Happy Wednesday everyone. Today, I figured I’d tackle a topic of growing legal importance: whether hashtags qualify as trademarks. For those who don’t frequent Twitter (or various other social networking sites), hashtags are word groupings used to tie a post into a larger topic usually delineated by the use of the pound sign (#). For example, if I was tweeting an item related to my blog, I’d write the tag as #GeekLaw. Since both Twitter and Facebook monitor these hashtags to determine trending topics (and, in turn, what they feature in their feeds discussing such trends), many companies use these hashtags for self-promotion purposes on social media.
In the Eksouzian v. Albanese case in California’s Central District, the judge held that hashtags are not trademarks. The case involved two vaporizer pen sellers, who settled an earlier dispute in 2014. One of the terms of that settlement was for the Defendants to only use the term “cloud” as part of a unitary mark (a mark where multiple words paired together result in a single trademark). while Plaintiffs could not use “cloud” next to a specified set of words. The parties returned to court two months later, with the Defendants claiming that certain hashtags employed by Plaintiffs violated the terms of the settlement. The District Court held that Plaintiffs did not violate the settlement, as they felt that hashtags did not constitute a trademark (and thus there was no infringement).
The District Court employed some fairly straightforward, if flawed, logic in coming to this decision. The court held that, since hashtags are merely descriptive (even going so far as to call them tools), they cannot represent a valid trademark. The problem with this ruling, as pointed out in the article above, is that it fails to recognize how companies utilize hashtags for promotional purposes (even beyond potential fair use arguments). Companies frequently use preexisting trademarks with their hashtags in order to get their company to trend on social media. The USPTO also opened the door to registered hashtag trademarks in 2013 with their revised examiner’s manual. Professor Roberts, in the article above, states that the USPTO chose to register 70 hashtag marks this year, with many more pending).
What are the requirements for a hashtag trademark? According to the USPTO, they are similar to a normal trademark. Trademarks are words, names, or symbols used to distinguish a product or business from others. They have to have a certain degree of distinctiveness to them as well. There are, generally speaking, four levels of distinctiveness ranging from “arbitrary and fanciful” to “generic”. The more arbitrary and fanciful, the more likely the USPTO is to approve the mark. Generic marks do not receive protection. The USPTO does make one important distinction in regard to hashtags in particular, which is that the hashtag cannot be used to simply organize information or as a point of reference. For example: a number of companies use these hashtags on Twitter to promote contests or encourage followers to post pictures of their product (usually in some kind of fun context). The company in question could not register that hashtag as a trademark.
The USPTO’s stance makes more sense than the Central California District Court’s. The purpose of trademark law is to promote and protect distinctiveness, and prevent other entities from taking advantage of that distinctiveness. A hashtag potentially promotes a company’s name, reputation, or product. This is why the USPTO does not register generic terms for trademark protection and, in this particular case, the District Court was right to not grant #cloudpens any special protection. However, there’s no reason why the USPTO cannot extend trademark protection to already existing marks (with the additional pound sign). In addition, companies often use hashtags to promote new slogans and advertising campaigns unique to the social media realm. Applying the same rules, while accounting for social media’s technological quirks, represents a much stronger path forward than what the District Court proposes.
Have a great day everyone. I’ll see you next week.