What happens if you use a famous brand in a hashtag on social media platforms? Can you register a popular #hashtag as a trademark? The answer is: #itdepends
Originating from Twitter, hashtags have gradually become a ubiquitous phenomenon amongst both consumers and companies when communicating on social media platforms such as Facebook, Twitter, Snapchat, Instagram, etc. Businesses have discovered that hashtags are a powerful marketing tool that allows consumers to interact with the companies that make their favourite brands or products and directly engage in online marketing campaigns. The companies then encourage users to talk about their brands and create catchy slogans while turning them into popular #hashtags.
With the growing influence of hashtags, large companies such as Pepsi have started to trademark their popular hashtag slogans (eg Pepsi’s EU trademark “#sayitwithpepsi” registration no. 014653968, or MHCS’s “#moetmoment” international registration no. 1271942) to protect themselves against competitors trying to freeride on their popularity by using the same hashtags and thus attracting consumers’ attention.
Hashtag trademarking in the US and Europe
Hashtags are even more popular in the United States. The US Patent and Trademark Office (“USPTO”) has already received more than a thousand applications for hashtag trademarks. The boom has even inspired the USPTO to update its Trademark Manual by adding specific guidelines. Section 1202.18 of the Manual is explicitly dedicated to hashtag trademarks.
Despite the growing number of hashtag trademarks, uncertainty remains regarding the registrability of hashtags as trademarks. Some say that as hashtags are merely metadata – a hyperlink leading to other online content – their use should not be restricted or monopolised. There is a clear similarity here to the keywords used in search engines to generate links to designated website content, such as Google’s AdWords. The use of famous or well-known trademarks as search keywords by competitors was examined by the Court of Justice of the European Union on multiple occasions1 before at least some of the related legal questions were answered.
Trademark infringement cases
Nevertheless, legal uncertainty lingers over the question of whether the use of a registered (famous) trademark in or as a hashtag (eg#Nike or #coke) when creating online content can be seen as illegal, ie as trademark infringement (or possibly unfair competition). Indeed, the first trademark infringement cases based on the (unlawful) use of branded names in hashtags are starting to emerge, perhaps not surprisingly, in the United States. In Fraternity Collection, LLC v. Fargnoli, the district court concluded that “hashtagging a competitor’s name via social media could deceive customers for purposes of a false advertising claim”2. In other cases3, however, the US courts have adopted a different approach, concluding that hashtags are incapable of functioning as an indication of source and that even a distinctive or renowned trademark used in a hashtag does not, in the eyes of the consumer, establish a trademark use. This approach is interesting in view of the fact that the USPTO explicitly acknowledges hashtag trademarks and allows their registration, subject to certain conditions.
It will be interesting to see what the Court of Justice of the European Union will have to say about hashtagging well-known brands, especially in cases where there is a clear intention to free-ride or profit economically from the hashtag. A strong argument in support of brand owners is the fact that the viral use of an originally distinctive mark through hashtags not originating from the brand owner can lead to the mark becoming generic and thus losing the basic trademark function – identification of source of origin. These are the potentially disastrous effects of the unrestrained use of hashtags referring to a distinctive brand.
Even if in a particular case the use of a hashtag that includes a famous trademark may not be seen as a use of trademark in the course of trade, it could still be perceived as unlawful under unfair competition laws.
The legal implications arising in connection with the use of hashtags outlined above are a typical example of technology being one or more steps ahead of the law. Some questions are waiting for the courts to answer them, but three things are clear:
- Companies should seek trademark protection for popular slogans related to their business and becoming viral through hashtags.
- Companies should monitor competition and trending hashtags for possible hashtag hijacking (using brand names in hashtags for unfair purposes).
- Companies should monitor the use of their brands in hashtags for the purpose of avoiding dilution and loss of distinctiveness.
… in other words: #dontoverhashtag (!)
Hashtagging a competitor’s brand via social media could deceive customers and be detrimental to the brand owner. Moreover, extensive viral use of one’s brand in hashtags may lead to dilution and loss of distinctiveness of the brand. These factors encourage companies to register their hashtag trademarks, although uncertainty remains regarding the registrability of hashtags as trademarks. Some say that as hashtags are merely metadata – a hyperlink leading to other online content – their use should not be restricted or monopolised.