Social media is not a new phenomenon, and for most organisations, has become a common channel for broadcasting content and engaging with customers. However surprisingly, reducing legal risks surrounding the use of social media continues to be a grey area for many organisations, large and small.
To help you avoid these legal pitfalls we’ll be providing regular updates on social media law including the latest news, tips to stay proactive and explain how changes in the law will affect the way your organisation communicates and shares information online.
This week we explore hashtags - are they worth trade marking?
In the US, the United States Patent and Trade Mark Office (USPTO) was uncertain about this question, given the functionality of hashtags. However in 2013 USPTO included a new section in the Trademark Manual of Examination Procedure, in which a definition of “hashtag” was provided. Large companies such as Coca-Cola now have registered trade marks with hashtags, in particular #cokecanpics and #smilewithacoke.
Hashtags should follow the same rules as other types of trade marks in order to be registrable
Hashtags can be registrable, but only in circumstances where the hashtag would act as a badge of origin in the marketplace for the owner’s goods or services. The character strings following the ‘#’ symbol would need to follow the usual rules for registration of trade marks.
A descriptive word combined with the ‘#’ symbol, is unlikely to be registrable. On the other hand, a distinctive word combined with the ‘#’ symbol is more likely to be registrable, subject to no existing prior third party rights.
Third party ownership
Of course, the above would depend on whether any third party already ‘owns’ the hashtag – either through use or registration of that hashtag at the Trade Marks Office for identical or similar goods or services.
Hashtags vs traditional trade marks
The difference between a traditional trade mark and a hashtag trade mark is that traditional trade marks are intended generally to be used by the mark owner.
Hashtag trade marks are used by both the trade mark owner and social media users. The trade mark owner may start to use the hashtag mark on social media, intending for social media users to start disseminating it. The application to register the mark will cover:
- the goods classification eg. food and beverage; and
- the services classification eg. disseminating information over the internet
In this way, the hashtag mark provides broader protection from use by unauthorised third parties.
There have been a number of trade mark disputes in the US regarding use of hashtags. In 2010, a Mexican restaurant in Wyoming named “Taco John’s”, the owner of the trademark “Taco Tuesday” in the US, sent a cease and desist letter to a restaurant named Iguana Grill in Oklahoma. The letter was in relation to Iguana Grill’s use of the hashtag #tacotuesday to promote its own services.
In 2015, a company named Fraternity Collection commenced trade mark infringement proceedings against use of the hashtags #fratcollection and #fraternitycollection. The Federal District Court of Mississippi found that use of those words in combination with the hashtag constituted trade mark infringement. This was seen to be deceiving consumers.
Courts have generally found no trade mark infringement where hashtags are used in relation to identical or similar marks, but not in relation to similar goods or services. This is because there is likely to be little consumer confusion.
Identical hashtags create only one feed of posts under that hashtag. Therefore any difference between the goods or services will be irrelevant, and all the information will be listed under the same hashtag. It will be interesting to see how the courts react to this functional aspect of hashtags, which distinguishes them from traditional trade mark use.
Registering a trade mark as a hashtag: Should you do it?
Hashtags are often extremely popular for short periods of time, and are therefore useful advertising tools. However, when a hashtag stops trending its worth decreases exponentially. Trade mark owners should consider whether it is worth investing in a particular hashtag given the fast paced world of social media.
When considering whether to adopt a hashtag mark in a social media campaign, a trade mark clearance search should first be conducted to identify whether any earlier third party prior rights exist in respect to use of the hashtag mark.