In the past decade, with the advent of social media, companies have found a multitude of new avenues for reaching potential consumers. Instead of solely relying on traditional marketing avenues, companies have been able to take advantage of the connective world of social media to reach consumer consciousness at an unprecedented rate. The implementation of the “hashtag,” a metadata tag that allows social media users to group their posts with others who have used the same hashtag phrase, has greatly increased visibility among social media users. By using a particular hashtag, companies are able to connect directly to consumer posts, while also encouraging consumers to spread company branding through their own social media use. In addition, the hashtag has in some ways served as the great equalizer in online advertising. Even companies with limited capital have been able to engage in this grassroots marketing, since the cost of using a social media account and a hashtag is often completely free.
As companies increase their presence on these social media platforms and continue to engage in hashtag marketing, legitimate questions about trademark protection have arisen. Namely, individuals in the legal and business community have begun to wonder if there are potentially damaging trademark violations lurking in this newfangled hashtag regime. Many startup companies are reliant on their ability to gain traction through these highly cost-efficient marketing streams, and therefore, founders must ensure that they understand the rules governing the use of “hashtags” in the social media marketplace.
While there are a number of different angles to approach this topic, this post will focus on the legal community’s current (but ever evolving) understanding of the role trademark law plays in policing hashtag marketing in two instances: (1) the use of certain word marks (i.e. words or slogans that are used as source identifiers for a company which are protected trademarks) in a hashtag and (2) the acquisition of protection for hashtag phrases (so, a word mark that includes the actual hashtag symbol at the beginning).
(1) Can the use of trademarks in a “hashtag” on social media ever violate federal trademark law?
In short, the answer appears to be (potentially) yes – in the very limited case law discussing this question, courts appear to indicate that the unauthorized use of a trademarked word or phrase can constitute trademark infringement. To briefly outline what federal trademark infringement entails, a plaintiff (the company attempting to prove that the defendant infringed on their trademark rights) must demonstrate that: (1) the mark in question merits protection under federal trademark law; and (2) that the allegedly infringing use is likely to result in consumer confusion, causing damage to the plaintiff. For example, if a relatively unknown cell phone company began placing the Apple and iPhone words and logos on their products (in other words, trying to pass their phones off as genuine Apple iPhones) this clearly has the potential to cause significant consumer confusion in the marketplace. The question with “hashtags,” therefore, is whether one company’s use of another company’s (or individual’s) trademarked word or phrase could result in a similar type of consumer confusion.
In a recent case in Massachusetts, Public Impact v. Boston Consulting Group, the court determined that the defendant’s use of the hashtag “#publicimact” (as well as the use of a twitter handle “@4PublicImpact”) was an infringement of plaintiff’s protected word mark, “Public Impact.” Specifically, the court stated that the defendant’s use of the same two words that constitute plaintiff’s mark as a source-identifier would be concerning in any context where the words are used without other distinguishing features. The logical conclusion, therefore, is that the court believes that “hashtags” are capable of being used as source identifying mechanisms in social media, and not just merely categorization tools. In other words, the court here seems to recognize the role social media advertising plays in generating revenue for companies, and the potential need for adequate trademark protection for companies in this sphere. As a result of this finding, the court actually ordered a preliminary injunction against the defendant’s continued use of both the twitter handle and infringing hashtag — a result that clearly demonstrates the impact these rulings could have on a company’s ability to continue conducting business as usual.
While no other cases answer this question quite as directly, courts have at least demonstrated an openness to evaluating claims of infringement via “hashtags” on the merits (meaning, that there is at least a colorable claim of infringement). For example, in Fraternity Collection v. Fargnoli, the Southern District of Mississippi stated a willingness to accept, at least theoretically, that “hashtagging a competitor’s name or product in social media posts could, in certain circumstances, deceive consumers.” While there is no judgment on the merits in this case, it at least further shows the general understanding that “hashtags” are capable of doing more than just acting as convenient grouping labels, but instead serve a valid role in company marketing.
Additionally, trademark holders have increasingly threatened litigation over what they perceive to be improper use of their trademarks in hashtags. For example, the U.S. Olympics Committee made various statements during the lead up to the 2016 Rio Summer Olympic games that they would vigilantly seek to prevent the use of their marks (e.g., “usolympics,” “teamusa”) from being used by non-sponsors of the U.S. Olympic team, including in hashtag format. Differentiating individual non-commercial use of these marks from the alleged infringing use, a representative from the USOC stated: ““athletes can certainly generically say, ‘Thank you for your support’ during the Games, but a company that sells a sports drink certainly can’t post something from the Games on their social media page or website. They’re doing nothing but using the Olympics to sell their drink.”
This should give young companies pause when thinking about how to interact in the social media marketplace. While this increased protection is potentially a boost for companies looking to protect fledgling brands, start-ups should also be wary of the potential for using other more prominent marks, especially when doing so could be interpreted as an attempt to palm off on the goodwill of the more established mark.
(2) Are “hashtags” trademarkable? Is this a desirable form of protection?
In addition to filing infringement claims for use of a mark within a hashtag, many companies, and other entities, have begun acquiring trademarks for actual hashtagged phrases (in their hashtag form) as a second way of increasing protection. For example, the USOC actually owns the mark: #rioready. Recently, National Football League super-star wide receiver Dez Bryant successfully filed the mark: #throwupthex, which had become his trademark slogan (to go along with his popular touchdown victory move where he crosses his arms in the air). Mr. Bryant noted at the time of the filing of the application his concern that companies would engage in misuse of the mark to generate marketing for their own brands.
While it is clear from these examples that hashtag phrases have been accepted as proper trademarks by the USPTO, there are a few observations that companies should keep in mind when evaluating the decision to register their hashtag marks.
First, the addition of a hashtag symbol (#) in front of an otherwise generic word or phrase does not elevate that word or phrase to a level of distinctiveness. In other words, if the mark is not protectable without the hashtag, it cannot gain protection simply from its inclusion. Second, it may not even be an expedient business decision to acquire this mark. For starters, if the company has not already obtained protection for the wordmark within the hashtag phrase itself, then there is no reason to believe that this mark would be enforceable. Further, companies should be careful to ensure that, if they do acquire a trademark in a hashtag phrase, that they are making sure to use it in a source-identifying way. It is perhaps not terribly difficult to see how (and make the argument that) another company is using an already established source-identifier to palm off the goodwill of that mark by using a hashtag containing that mark (the scenario discussed above). However, if a company obtains a trademark in a hashtag phrase, and then only uses that phrase in a hashtag context (to group their posts together) in a way that doesn’t seem to serve as a source identifier that company may have a tougher time demonstrating that the trademark in that hashtag phrase is valid. A better course of action would be to ensure that trademark protection is obtained first in the actual phrase (without the hashtag symbol).
In all, startup (and more established) companies should not rush to protectionist measures when it comes to trademarks. Much of the marketing benefit arises directly from the consumer’s ability to link directly through the use of trademarks, and owners of the contained marks should not necessarily assume that their usage by others, even other companies, is always an undesirable outcome. Further still, over-protectionist measures may generally be an objectionable decision from a business point of view. That being said, companies and their counsel should be advised to take full note of the rapidly changing landscape governing trademarks and their place in social media advertising.