Recently, the Coca-Cola Company sought to register two hashtags as trademarks: #cokecanpics and #smilewithacoke. For those who may wonder why: various online social networking services (like Twitter, Instagram, and Pinterest, to name a few) enable users to search a word or phrase preceded by a hash or pound sign (#) to identify postings on a specific topic. Hashtags are used to promote brands, campaigns, ideas or events, and trending topics can be identified by frequency of use in their respective online communities.
Coca-Cola is not a pioneer in this area; other companies have successfully registered hashtags with the USPTO. However, the hashtag’s legal status remains murky, and is considered a leading legal issue facing marketers in this new year. Plus, as with any trademark, registration can be a lengthy and potentially expensive undertaking. So, is it worth registering, particularly when its legal status is unclear?
To start, a hashtag (i.e., not just the hash sign, but the hash sign followed by a registerable word or phrase – the hash sign alone would likely need to be disclaimed as it generally adds no source-identifying significance) can be registered just like any other mark, and the traditional rules apply.
- The hashtag can’t be generic (for example, a sandwich shop can’t trademark “#sandwich”);
- A hashtag cannot include a mark that is already in use (for example, if anyone but Coca-Cola tried to register #cokecanpics the trademark application would be rejected);
- The class of goods or services affiliated with the hashtag must be specified in the application (so, one party can’t prevent another party from using a similar hashtag in connection with unrelated products or services); and
- The trademark application must include acceptable specimens of use (for example, instances of the hashtags featured on packaging, labels, or in stores, catalogues or webpages where the product is sold).
Twitter’s Trademark Policy is consistent; a corporate name cannot be legally used by other Twitter users just because they throw a hashtag in front of it. “Using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation.”
However, we enter a grey area when users use those trademark-protected words or phrases, even if they are subject to applicable trademark law: “[a]lthough Twitter may review reports of confusing keywords, we may not disable keywords in every case.” This, after all, is the very basis of social media; a collaborative forum for sharing brands, campaigns, ideas or events. By registering a hashtag, just as with any other mark, a company could prevent competition from using the same or similar hashtags, but it does not prevent social media users from using it (and in some cases, in a way that serves against a company’s interest). Also, US trademark law permits others to use trademarks without authorization from the trademark owner for “nominative use,” in situations where that unauthorized user is using the mark to accurately identify the product. For example, an individual who uses the hashtag #cokecanpics in connection with photos of actual cans of Coca-Cola may be protected from liability. See, e.g., New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992).
The use of trademarked hashtags in platforms based on the culture of widespread sharing raises big questions for brands struggling to understand intellectual property rights and boundaries, particularly with respect to where intellectual property laws, and laws of privacy and publicity, may or may not apply.
So, can Coca-Cola register its two new hashtags as trademarks? Certainly. Is it worth the time and expense for Coca-Cola to do so? That depends on how Coca-Cola plans to use the hashtags. Realistically, there is no guarantee that social media campaigns will generate increased revenues, even if the campaign is a successful one. That said, if there is an intellectual property interest in the mark (i.e., the mark has value – such as use on packaging and marketing materials) beyond just a temporary hashtag on Twitter, registration with the USPTO may certainly be a worthwhile effort.