment, Infringement, Marketing, Social Media, Social Networking

-Wes Anderson, Attorney

As the hustle and bustle of the INTA 2016 Annual Meeting drew to a close yesterday, I reflected on the session “#HASHTAGS #EverythingYouNeedToKnow” from Tuesday. It seems trademark protection may not (yet) fit comfortably into the hashtag world.

DuetsBlog previously provided a helpful tutorial on the nuts and bolts of hashtags and how they function, particularly on the sites Twitter and Instagram. As James Mahoney alludes in his post, hashtags serve a collaborative purpose – they organize ideas, topics, and events, effectively creating “threads” of discussions on a medium that is otherwise a stream of consciousness. As brand owners grow in presence on social media, a question has arisen whether certain hashtags may become trademarks – and thus allow brand owners to stop others using those hashtags.

The U.S. Patent & Trademark Office now provides explicit guidance on the standard for registration of hashtags:

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.

Most of the foreign jurisdictions discussed at the INTA session articulate a similar standard. Essentially, I see this standard to mean a hashtag mark must itself function as a trademark, and not just “contain” a trademark or house brand. If you’re familiar with hashtags, this might lead to some head scratching.

Consider how the appearance changes when a brand name is used as a hashtag. Applebee’s® gives all the information straight away, thanks in part to use of the registration symbol – it tells others that this is a brand name. But #applebees doesn’t readily convey as much information (and in fact here omits the apostrophe, because for some time hashtags were often “broken” by punctuation or numbering).

Among the social media savvy, the hashtag symbol itself is weighted with its own meaning – a hashtag is a self-contained invitation to be used by third parties on social media, much like an invitation to search for a term on a search engine. It invites users to see what’s already been posted containing that hashtag, and to contribute their own content. Consider the more natural functions of hashtags, such as charity events like today’s #RedNoseDay, which is trending this morning on Twitter. The very idea is to encourage unsolicited and unpoliced third party usage.

This is anathema to many trademark owners, who of course wish to (and are required to) establish control over use of their brand names. And there certainly can be exceptions for hashtags that zealously function as trademarks, and that consumers recognize as brand names unto themselves. Even then, brand owners must be prepared for rampant third-party use of a hashtag mark, and understand that nominative fair use is far more likely to apply in the hashtag context.

Twitter announced some new changes to its 140-character message limit, and will now no longer count username mentions, links, and photos toward the limit. So, we know nothing is set in stone when it comes to Twitter. So I would not be surprised should there come a day when some tweaks here and there make hashtags more trademark-friendly.