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2015 Lessons Learned, 2016 Practical Tips

Trademark >> Courts and USPTO Analyze Hashtags, with Varying Results

April 19, 2016

In the social media world, hashtags are ubiquitously used by the general public, marketers and their agencies. But the legal protectability of hashtags as intellectual property has largely gone unaddressed. This began to change in 2015, with courts and government entities analyzing the interplay between hashtags and trademark law, with mixed results.

A court in California held that hashtags did not function as trademarks. The case involved a dispute between two competing manufacturers of electronic vaporizers. The parties had entered into a settlement agreement that prohibited one of the manufacturers from using the term “CLOUD PEN” as a unitary trademark. One manufacturer alleged that the other had violated the settlement by using the hashtag #cloudpen in Instagram posts and in connection with promotional contests encouraging consumers to use the hashtag #cloudpen. The court held that, because the hashtag was merely a functional tool used to direct consumers to the relevant promotion, #cloudpen was not a trademark and, therefore, the party in question did not breach the settlement.

A federal court in Mississippi reached a different conclusion. In that case, a t-shirt manufacturer sued a competitor alleging that the competitor had infringed its trademark rights and had engaged in false advertising by using a hashtag comprising the competitor’s name. The court declined to dismiss the manufacturer’s case, expressly accepting the notion that “hashtagging” a competitor’s name or product could potentially deceive consumers.

Meanwhile, the U.S. Patent and Trademark Office (USPTO) continued to allow registrations of trademarks that comprised hashtags. As of December 2015, the USPTO granted registration of over 150 such marks, with many more pending. These registrations were consistent with the USPTO’s examination policies, which expressly provided that trademark applications for hashtag marks had to be analyzed on a case-by-case basis to determine whether the marks as a whole functioned to identify the source of goods and services or whether they simply served as indexing tools.

Looking Ahead

  • Conduct appropriate diligence before using hashtags in communications. Depending on the context, this use could potentially infringe third-party trademark rights.
  • Social media platforms should be monitored to identify third-party uses of hashtags containing names and slogans. Such uses could potentially infringe marketers’ trademark rights and may justify further action.
  • If marketers and their agencies intend to use particular hashtags as a source indicator and on a long-term basis, they should consider whether it is worth seeking federal trademark protection for the hashtags. Certain courts and the USPTO’s guidance makes clear that, depending on the nature of the use, hashtags can be registered as and function as trademarks.