July 18, 2017
Can you remember a time when the hashtag symbol “#” did not have the special meaning that it has today? While there was a point in time when using the hashtag symbol in a sentence or phrase in the manner that it is used today would have made no sense to a reader, those days are long gone. Then, the symbol was most commonly referred to as the “pound sign” or “number sign,” despite its official name, the “octothorpe.” The use of the hashtag symbol, “#,” to collect and organize news and other types of information associated with a specific topic, subject, or label appears to have begun back in 2007. It is said that Twitter initially rejected this idea but later decided to adopt it with great success. As it stands now, everyday millions of Twitter, Facebook, Instagram, and other social media sites are able to categorize and organize the trends and postings of their users who incorporate a “#” with their posts. Also, consumers and/or fans of a particular show, book, brand, or trend are able to receive updates by locating and following these hashtag posts. The evolution of the hashtag in its current use and meaning today is a prime example of how simple ideas can sometimes make a huge impact on an industry.
It is no wonder that a phrase or word associated with a hashtag symbol “#” may also be eligible for trademark protection. In the U.S. alone, there were over a thousand trademark applications filed for specific hashtags in 2015. Notably, not every hashtag usage will qualify as a legitimate trademark. To be eligible for registration, the hashtag mark application cannot be a generic phrase (ex. #party or #love or #baby). Rather, the hashtag mark application must consist of a unique use of a word or phrase that can be clearly associated or tied back to a single source. The source may be any type of entity including a corporation, non-profit organization, or an individual applicant. In this sense, the United States Trademark Office applies the same standards in determining the eligibility for an application that includes a hashtag mark as any other application. For example, before it could be eligible for official registration based on actual use, the slogan “Just Do It”® had to be clearly associated by the general public with the source identifier, Nike, Inc. Thus, this slogan was not just a generic phrase associated with multiple companies or individuals, but had a unique meaning and association in the minds of public consumers.
The same is true for marks that include a hashtag symbol. An applied for mark having a hashtag must be able to show that the word or phrase is clearly associated with a source and not just a popular phrase or slogan.
Several companies have applied for and successfully registered various words or phrases preceded by the hashtag symbol. Companies such as Pepsi, L’Oreal, and many more, have all successfully registered marks associated with hashtags. For example, Pepsi owns #sayitwithPepsi (Reg. No. 5,037,848), and L’Oreal owns #ThisisEverything (Reg. No. 5,219,760). These companies have utilized these hashtags for effective marketing and brand awareness on social media for their products, as well as included these hashtags on the actual product packaging for products sold by these companies.
Charities and non-profit organizations are also frequent applicants and ultimately, registrants, of hashtag marks. This is understandable considering using the # symbol for marketing is a well-tested, proven method for generating awareness in a cause or event, e.g. #rednoseday. Girls, Inc. is an example of an organization that has a registered trademark for #PowerofHer (Reg. No. 4,855,203), which is registered for “charitable services, namely, promoting public awareness of gender, social and economic issues facing girl.” Often times, these trademark applications are originally filed as “Intent To Use” trademarks under Section 1(b) of the Lanham Act, which allows applicants having a bona fide intention to use the mark to first apply for a mark without having actually used the mark in commerce. An “Intent to Use” trademark application allows the applicant to receive confirmation whether the trademark will pass examination or not before the United States Patent and Trademark Office before the applicant commits an excessive amount of funds and resources in marketing and using that mark.
Interestingly, #BeyGood is a trademark application (Serial Application No. 87309144) that was recently filed by Beyonce’s trademark holding company (BGK Trademark Holdings) and is pending review before the Trademark office as an “Intent to Use” mark under Section 1(b) of the Lanham Act. #BeyGood was filed in association with a set of charitable services described as “charitable services for distributing clothing and household items.” It will be exciting to see whether this mark is granted and how it may be used in association with these charitable services.
To ensure a successful marketing campaign, a company, non-profit, or other entity will encourage their consumers or target audience to post on social media using the hashtag symbol in association with a word or phrase (which may also be trademarked). Thus, it is common for a company or other entity to offer various incentives to entice customers to post the hashtag including offering prizes or a discount to do so. Interestingly, the nature of hashtag mark is such that the companies want to encourage their followers to actively use the hashtag mark over and over again. This means that owners of these registered # marks cannot and probably do not want to stop every instance or use by another of the hashtag mark, since by its very nature, that is how the hashtag mark is meant to be used.
Nevertheless, a trademark owner will seek to prevent a competitor or other entity that uses the hashtag mark for commercial gain. In particular, a hashtag mark owner may prevent the use by a competitor or entity of the hashtag mark with the same or similar type of goods or services, because such use will cause a strong likelihood of confusion among consumers and the competitor may be trying to profit off of the goodwill associated with the mark. Even if a competitor or other entity uses the hashtag with the same phrase or slogan in association with unrelated goods or services, it is foreseeable that a court may prohibit such use because the nature of the hashtag is that any post having that hashtag and phrase will be associated together, which is likely to cause confusion among consumers as to the source. Importantly, if a hashtag mark is popular or likely to be an effective marketing tool, then it may be worthwhile for its owner to consider registering that mark so as to control its use by competitors.
It is also true that many hashtags are going to have a limited lifespan and that their popularity will wane over time. As part of its evaluation whether to apply for a trademark, companies may want to consider how long a hashtag mark may be used before expending time and resources to protect it. Either way, it is still highly recommended that before adopting a hashtag or filing for a trademark application, that a company or other entity research any possible conflicts, which may include having a comprehensive trademark search conducted in order to identify conflicting uses. If the mark is already registered for the same class of goods or services, the mere fact that the hashtag symbol precedes the word or phrase will likely not change the outcome of that application being denied registration by the Trademark Office. For example, a company applying for the hashtag mark #I’mAChampion was denied by the Trademark Office based on a pre-existing registered mark for the slogan “I’m A Champion.” Thus, having a trademark search provided is extremely valuable in assessing the eligibility of a commonly used mark or mark that an applicant intends to use.
Bold IP stands ready to meet your trademark needs. Is someone infringing on your copyright, trademark, or patent? Have you been unfairly accused of infringing on a copyright trademark or patent? LET US HELP YOU! Our nationwide team of attorneys stand ready to help you through your trademark search, application, registration, and more!
Author: Houda El-Jarrah, Patent Attorney