Trade marks in social networks: the case of Coke's hashtag trade mark applications.

If it can work as a title,
can't a hashtag also
be part of a trade mark?

This Kat cannot confess to having been around professionally a decade and a half ago when trade mark jurisprudence sought to sort out the trade mark registrability of domain names. She is however delighted to be better placed this time in connection with the emergence of the hashtag (#) as a component of a trade mark. Her starting point is the premise that a company can create and use a hashtag-based slogan as a trade mark, in connection with certain goods or services, while also using the hashtag to drive online consumer traffic. The trade mark holder hopes that consumers will use the products identified by the mark, including the hashtag slogan; he can build upon the hashtag slogan to redirect users to the company’s website and social networks, where their brand allegiance can be reinforced. This is so because hashtags assist internet users by grouping entries into topics, searching for them and eventually sharing and accessing these contents. The functionality of hashtags was introduced by Twitter but has since been extended to other social media platforms, Facebook, Instagram, Pinterest (to name a few), and the to blogosphere as a whole.

Against this backdrop, it is instructive to consider two recent trade mark applications filed in the United States by the Coca Cola Company for 'soft drinks' in class 32, #cokecanpics TM no. 86480497 and #smilewithacoke TM no. 86480495. Three questions suggest themselves: (i) under what circumstances can a hashtag slogan be inherently distinctive, especially if the mark does not contain a previously registered mark as a component; (ii) if a hashtag slogan is found descriptive, is it still registrable upon proof of secondary meaning; and (iii) is it more appropriate to view such a mark as being simultaneously distinctive and functional?

More traditional
Coca-Cola marks

Inherent distinctiveness relates to the trade mark's capability to serve as a source-identifier. Distinctiveness must be assessed by reference to the mark taken in its entirety, the goods and services covered by the mark and the relevant public's perception of the mark. So, in the case at hand, the examination must consider message as slogan in combination with the hashtag symbol, which will pose a significant challenge to a finding of distinctiveness. In assessing inherent distinctiveness, and by analogy to the treatment of the .com portion of a trade mark based on a domain name, the hashtag symbol will likely be disregarded, whether by disclaimer practice or otherwise. The analysis will then focus on the remaining portion of the two marks; in our case ‘cokecanpics’ and ‘smilewithacoke’. It is possible to argue that, by including the registered trade mark COKE as part of each of these marks, each will be deemed to possess sufficient distinctive character (unless the marks are still deemed to be a mere advertising slogan—see below).

But let's assume that one or both of these marks are deemed to lack inherent distinctiveness. Or let's posit a situation where the hashtag-based mark consists only of common words, which are arguably descriptive of the goods and services for which protection is sought. In such situations, the only way to secure registration is to prove secondary meaning, based on well-recognized legal criteria for establishing the facts. The challenge to secure registration is even greater because slogans are often treated merely as a form of advertisement rather than a source identifier (indeed, this might be the case even if the hashtag-based mark includes a well-known registered mark).

Trade marks go social

Perhaps there is another way to view hashtag marks such as those above, based on the approach suggested by Judge Kozinski of the U.S. 9th Circuit Court of Appeals. In Plasticolor Molded Products v Ford Motor Co. Judge Kozinski proposed a middle ground solution between pure functionality and pure source-identification in relation to the use certain trade marks. Plasticolor sold floor mats bearing Ford's registered trade marks and designs without Ford's authorisation. Ford's distinctive signs were also placed by Plasticolor on the packaging of the floor mats without any disclaimer as to the origin of the goods or any indication of any connection to Ford. The judge considered that Plasticolor's use of the Ford marks would be perceived by the public not only as being “trade mark use”, but also containing a “functional element”, in that they were decorative.

As such, in his view, the court must balance trade mark protection against confusion with the doctrine of functionality (here the decorative function). This doctrine allows the copying of functional features to the greatest extent consistent within the purpose and scope of the Lanham Act, such that a trade mark can be copied as a functional feature. Judge Kozinski went further and distinguished between the likelihood of confusion produced by the functional copying of trade marks on the basis of whether it was undertaken at the point of sale or post-sale. He concluded that in the latter situation it is necessary to tolerate at least some confusion as to the source or sponsorship in order to allow for functional copying to take place.

So the question is: are we prepared to tolerate a likelihood of confusion, when the hashtag also serves a functional purpose, namely driving consumer traffic in the on-line world? The answer depends on whether the hashtag/trade mark contains a known trade mark. Circling back to the Coke's marks, we reiterate the assumption that the hashtag serves to direct consumer traffic to Coca-Cola’s social networks. Applying Judge Kozinki's ruling, Coca-Cola should tolerate the functional use of its marks by third parties on social networks, secured in the knowledge that the 'Coke' components of the mark enable the enforcement against confusingly similar trade mark applications. However if the hashtag cum slogan contains only common words, nevertheless it is registered based on secondary meaning, the trade mark holder will paradoxically perhaps have an easier time of enforcing its mark against third parties because of the lack of any other basis for asserting functionality in the mark.