Registered #hashmarks: Yes, No, or Maybe?

This Kat is yet to become viral on social media

Social media hashtags originally emerged as hyperlinks that allow platform subscribers to follow various communication threads, facilitate user search for specific subjects, encourage user interaction and categorise trending themes. Businesses soon followed suit by recognising a marketing and advertising opportunity provided by hashtags and started using them as campaign tools. Hashtags enable brands to not only promote their goods and services, share news and events, but also to track success of a certain campaign in real time and directly engage with the consumers, see here and here.

As it usual with emerging technologies and the law, the latter tends to lag in trying to adapt. This issue of the interconnection between hashtags and trademark law is twofold:

First, can a hashtag function as a trade mark? Can it be registered or even protected by trade mark law? Is registration necessary, beneficial, redundant or harmful?

Second, what happens when a trademark is used as a hashtag? Is such a hashtag enforceable? Will trade mark use as a hashtag on social media take the mark to fame or instead be its commercial pitfall?

Hashtag as a trademark

The United States Patent and Trademark Office (USPTO) in § 1202.18 of The Trademark Manual of Examining Procedure (TMEP) provides  that a mark consisting of variants of the term HASHTAG or the hash symbol may function as a mark only when such mark “functions as an identifier of the source of the applicant’s goods or services”. In other words, when a hashtag is merely used to reference or organise keywords or topics of information to facilitate searching a topic, i.e. not as a trade mark (see In re Safariland Hunting Corp.), it “adds little or no source-indicating distinctiveness to a mark" (cf. In re Hotels.com) and is deemed unregistrable. In this regard, the USPTO draws a parallel between a hashtag and a domain path.

Further, the UPSPTO reiterates that addition of the hash symbol to an otherwise unregistrable mark typically will not render it registrable. For example, when # is added to a merely descriptive or generic word or phrase, the entire mark must be refused.

Following the USPTO’s rationale, the usual well-established principles of trade mark law presumably apply to protection and registrability of a hashtag. Still, in a social media context, these principles might nevertheless gain a different flavour.  This means that successful hashtag trade mark applicants tend to demonstrate trade mark usage in a non-social media context, such as on their primary websites or advertising materials, e.g. #mychasenation and #saintalsforlife, rather than use of "a tag" function as an inherent feature of a hashtag.

Robert T. Sherwin argues that hashtags should not be protected by trade mark law at all “because of their nature as a grouping tool that encourages use by others cuts against the notion of protecting their status as intellectual property”. According to him, the symbiosis with consumer protection, which is part of the trade regime, is not compatible with how hashtags function in social media.

Sherwin further elaborates that trademark protection is not necessary and can even be harmful to free speech within social media and may lead to abusive litigation. In his words--

“granting trademark status to hashtags provides no legitimate advantage to a marketer that it could not already obtain through traditional (i.e., sans hashtag) registration. What it does do is arm companies with a weapon that would make it easier to bully social media networks and users into silence when these 'trademarked' hashtags spark viral discussions that go off the tracks.”

Trade mark as a hashtag

There is a fine line between #happymeal and #mcfailure

Derailed social media marketing campaigns are a true story. One of the most cited examples is McDonald’s McFailure. The #McDStories hashtag was released as part of a Meet The Farmers campaign. It took no time for Twitter users to start exploiting this hashtag for sharing their negative experiences in McDonald’s restaurants; here  are a few (very unsavoury!) sample tweets. Two hours later, when McDonald’s took their post down,  effectively admitting the failure of  #McDStories, more than 1500 people had already tweeted using the ill-fated hashtag.

Another possible scenario may be that a competing brand or a free-rider hijacks a popular hashtag. If a hashtag name constitutes or includes a registered trademark, at first glance it may be sufficient (without registration of a hashtag itself) to bring an infringement claim and establish consumer confusion of a competing use.

Complications might arise, however,  due to  the  degree of consumer sophistication that courts tend to attribute to internet users, see Public Impact v Boston Consulting. Further difficulties may occur when a hashtag name is used as a vehicle or a business model to sell goods or services via a social media platform or when protection of a registered trade mark does not extend to specific uses in social media.

Image credits: QuickMeme and Milchgeist