Hashtag trademarks: what can be protected?

By Claire Jones, Trademark Attorney, Novagraaf, London, United Kingdom

Social media platforms have become indispensable marketing channels for brand owners. And in the 10 years since the #hashtag emerged as an online marketing tool, interest in registering #hashtag trademarks has taken off.

Recent research by Clarivate Analytics (formerly Thomson Reuters CompuMark) shows that while just seven companies submitted applications for trademark-specific hashtags in 2010, the number of such applications has been rising steadily, spiking in 2016 with a 64 percent annual increase and some 2,200 applications to register trademark-specific hashtags filed globally.

Social media have become wildly popular means by which to stimulate interest in and reactions to any imaginable event, product or service. They are built around a culture of sharing and openness, and “real-time” marketing. While these tools have become a normal feature of the digital landscape, the sharing culture on which they depend can present some intellectual property-related challenges.

#whatisregisterable?

The first is tied up with what may or may not be registered as a trademark. A trademark is a sign that is capable of distinguishing the goods and services of one company from those of another. In sum, it allows consumers to identify the source of a product or service. While a #hashtag alone is a generic symbol with no source-identifying significance, used in conjunction with a product name or campaign tagline it may function in the same way as a trademark and be registerable as such.

Used in this way, a hashtag is a simple yet powerful means of stimulating interest in or reactions to an event, product or service. But while such use can promote a brand, product or service, generate sales and boost brand recognition, it does not automatically turn a brand name or advertising slogan into a registerable trademark.

So when exactly is it possible to register a hashtag used in a marketing campaign as a trademark? Guidance from the United States Patent and Trademark Office (USPTO) states: “A mark comprising of or including the hash symbol (#) or the term ‘hashtag’ is registerable as a trademark of service only if it functions as an identifier of the source of the applicant’s goods or services.”

Hashtag trademarks that have been successfully registered as such in the United States include: #smilewithacoke and #cokecanpics (The Coca-Cola Company), #McDstories (McDonalds), and #makeitcount (Nike).

In the United Kingdom, a mark is registerable if is distinctive and has the capacity to individualize the goods and services of a particular undertaking. If such a link exists and the mark does not communicate a message that could apply to any other undertaking then, as with other trademarks, a hashtag-based mark is registerable.

In 2014, Wyke Farms, the UK’s largest independent cheese producer, became the first brand in the country to successfully register a trademark for its #freecheesefriday social media campaign. The weekly online competition is run through the Wyke Farms’ Facebook and Twitter accounts and draws around 25,500 and 30,000 entries respectively every month. Each Friday, winners are selected from among all those who have engaged with Wyke Farms Facebook and Twitter presence and receive free cheese. The campaign’s monthly reach on Facebook and Twitter combined is some 880,000 people, according to the company.

In order to register the trademark Wyke Farms had to provide evidence that the mark had acquired distinctiveness through use. The vast majority of the evidence filed at the UK IP Office was use of the wording as a hashtag on social media. This case shows that social media use of a hashtag can assist in proving acquired distinctiveness. It also highlights the willingness of the UK IP Office to accept social media usage as evidence of acquired distinctiveness.

#beware

It is also worth noting that extensive use of a hashtag could also give rise in the UK to the common law right of passing off. This right protects the goodwill of a trader from misrepresentation. However, proving that a company has acquired the required goodwill in the hashtag for the right to stop someone else from using it is likely to be a challenge.

#infringement?

How do things stand then when it comes to using a brand’s hashtag trademark? Does including a brand’s hashtag trademark in a social media post make you liable for trademark infringement?

If the use suggests that there is a connection or link with the trademark owner, or creates a likelihood of confusion or association with the trademark owner, then there may be grounds for infringement. This, however, is not the case if the post containing the hashtag trademark is simply promoting the intended social media message.

#thebottomline

So the bottom line is that while hashtags are a great way to promote a business and stimulate interest in a marketing campaign, as with all things, social media geeks are advised to #proceedwithcaution.

Related Links

• WIPO Magazine 2014/5 - Branded Hashtags: The Next Big Thing?