Getting a handle on Twitter

By Rachel Nicholas, Associate, Lewis Roca Rothgerber Christie, LLP, USA

Twitter has become indispensable for many businesses. With over 300 million active users, more than three-quarters of them located outside the United States, it is now one of the world’s top social media platforms. Small wonder, then, that companies are keen to join the Twitter community, to engage existing customers and reach potential new ones.

But there are pitfalls as well as opportunities, and many of them concern intellectual property (IP). Here, we focus on two IP-specific challenges that businesses may face on Twitter: handles and hashtags.

Handle headaches

What’s a business to do when someone is using its trademark as his or her Twitter handle (username)? A few years back, Chase Giunta registered and began using the @chase Twitter handle. Not surprisingly, J.P. Morgan took issue with this. As if it wasn’t bad enough that the Bank missed out on the @chase handle, Mr. Giunta used its blue logo as his profile picture and began retweeting negative comments and consumer complaints about it. While Mr. Giunta’s Twitter bio specified that he had no affiliation with Chase Bank or J.P. Morgan, Twitter determined that his use had violated its policy, and revoked his handle.

While handles are allocated on a first-come, first-served basis, “using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation” may violate Twitter’s trademark policy. Twitter will investigate reports of trademark policy violations from holders of federal US or international trademark registrations, and may suspend an account for intentional misuse.

Under Twitter Rules, the platform also reserves the right to reclaim usernames on behalf of businesses or individuals with valid legal claims to those names. If an account appears to unintentionally confuse users, Twitter gives the account holder a chance to clear up the confusion, including by posting a disclaimer stating that there is no affiliation between the account holder and the aggrieved business.

Twitter allows newsfeeds, commentary and fan accounts, but the same rules apply here: if use of a trademark for a fan or a commentary account causes confusion, it is a violation of Twitter’s trademark policy. Further, under Twitter’s parody, commentary and fan account policy, an account name must not be the exact name of the account subject, and should be distinguished using “not,” “fake” or “fan”. Celebrities and prominent businesses can also become “verified,” whereby their account features a blue check icon confirming the user actually is who they claim to be, to help distinguish their official account from parody or other accounts targeting them.

If someone is using your registered trademark as their Twitter handle, a review of the account should help determine if the use is likely to cause confusion. Do they have any rights in the Twitter handle – is it the same or similar to their legitimate business name, or their first name or surname? Are they tweeting about your business? Is there anything in their Twitter bio that refers to your company (including use of your company’s logo(s) or trade dress)? Does their bio feature a disclaimer?

Basically, if it looks like consumers could be confused, you may consider taking action. While it is against Twitter Rules to buy or sell handles, there are several options available to prevent misuse of your company’s IP and to ensure consumers are able to find and communicate with your company easily via Twitter. Depending on the particular circumstances, these options include contacting Twitter to inform them of a policy violation, reaching out to the third party directly to let them know of the infringement, or, as a last resort, filing a civil law suit.

Are hashtags descriptive? Hard to say!

While each tweet is limited to just 140 characters, this can convey a good deal of information, especially since tweets may include hashtags, images and videos. Hashtags (#) are used on Twitter and other social media sites to identify and facilitate a search for the keyword (the term(s) immediately following the hashtag). Hashtags are indexed and searchable, so that users can use them to search on a topic or theme of interest. For example, the FIFA Women’s World Cup took place in 2015, and tweets using the hashtag #FIFAWWC were viewed nine billion times between June 6 and July 5. Businesses have been understandably keen to capitalize on hashtags by using them to interact with consumers in new and often meaningful ways.

Many companies have even sought trademark registrations for hashtag-formative marks, seeking to stake a protectable claim in this new frontier. United States Patent and Trademark Office (USPTO) rules state that a hashtag may be protected as a trademark, if it functions as an identifier of the source of the applicant’s goods or services (TMEP § 1202.18). However, the same USPTO rules further state that the hash symbol and the wording “hashtag” typically do not provide any source-indicating function because they merely facilitate categorization and searching within online social media; the addition of the term “hashtag” or the hash symbol (#) to an otherwise-unregistrable mark typically cannot render it registrable. In other words, the USPTO basically views the word “hashtag” and the hashtag symbol as descriptive.

However, a recent US district court case cast doubt on whether marks including hashtags are capable of trademark protection under US law. In Eksouzian v Albanese, No. CV 13-00728-PSG-MAN (C.D. Cal. August 7, 2015), the Central District of California found that hashtags may be merely descriptive devices, not source identifiers. The Court held that “hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves.” The use of a mark including the hashtag symbol was merely “a functional tool to direct the location of Plaintiffs’ promotion so that it is viewed by a group of consumers, not an actual trademark.”

To protect or not to protect?

What does this judgment mean for businesses interested in protecting marks including hashtags going forward? While the state of hashtag trademarks is a little unclear now, brand owners should review the mark and its use carefully, keeping in mind that marks that include hashtags can be hard or impractical to protect, given their widespread use on multiple platforms. They need to consider:

• Does the phrase or word after the hashtag symbol serve as a source identifier in and of itself?

• If so, is there a need to protect the hashtag symbol combined with the word or phrase, or would protecting just the word or phrase suffice?

• Would use of the hashtag be limited to social media platforms?

• Would it cause confusion if another company were to use the hashtag?

If the review indicates the hashtag mark is serving as a source identifier, it may be worth protecting – at least until the law in this area is clarified.

Avoiding infringement and publicity risks

What if you don’t want to protect a hashtag, but simply want to use one to engage in a conversation, or as part of a campaign? Be careful. Using a competitor’s name or brand in your hashtag could result in a trademark infringement claim.

In Fraternity Collection, LLC v Fargnoli, 2015 WL 1486375, No. 3:13–CV–664 (S.D. Miss. March 31, 2015), a federal court in Mississippi observed that “hashtagging a competitor’s name or product in social media posts could, in certain circumstances, deceive consumers,” and declined to dismiss an infringement claim on this basis.

After parting ways with a shirt manufacturer, a designer used the manufacturer’s brand name in hashtags (#fratcollection and #fraternitycollection) on her social media accounts advertising her own clothing for sale. Perhaps unsurprisingly, the manufacture took issue with this use, and its claim for trademark infringement survived a motion to dismiss. So while most hashtags are fair game on Twitter, avoid using competitors’ marks in hashtags if consumer confusion could result.

Lastly, be aware of a related issue which, while not strictly a legal matter, is definitely a risk: an existing conversation may be linked to a hashtag – and not necessarily a positive one, or one that reflects the brand or desired image. For example, Entenmann’s, a company known for baked goods, used the hashtag #notguilty to promote their healthier baked options. Unfortunately, that hashtag was simultaneously being used in the wake of the controversial Casey Anthony “Not Guilty” murder verdict.

Similarly, there is a well-documented history of corporate Twitter hashtag campaigns turning sour. Consumers often “hijack” the hashtag to criticize the company. For example, McDonald’s created the #McDstories hashtag on Twitter hoping its customers would share personal stories about their favorite McDonald’s moments. However, the hashtag was quickly taken over by McDonald’s-related horror stories and the #McDstories campaign was pulled after only a few hours.

To learn from others’ mistakes, companies should review whether there is an existing conversation on a given hashtag and what the nature of that conversation is, and consider ways the hashtag could be hijacked before launching a hashtag campaign.

Using Twitter can help businesses engage with consumers in a way that was not formerly possible, and can also help brands expand and compete in new areas. Given the expansive reach of Twitter, setting up and maintaining an account can reap benefits for businesses. However, this powerful networking tool comes with some challenges that the savvy user should keep in mind. Equipped with this knowledge, you are on your way to avoiding some of the common pitfalls associated with Twitter use.