Credit: Local Solutions

I write today regarding a squirrelly thought: are the benefits of registering a hashtag trademark almost always outweighed by the consequences? In light of a recent Trademark Trial and Appeal Board (“TTAB”) ruling and the Trademark Manual of Examining Procedure’s (“TMEP”) provisions, hashtag marks offer much less protection than traditional character-based marks, such that the latter are preferable in most situations.

We’ve all seen hashtag words and phrases (without spaces between the words) in social media, most commonly on Twitter–but also now on other sites, such as Facebook and Instagram. By affixing a hash symbol (#) to a word or phrase in a post, users can garner attention, join in a movement, and possibly “go viral.” Popular recent trending examples are #MeToo and #TakeAKnee. And of course, who could forget:

#selfie

Hashtags serve filtering, identifying, and promoting functions that have commercial advertising value. Thus, it is no surprise that hundreds of individuals and companies have applied for trademarks on “hashtag marks,” seeking to control the use of certain hash-preceded words and phrases. In fact, at the time of writing, there are over 1,900 such registrations. Hashtags are hip, and everyone wants one–or so they think.

In 2016, the USPTO added TMEP § 1202.18, which explains when “hashtag marks” may be registered:

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. . . . Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media . . . .Therefore, the addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.

Recently, the TTAB applied this rule and other doctrines, holding that the addition of hashtags usually do nothing to make a mark distinctive. In the case, the TTAB rejected singer Will.I.Am’s application for a hashtag mark for #WILLPOWER because it was too similar to other registered marks containing”willpower,” and the hash symbol had no source-indicating distinctiveness, merely operating as a metadata tag for social media platforms.

The TTAB decision and TMEP provisions greatly narrow the registrability of hashtag marks, as well as their enforcement scope, such that it seems as if there is very little upside to applying for such a mark in most circumstances. An applicant does not need to register an otherwise-registrable mark as a hashtag mark in order to protect the mark if hashed. In such cases, a hashtag registration provides no more protection than a traditional character registration; the hash adds no additional layer of distinctiveness, just as it would not lend distinctiveness to an unregistrable word or phrase. Thus, an applicant should only apply for a hashtag mark in instances in which the non-hashed word or phrase lacks distinctiveness without the hash. If there is a case to be made for a traditional mark, the applicant should pursue that mark instead because traditional marks can be enforced more broadly.

If an applicant applies, however, only for a hashtag mark, then non-distinctiveness absent the hashtag will work to preclude the registrant from enforcing the mark in non-hashed situations. Even if the hashtag mark could be a mark on its own without the hash, the fact that the hashtag mark is either the first or only mark could result in a presumption against non-hashed distinctiveness–after all, why apply for a hashtag mark at all in such circumstances? It may also be more difficult to prove that non-hashed phrases, which in their non-hashed form are separated by spaces, infringe the hashtag mark. Imagine, for example, two competing phrases (the first example of which is a registered hashtag mark):

#lifeofabusyexecutive

Life of a Busy Executive

If the hash provides the distinctiveness for the first example (and perhaps in tandem with the lowercase and squished text), then presumably the second phrase without the hash (and with spaces) would not tread on that distinctiveness, working against a showing of consumer confusion and infringement. Of course, the holder of the hashtag mark could prevent identical use by competitors in commerce, but not similar non-hashed uses.

Emerging trademark law teaches that hashtag marks are extremely narrow–intentionally so–and as we’ve discussed before, hashtag marks are also greatly susceptible to fair use defenses. There appear to be few upsides to seeking such marks, at least without first trying for a traditional mark. So although trademark commentary as of late has focused on the trendiness of obtaining a hashtag mark, the more important question is whether it is worth doing so. In most cases, the answer will probably be “no.”

Toward the end of last week, a couple of friendly ironmongers (John Welch and Ron Coleman) had an interesting dialogue on Twitter, with some great insights about creativity and the law.

John noted that copyright’s requirement of “originality” is not the same as the requirement of “novelty” in patent law. Ron then weaved in some nice insights about creativity and trademark.

The heady discussion led me to rediscover a blog post of mine from more than nine years ago dubbed: The Paradox of Brand Protection: Knowing When to Hit the Consumer Over the Head.

If you can get past the congested text from this beginner’s first few weeks of blogging, it’s actually worth a complete read for the content, but for now, here’s an excerpt with some better spacing:

“I often remind branding professionals that trademark law rewards their creativity. Some seem to perk up with this subtle encouragement. After all, everyone likes to be rewarded, right? Well, one of the unobvious rewards for creativity comes in the prompt timing of when trademark ownership begins.

Being able to own and enjoy exclusive rights on “day one”—meaning, either the first day of use, or even before first use, upon the filing of a federal intent-to-use trademark application—is a big deal in the world of trademark and brand protection. In fact, timing can be everything.

Even a single day can be the difference between having the right to exclusivity and owning nothing at all (except perhaps, the losing end of a lawsuit and a pile of product and packaging ordered to be destroyed).

On the other hand, when rights are not available on day one, you may have an uncontrollable situation; one where competitors and others have an opening to copy or mimic before enforceable rights attach, and in some cases, these actions can make it difficult, if not impossible to obtain exclusive trademark rights at all.

So, the timing of when trademark rights are acquired is quite important, and those in the business of creating brands play an important role in when those rights may come to be.”

Those remarks aren’t ideally suited for the character limit in Twitter, but I’m thinking they reinforce Ron’s point that priority of trademark rights can be impacted by creativity/novelty.

As to my above remarks about federal intent-to-use trademark applications, I’m also mindful of this little dialogue shared with Ron a few years back, but nowhere near nine years ago.

So, the good news for the day is that the law, especially intellectual property law (copyright, patent, and trademark) does reward creativity, in a variety of ways, and each in their own way.

We’re looking forward to continuing this discussion, among many others, with those interested, at the upcoming Meet the Bloggers XIV unofficial INTA event near INTA in Seattle next month.

During the official portion of the INTA program, I’ll be reflecting on the impact of a creative legal theory that consumed lots and lots of lawyers’ hours (billable/non-billable) for a quarter century.

And, finally, let’s not forget about Duey’s little friend, right over here:

 

 

— Jessica Gutierrez Alm, Attorney

Twitter, the social media giant, is being sued by its internet cousin, TWiT.  TWiT, which initially stood for This Week in Tech, is a netcast network providing audio and video tech-related content.  TWiT owns the registered service mark TWIT for visual and audio entertainment performances.

According to the Complaint, TWiT founder Leo Laporte and Twitter co-founder Evan Williams had some discussions about the similar brand names in the mid-2000s.  The Complaint is available on Scribd, courtesy of TechCrunch.  In 2007, Laporte invited Williams on TWiT’s net@night show to promote Wiliams’s new company, Twitter.  Laporte alleges that although the two founders recognized their companies’ similar sounding names, at the time, they provided entirely different platforms—Twitter was text-based microblogging, and TWiT was video and audio streaming and downloading. The two founders apparently agreed informally that their companies would continue to coexist on their respective platforms.

Now, after ten years and still no formal agreement, Twitter is planning to launch original video streaming content.

Last year, TWiT sent a letter demanding that Twitter abandon its planned expansion into video content.  The parties’ subsequent attempts to resolve the dispute without legal action apparently have not been successful.

TWiT alleges twelve causes of action in total, including infringement of the TWIT mark.

Perhaps the moral of this story is: put it in writing (preferably more than 140 characters).  Presumably in Twitter’s early days, no one could have foreseen the future success of the social media platform and an eventual expansion into video content.  But maybe TWiT should have sought something more than a handshake coexistence agreement.  What do you think?

While many of us are working our way through the flood of thought-provoking analysis of Matal v. Tam, I’m taking a break with some lighter fare, namely, covfefe. In case you missed it, the viral non-word “covfefe” was born out of a supposedly meaninglessly typo (perhaps a misspelling of “coverage”) in one of President Trump’s early morning tweets (alternatively, some suggest that covfefe has a secret meaning known only by a “small group” of officials–stay tuned!)

Mere hours after President Trump’s tweet came the predictable flurry of opportunistic trademark applications.  For example, only 3 hours after the tweet appeared, the first “covfefe” application was filed for COVFEFE COFFEE for various coffee-related goods.

As of now, there are 32 applications pending at the USPTO to register a mark containing the word “covfefe.”  Although many of them are filed with an intent-to-use basis, there are also some interesting applications that claim actual use in commerce. For a couple examples, see the following:

  • COVFEFE for an odd variety of goods including “Party favor gift boxes sold empty”; “Nylon flags”; “Swimming floats”; and “Christmas tree ornaments.”  The specimen of use is an Amazon.com product page showing six empty “Covfefe” treat boxes for the bargain price of $99 plus $4.49 shipping.  (You would think some treats would be included for shelling out over a hundred bucks!)
  • COVFEFE for “sandwiches” by the applicant Seattle Biscuit Company.  The specimen is humorous but also a bit disconcerting — it is a photograph of a restaurant’s “specials” menu for various types of biscuits, most of which sound delicious except the “Covfefe” biscuit, which is described only as “???” for 10 bucks. Not sure if I would be adventurous enough to try that mystery biscuit.

As we’ve written before (for example, here and here), it is common to see a rush to register trending or viral terms. But such efforts are usually unsuccessful and often arise from a misunderstanding of trademark law, perhaps the thinking that merely filing the first application would confer exclusive rights over a popular term. Trademark registrations are not simply awarded to whomever is the quickest to file an application. Among the many requirements for registration, there are two hurdles that most often block the “trending term” applications.

First, registration requires that the applicant demonstrate actual use in commerce, i.e., use of the applied-for mark in connection with the sale of goods or services. This of course requires that the applicant have the capacity (and willingness) to operate a business to make such sales. Many trending-term applications die after the applicant fails to submit a proper statement of use and specimen of use.

Second, the applied-for term must function as a trademark, i.e., it must point uniquely to the applicant as the source of the applicant’s goods or services. This is a particularly difficult showing in the trending-term context as such terms are inherently used by many third parties. This hurdle blocks many trending-term applications. The USPTO frequently concludes that such trending terms are merely ornamental or merely convey an informational message, and do not function as a trademark that points to the applicant as the unique source.

In addition, as a practical matter, the viral popularity of a certain trending term is typically short-lived and tied to some recent event or circumstance, rather than being tied to the applicant’s goods or services–thus such popularity is unlikely to provide sustained commercial benefit to the applicant. Overall, rushing to adopt and register a trending term is usually not the best branding strategy, both as a legal and practical matter. What do you think?

 

By way of follow-up to Tim’s and David’s recent discussions about Rio2016 and related U.S. Olympic Committee trademark enforcement issues, it appears that a local Minnesota carpet cleaning business called Zerorez, is poised to press the issue of the USOC’s overreaching trademark policies by asking the federal district court in Minnesota to confirm it may lawfully post on social media platforms like Twitter and Facebook, comments such as these:

  • Congrats to the 11 Minnesotans competing in 10 different sports at the Rio 2016 Olympics! #rioready;
  • Are any Minnesotans heading to #Rio to watch the #Olympics? #RoadToRio;
  • There is no substitute for hard work. -Thomas Edison #TeamUSA is a great example of hard work paying off;
  • Let the rumble in Rio begin! From badminton to BMX, Minnesotan Olympians are at the #Rio2016 Olympics. Go #TeamUSA!;
  • St. Cloud native Alise Post is an #Olympian competing in the #Olympic BMX events today. Follow her at @alisepost11; and
  • Good luck to our 11 Minnesota Olympians competing in #RIO2016.

Do you think the USOC has some dirty carpet to be cleaned, once and for all?

Go #TeamZerorez!

UPDATE: Check out Brad’s interview on Kare11 here!

-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.

 

It’s rare that we focus on descriptions of goods or services here, but one of the most common reasons that a trademark for a brewery or winery is refused registration at the Trademark Office comes down to the description of services.  “Brewery services” and “winery services” are popular descriptions often used by new entities or producers who are in the planning stages.   The Trademark Office generally will only question the services once a specimen has been provided that does not clearly link the mark to brewing or making wine for others, rather than just for its own beer or wine.  The “brewery services” description was actually deleted from the Trademark Office’s Acceptable ID Manual in 2013, and replaced with “beer making and brewing services [for others]” as an acceptable description.  Certainly there are contract brewers and custom crush production facilities that make beer or wine for other breweries.  From what I heard at the Craft Brewers Conference earlier this month, we may begin seeing a trend towards consolidated production facilities.

When this refusal is made, the applicant who’s only making beer and wine for their own labels often finds themselves in a Catch-22:  they may be stuck with the services shown on the submitted specimen or at least what was available as of the filing date of the specimen.  Clever and creative amendments to the description of services can help salvage such applications from the perils of these requirements.

To determine what constitutes a “service,” the Trademark Office has established the following criteria:

(1) it must be a real activity;

(2) it must be performed to the order of, or for the benefit of, someone other than the applicant; and

(3) it must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service.

Another “service” often mentioned in applications of late involves a claim for “social networking services” where the applicant has provided a screenshot of their Facebook(R) page or a Twitter(R) feed to show use.   In a recent TTAB decision involving the florist FTD, the Board determined that merely using a social networking page as advertising for its own benefit and therefore does not amount to providing “social networking” services for others.   In a significant update to the Trademark Manual of Examining Procedure in April 2016, the Trademark Office added at TMEP 1301.04(h)(iv)(C):

Some applicants may mistakenly mischaracterize their services as “social networking” because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for “online social-networking services” and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social-networking services since it does not demonstrate that the applicant is providing these services.

Value is most often found in the performance of services for the benefit of another, and that’s true for trademarks, too.

Emojis – those cute images you may find in a keyboard on your Android or iPhone device – have changed the way many people communicate thoughts, ideas, feelings and concepts.  They can add a certain level of pizzazz to an otherwise ordinary text message, Facebook post, or tweet.  And, if I may borrow a line from a more famous Martha, they certainly are “a good thing.”  For Apple/Macintosh fans, I always was fond of the Zapf Wingbats font – so you might call me an early adopter of this phenomenon.

Emojis have been accepted as part of the Unicode – the computing standard for text.  But each platform has a different expression of that Unicode.

So what about when emojis, or even glyphs, are used as part of an advertisement?

We like to reference billboards in our posts here, so take for example this use:

deadpool-emoji-billboard-pic

First of all, what is that?

Skull Poople?

A Super Bowl 50 reference?

Death to Poopy Face L (did I miss the others? and an ode to Death to Smoochy, one of my favorite Robin Williams movies)

Ohhh Dead Pool.  Like DUH.  (Insert sarcastic emoji).  And there is a pool, or at least a guy swimming in a pool, emoji.

Adweek last week called this billboard “so stupid it’s genius.”

We have written before on the use of emoticons and rights associated with it, but this was one of the first examples that I’ve using emojis as part of commercial speech.  So who owns the “skull” and “poo” emoji?

Well, like most legal questions, the answer is:  it depends.  Because emojis are part of the Unicode, their expression is dependent upon the platform in which the viewer sees the emoji.  An emoji viewed as part of an iMessage is different than one on an Android device or one in a tweet or one on Facebook or in your Google chat.  Because of that, it’s important to consider potential copyright issues before using this in an advertisement.  Assuming this was not a permissive use, the Dead Pool example shown may not qualify as a fair use of the skull or poo emojis.  Fair use is a subjective test that considers:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

It’s clearly a commercial use and may be considered to take the whole of the copyrighted work, but whether it’s effect of the use upon the potential market for or value of the copyrighted work (to the extent it is one) remains to be determined.

Is life in 140 characters or less moving us into a glyphful culture?  Bachelor Farmer recently launched a new cafe with no name but cleverly and brilliantly branded with a unique logo from iconography (designed by our good friends at Capsule), a logo that has even spurned a hashtag.

bachelor

Maybe once again Minneapolis’  prince, The Artist Formerly Known As Glyph, who’s playing sold out shows at Paisley Park tonight, was well ahead of the times.  Sort of surprisingly, with the benefit of 15+ years, there’s an article about how to write his glyph in Unicode.

Debbie Laskey, MBA

These days, as newspapers and magazines are on the wane, it seems as if anyone who can write has become an online journalist to promote his or her area of expertise. In social media lingo, the title is now known as a “blogger.”

According to Wikipedia, “A blogger is a person who keeps a blog as a major activity in his or her life…Many blogs provide commentary on a particular subject; others function as more personal online diaries; others function more as online brand advertising of a particular individual or company. A typical blog combines text, images, and links to other blogs, Web pages, and other media related to its topic. The ability of readers to leave comments in an interactive format is an important contribution to the popularity of many blogs.”

Since a blog is an important element of an overall social media marketing plan that may include sites such as Facebook, Twitter, LinkedIn, Instagram, and Google Plus, it’s important to consider how the blog’s theme and content reflect a business’ or individual’s brand. Does the blog’s voice reflect the brand in a consistent manner? And, most importantly, who reviews the content before posting it live? Does only the Marketing Department review the content? Or, do the Public Relations, Technology, and Legal Departments also review the content?

There are some actions you can and should take to protect your content. First, set up daily alerts with Google Alerts and TalkWalkerAlerts with keywords such as your brand or brands, business name, and blog title. This way, you will receive immediate notification when and/if your content appears on an unknown website. Second, check out the US Government’s copyright site to answer a myriad of questions about copyrights for online content. And third, make sure to add a copyright symbol at the end of all blog posts and on all web pages.

In the words of Oleksiy Synelnychenko of IP WatchDog, “Under the DMCA or Digital Millennium Copyright Act, all content published online is protected under copyright law [because] any content, no matter the form it takes (whether digital, print, or media), is protected under copyright law.”

So, keep up the great writing, aka, blogging – just do your due diligence to protect your content.

— Jessica Gutierrez Alm, Attorney

Google changed its logo this week, and the Internet is not happy about it. In the new design, the name appears in thicker, cleaner letters. Specifically, the new design eliminates serifs—the little tails at the bottom of each letter in many fonts, like Times New Roman.

Google’s new logo and small icon image feature wider text, without serifs, and more rounded, geometric letters. Compare to the old logo and lowercase ‘g’ icon.

The announcement Tuesday, featuring a short animation sequence, revealed changes to both the primary “Google” name, as well as the small icon symbol. Google stated that the change would allow for better transitioning among various platforms and interfaces. The new font may shrink easier and translate on different screens better than the old font.

It’s the first time the company has made a major change to its logo in several years. For the most part, it seems design and branding experts are hailing it as a sleek, modern, and much needed redesign. Graphic designers have noted that the new logo, with its emphasized circles, has a friendlier vibe. The lack of serifs suggests a more modern feel, but the new logo retains pieces of its predecessor with the crooked ‘e’ and iconic color scheme.

The social media public, however, feels a bit differently about the change.

 

 

I’ll be honest. The new design does remind me a little too much of refrigerator magnets. What do you think? Sleek new design, or did Google miss the mark on this one?