The ever-evolving diversity of social media has brought challenges and uncertainty to many aspects of intellectual property law, and the availability of trademark protection for hashtags is no exception. A focus on the nature and use of hashtags in social media and a careful application of fundamental principles of trademark law points the way to answers.
“Hashtag” has been defined as a “word or phrase preceded by the symbol # that classifies or categorizes the accompanying text (such as a tweet).” It is a form of metadata that, when clicked on, takes the user to another place on the Internet. Hashtags help Internet users organize and navigate Internet content by particular subject matter.
Those hashtag-identified subjects can, of course, include commercial enterprises that seek to sell goods or services under trademarks and service marks. Social media increasingly drives commerce, and hashtags can draw consumers to commercial websites where goods and services may be purchased. That fact has led many businesses to seek trademark protection for their hashtags – and object to others’ use of their trademarks in hashtags.
Disagreement has arisen among the United States Patent and Trademark Office (“PTO”), the courts, and commentators about whether hashtags can be protected at all. A trademark, of course, is a source-identifier – a “word, name, symbol, or device, or any combination thereof” used “to identify and distinguish … goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.” 15 U.S.C. § 1127(a).
In its Trademark Manual of Examining Procedure (“TMEP”), therefore, the PTO states that a mark consisting of the hash (or “pound”) symbol (#) or the word HASHTAG can only receive trademark protection, and be registered, if it serves as a source-identifier. The PTO holds that such hashtag marks “generally” do not qualify as source-identifiers – and therefore as trademarks – because they usually function “merely to facilitate categorization and searching within online social media.” TMEP § 1202.18.
The PTO, however, does not take an absolute position on whether hashtag marks are protectable. In fact, the PTO has accepted a number of hashtag marks for registration, while rejecting others. Examples of marks accepted for registration include “#HOWDOYOUKFC” (KFC Corporation, for restaurant services), “#BLAMEMUCUS” (used in connection with MUCINEX brand medications), and “#BESTFEELINGS” (used by S.C. Johnson for air fresheners). In each of these cases, the PTO concluded that the specimen submitted in support of the registration application evidenced use of the hashtag mark as a trademark, not merely as a means of facilitating on-line searching. Each specimen prominently displayed the hashtag mark in a non-Internet context (on endcaps or signage, for example) in connection with the goods or services being offered.
On the other hand, the PTO has rejected a number of registration applications for hashtag marks. For example, “#TAKETHERIDE” for beer was rejected on the ground that the mark, as displayed on the specimen, merely evidenced use as a hashtag for online social media. (It bears noting that it is difficult to discern the difference between the use of the hashtag mark on this specimen and the uses in the applications cited above that were allowed.)
The PTO’s treatment of hashtag marks is similar to its treatment of domain names, which it generally regards as addresses on the Internet but which can sometimes serve a source-identifying function. A domain name will be registered only if the “mark, as depicted on the specimen, [is] presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a website.” TMEP § 1215.02(a).
While the PTO holds that hashtags can sometimes qualify as protectable trademarks, at least one court has suggested that hashtags may never be protectable as trademarks. In Eksouzian v. Albanese, 116 U.S.P.Q.2d (BNA) 1972 (C.D. Cal. 2015), the district court considered whether the use of “#cloudpen” violated a settlement agreement that prohibited the use of “CLOUD PEN” as a mark. The hashtag was being used in Instagram posts and in promotional contests encouraging consumers to use the hashtag. The court held that the “#cloudpen” hashtag was being used functionally, to direct consumers to the location of the promotion.
Although the court quoted the TMEP section cited above that recognizes the possibility of hashtags serving as source identifiers, it went on to make a much broader assertion: “hashtags are merely descriptive devices, not trademarks… in and of themselves.” Id. at 1979. That statement has caused a significant stir in the trademark world, especially because it is one of the few cases thus far to have considered the protectability of hashtags as trademarks.
Some commentators have agreed. In “#CANHASTAGSBETRADEMARKED: Trademark Law and the Development of Hashtags,”for example, the author argues that hashtags should not be afforded protection as trademarks because consumers do not understand them to be source identifiers and they do not cause customer confusion.
The “never say never” philosophy would question whether it is at least premature to judge about whether consumers never afford hashtags source-identifying significance. Similarly, it is fair to question whether a rule that would effectively eliminate the possibility of trademark protection for any mark with a “#” prefix should be established.
Suppose, however, that the question is not whether one can claim a hashtag as a trademark, but whether a trademark owner can stop someone else from using their trademark in a hashtag. In other words, when does a competitor’s use of someone else’s trademark in a hashtag constitute infringement?
Of course, it is not unlawful per se to employ another’s trademark. It can be statutory fair use, if used in its descriptive sense rather than as a source-identifier (“apple” is a fruit as well as a brand of consumer electronics). See, e.g., KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004); 15 U.S.C. § 1115(b)(4). Using another’s trademark to refer to that other person’s goods or services – sometimes called “nominative fair use” – can also be considered “fair.” The courts have applied a few different tests, but they focus on whether the use of the other’s mark is likely to cause confusion and mislead the public about affiliation between the user goods or services and those of the trademark owner. See, e.g., Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010); Century 21 Real Esate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3d Cir. 2005).
The case law applying these analyses to hashtags is sparse. In Fraternity Collection, LLC v. Fargnoli, 2015 U.S. Dist. LEXIS 42120 (S.D. Miss. Mar. 31, 2015), the plaintiff’s ex-employee used plaintiff’s trademark, and a variation thereon, in hashtags for a competitive clothing line. The district court rejected the ex-employee’s motion to dismiss. Noting that the case had reached only the pleading stage, the Court wrote, “[t]he Court accepts for present purposes the notion that hashtagging a competitor’s name or product in social media posts could, in certain circumstances, deceive consumers.” Id. at *9. The case settled soon after this decision, so we do not know whether the “certain circumstances” the Court envisioned as warranting a finding of confusion existed.
This issue is reminiscent of use-of-competitors’-marks-as-keywords debate, represented by cases like Network Automation, Inc. v. Advanced Systems Concepts, Inc. 638 F.3d 1137 (9th Cir. 2011), Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, (4th Cir. 2012), and Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015) (2-1 decision), cert denied, 136 S. Ct. 1231 (2016). These cases reach inconsistent results whether genuine issues of fact exist on the likelihood that the challenged use of competitors’ trademarks as keywords in Internet advertising will cause customer confusion. The battleground seems to be the courts’ assumptions about the level of consumer sophistication: is there a factual issue whether an Internet shopper who types in one brand’s keyword will be confused if their search results bring them to a site for a competitor who used, or purchased, the trademark owner’s mark as a keyword. The courts also give different weight to “initial interest confusion”: does it matter whether the consumer’s confusion is quickly dispelled?
The debate over the use of competitors’ hashtags presents similar issues. The struggle to apply fundamental trademark law principles to the courts’ evolving understanding of how consumers and businesses use and understand hashtags will likely generate a variety of results in the courts for the foreseeable future.