Considering the defendant’s use of the plaintiff’s trademarks in hashtags and other social media posts, a California federal court granted a preliminary injunction to halt the use.

Align Technology, maker of the Invisalign system, sells three models of the iTero scanner, used to take three-dimensional scans of a patient’s mouth to prepare the trays for the Invisalign system. The iTero scanner includes a protective, disposable, single-use sleeve that slides over and covers the portion of the scanning wand that is inserted into the patient’s mouth.

Strauss Diamond Instruments sells dental instruments and related goods, and began selling a MagicSleeve in August 2018. The sleeve was advertised to the same target customers who purchase Align’s iTero products, offering a washable, reusable alternative.

Align filed suit, alleging trademark infringement based on Strauss’ Facebook, LinkedIn, Instagram and YouTube posts, which were clearly branded as advertisements for the MagicSleeve.

In one example, two pictures depicted the MagicSleeve in use with a patient, with text reading, “If you are a digital scanner user, be prepared to cut your overhead down. Our brand new MagicSleeve is autoclavable and allows for a faster scanning time,” with a link for purchase. Five hashtags followed, including “#invisalign” and “#itero.”

Another social media post showed a picture of an iTero Element machine with a Strauss MagicSleeve on the wand and a link to Strauss’ website. The original image was actually created by Align and then copied by Strauss, which superimposed an image of its MagicSleeve on top of the wand.

U.S. Magistrate Judge Thomas S. Hixson granted Align’s motion for a preliminary injunction.

Applying the fair use analysis to the challenged hashtags, the court said Strauss’ use of Align’s marks did not qualify as a nominative fair use for two reasons.

“First, in some cases, Strauss used the marks to refer to its own product,” the court said. “Second, in all cases, Strauss used more of the marks than is reasonably necessary to identify the product.”

The hashtags were collectively being used to promote and describe the MagicSleeve, the court explained. “It is not credible to view the hashtags containing Align’s marks as referring to Align’s products (the foundational assumption of nominative fair use) and the other hashtags as referring to the MagicSleeve,” the court wrote. “They are all together references to the MagicSleeve.”

Further, none of the hashtags were reasonably necessary to identify Strauss’ product and did not serve any identification function, as “the use of the marks in the hashtags is never reasonably necessary to identify the MagicSleeve.”

The iTero image used by Strauss suffered from a different problem, the court said. A copy-and-paste from Align’s website, with the MagicSleeve added on, suggested association or affiliation and that the MagicSleeve is in some manner endorsed or authorized by Align, Judge Hixson wrote.

Determining that the totality of factors weighed in favor of finding a likelihood of confusion—with the use of identical, strong marks and knowledge that the defendant was using the plaintiff’s marks—the court found Align likely to prevail on the merits of its trademark claim.

“Under the circumstances, a reasonable person would be confused into thinking that Align has endorsed or sponsored, or given its approval or authorization for, the MagicSleeve,” the court wrote.

The court declined to enjoin the sale or advertising of the MagicSleeve, but did halt Strauss from infringing Align’s registered marks for iTero and Invisalign.

To read the order in Align Technology, Inc. v. Strauss Diamond Instruments, Inc., click here.

Why it matters: The use of a competitor’s hashtags poses a complicated situation for advertisers. As Judge Hixson explained, one of Strauss’ ads presented “a closer call” with an image of an individual getting their mouth scanned using an iTero scanner with a MagicSleeve on the wand. The textual sentences in the ad that referenced Align’s mark (“If you are an iTero user, be prepared to cut your overhead down. Our brand new scanner sleeve is autoclavable and allows for faster scanning time.”) are a “classic case of nominative fair use,” the court said. But the hashtags—including #itero, #iteroscanner and #iteroelement—still constituted a use of Align’s marks beyond what was reasonably necessary to identify Strauss’ product. “To see why, imagine this ad in two versions, one with the challenged hashtags and one without them,” the court said. “Does the version with the hashtags better identify Strauss’s product? No. The identification of the product comes from the picture of it being used and the textual sentences.”