It is commonplace today for a business to promote itself and its brands through the use of hashtags. A hashtag is a word or phrase preceded by a hash or pound sign (#) that is used to identify a particular message on a social media site. The message at is- sue may be purely informational, it may be as short and simple as the mention of a brand name, or it may be part of a promotion or marketing campaign that seeks to drive consumer involvement on social media. For a business engaged in the social media space, hashtags can become an important, if ephem- eral, marketing asset. Naturally, the question arises – can a business protect the hashtags it uses in en- gaging its consumers? The short answer, unsurprisingly, is “It depends.” As discussed be- low, and as seen in a recent federal district court decision, Eksouzian v. Albanese, No. CV 13-00728- PSG-MAN, 2015 WL 4720478 (C.D. Cal. Aug. 7, 2015), there can be significant hurdles to protection of a hashtag as a trademark.
As any social media marketer can tell you, a busi- ness must tread carefully with its use of hashtags. On sites like Twitter, #hashtags are interconnected – that is, a Twitter user can easily access other tweets using a given hashtag by simply clicking on the hashtag in another tweet. There are numerous sto- ries of hashtags being hijacked to disrupt or protest a message, or simply for purposes of entertainment, by including the hashtag in a tweet with its own humorous, contrarian, or critical commentary. It is also not uncommon to hear of a brand owner failing to understand the meaning behind a trending hashtag and using the hashtag in a way that reflects negatively on the brand.
One of the primary assets of a brand is that the brand owner is able to control the brand’s message and develop recognition and goodwill that will keep consumers interested in purchasing a product or service. Given the nature of hashtags, a business must balance the value of social media engagement with the risks that the social media engagement can bring. But if a business is going to engage with its consumers through social media, it important for that business to understand what it can and cannot protect through trademark law.
A trademark is a word, phrase, symbol, design, or other designation that identifies and distinguishes the source of the products or services of one party from those of others. If a hashtag successfully per- forms this source identification and distinguishing function, then it can serve as, and be protectable as, a trademark. When a business uses its existing brand name as a hashtag (#brand), such use will typically be protectable under trademark law as an extension of that existing brand.
On the other hand, it will be difficult for a business to appropriate a common word or phrase as a trademark merely by use of it as a hashtag. Many hashtags are informational in nature, or used by a wide range of individuals and businesses. Consum- ers are less likely to recognize these types of hashtags as identifying a single source of products or services, and if the hashtag cannot distinguish the source of a product or service from others, then it simply fails to function as a trademark.
Hashtags have been in existence long enough that the United States Patent and Trademark Office (USPTO) has produced a section of the Trademark Manual of Examining Procedure (TMEP) specifi- cally addressing “Hashtag Marks.” TMEP § 1202.18. In short, the USPTO position is that add- ing a hashtag to an unregistrable word or phrase will not convert it into a registrable trademark, but a mark that contains other registrable words, phrases, and/or design elements may be registrable. In other words, if consumers are likely to recognize the hashtag as a trademark, identifying the products or services of a single source, then the hashtag mark should be registrable (although the applicant will need to disclaim exclusive rights in the “#” charac- ter, as it is considered descriptive).
The analysis to determine whether a hashtag is pro- tectable as a trademark parallels the analysis of domain name trademarks. A domain name, by itself, serves as an Internet address; there is no inherent source-identifying function. Simply adding a “.COM” to a common word does not create a pro- tectable mark. See In re Oppedahl & Larson LLP, 373 F.3d 1171, (Fed. Cir. 2004) (finding PATENTS.COM merely descriptive of “computer software for managing a database of records and for tracking the status of the records by means of the Internet”). But as with hashtags, courts and the USPTO have recognized that when a domain name serves as an identifier of the source of goods or ser- vices, it can serve as, and be registered as, a trademark. See generally TMEP § 1209.03(m).
Whether or not a hashtag will be protectable as a trademark will depend on the hashtag/mark itself, the nature of the products and services, and the cir- cumstances of the use. But even if a business believes that it has a hashtag that can function as a trademark, it may encounter a number of obstacles in protecting and enforcing its trademark rights.
As alluded to above, the federal district court in Eksouzian v. Albanese recently issued a decision indicating that the courts may not be well equipped to deal with hashtag trademarks. The Court, in de- termining whether there had been a violation of a settlement agreement between the parties, stated that, “Plaintiffs did not breach the [Settlement Agreement] through their use of "#cloudpen," be- cause hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of them- selves. 2015 WL 4720478, at *8. The trademark discussion in Eksouzian was somewhat tangential to the issue being litigated, namely, whether there was a breach of the agreement. Perhaps the Court’s statement was just poorly phrased, and it meant to say that the use of “#cloudpen” was not a use that consumers would recognize as a trademark. But the case does demonstrate a potential hurdle to en- forcement of trademark rights in a hashtag.
Even with traditional trademarks, mark ownership does not grant the owner the right to control all such uses of the mark. For instance, if a trademark is also a descriptive word or common symbol, the trademark fair use defense will allow others to use that word, phrase, or design in its descriptive, non- trademark sense. This is reflection of the fact that trademark rights are obtained through to use of the trademark in connection with specific products or services. Due to the fluid nature of social media, and hashtags in particular, it would seem that there is a greater likelihood that another’s use of hashtag mark qualifies as a fair use, or is simply not com- mercial in nature.
Finally, a trademark owner, to obtain remedies un- der a traditional trademark infringement claim, must prove that another’s use of the hashtag trademark creates a likelihood of consumer confusion, mis- take, or deception as to source, sponsorship or approval of the products or services. The “likeli- hood of confusion” test is very fact-specific, addressing a number of factors such as the similari- ty of the marks, the similarity of the goods and services, and the trade channels of the parties’ re- spective products and services. So even if a third party uses another’s hashtag mark in the promotion of its products and services, it must prove that con- sumer confusion is likely to prevail on a trademark infringement claim.
Protection of #hashtag trademarks and enforcement of those trademark rights in #hashtags are fact- intensive inquiries, and this article does not address other related claims (such as unfair competition, false advertising, and trademark dilution) that may be available to a party due to social media activities of others. Due to the inherent nature of social me- dia, a party overreaching its trademark rights, or seeking to enforce an unprotectable trademark, may be exposed to criticism and backlash that causes additional issues for a business and its brands. For this reason, it is important to fully consider these issues, and consult with a trademark attorney where necessary, to ensure that your #hashtags are protect- ed, and your brand’s social media engagement obtains positive results.