As you’re probably aware, social media marketing is a big deal. A big tool in this big deal is the hashtag. So, a few questions arise regarding those words and phrases used after the hashtag. First, if one uses a hashtag in association with a word or phrase, is that considered a trademark use? Second, if one uses another party’s trademark with a hashtag, are they infringing the trademark owner’s trademark rights? You ask great questions. Let’s give this some thought.
To begin, we should briefly consider what is a trademark. A trademark is a brand used on goods and services. In other words, a trademark is any designation of origin. It can be a word, phrase, slogan, symbol, or design, or a combination thereof, that identifies the source of goods and services which distinguishes them from the goods and services of another party.
With that, let’s add hashtags to the mix. Hashtags are frequently used on social media as part of marketing campaigns and to facilitate searches. It would seem that merely adding a symbol like the hash mark to such a word, phrase, slogan, etc. would not affect its status as a trademark, right? Interestingly, the answer is not clear.
It is the position of the United States Patent and Trademark Office that in general, the addition of the hashtag symbol to a mark that would not otherwise be registerable does not render it so merely by the addition of the symbol. By the same token, a mark which includes a hashtag is registerable as a trademark if it does indeed function as a source identifier for the applicant’s goods or services. The hash symbol itself does not provide any source-indicating function because it merely facilitates categorization and searching within online social media.
While that seems straight forward, not all courts agree on how hashtags associated with words and phrases should be treated. In the case of Eksouzian v. Albanese, No. CV 13-00728-PSG-MAN, 2015 WL 4720478, (C.D. Cal. Aug. 7, 2015), the United States District Court for the Central District of California expressed its view that hashtags with words and phrases are simply functional tools which cannot serve as actual trademarks. The court reasoned that “hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves,” and that plaintiff’s use of the hashtag “#cloudpen” was merely a functional tool to direct the location of its promotion so that it would be viewed by a group of consumers.
Now let’s juxtapose the California District Court’s decision with one from the Massachusetts District Court wherein the court found a likelihood of confusion based on the defendant’s use of plaintiff’s trademark “PUBLIC IMPACT” in defendant’s Twitter username, “@4PublicImpact,” and frequently used hashtag, “#publicimpact.” In Pub. Impact, LLC v. Boston Consulting Grp., Inc., No. 15-13361-FDS, 2016 WL 1048884 (D. Mass. Mar. 11, 2016), the court emphasized that the username was “almost identical to plaintiff’s mark,” and the hashtag “#publicimpact” was, in fact, identical to the plaintiff’s mark. The court rejected the defendant’s argument, apparently based on the California decision, that it did not use the hashtag as a trademark.
Thus, we have two cases from two federal jurisdictions rendering what appears to be conflicting results. Given this apparent conflict, one might ask what is the appropriate takeaway. At very least, one should be aware of the potential for trademark infringement liability when using a competitor’s mark with a hashtag in social media.
©2017 Albert F. Davis, Esq.
Disclaimer:
This law update is intended for general information purposes only. One should not consider the update legal advice or legal opinions relating to any specific facts or circumstances. An attorney-client relationship is not created by reading this update. Please feel free to contact A.F. DAVIS LAW for further information.
