#canitrademarkmyhashtag?

by cristinaberra

Hashtags, which first appeared on Twitter with the function of linking users’ posts, have become so popular that they are now widespread on every social media, providing brands with new ways to engage with consumers. Hashtags appear in fact to be a powerful marketing tool, that allows business to drive online conversations about their brands, study consumers’ reactions and ultimately strengthen the connection they have with the public, thus enhancing their brands’ fan base. In such a context, it is not uncommon to see competitors trying to divert the content stream tied to a hashtag with their own products and marketing messages. That is why companies are more and more seeking protection for the hashtags they use, especially through trade mark law. But can a hashtag be registered as a trade mark?

The US Patent and Trademark Office defines hashtags as forms of metadata comprised of a word or phrase prefixed with the symbol ‘#’ and consider them registrable, but only if they function as identifiers of the source of the applicant’s goods or services. It seems then that the registration of hashtags follows the same rules that are applied to any other trade mark’s registration: essentially, the sign has to be capable of distinguishing the goods or services of one undertaking from those of another. This requirement however appears not so easy to meet, as hashtags often tend to be descriptive terms or slogans, which lack inherent distinctiveness. In such situations, the only way to secure registration is to prove secondary meaning, which seems anyway challenging, because slogans are often treated merely as a form of advertisement rather than source identifiers.

Moreover, it is questioned if the registration of hashtags may raise freedom of speech issues, especially given the innate nature of their use: such tools are in fact intended to be disseminated online, by social media users, to group entries into topics and to create links among posts having the same content, and not to be subject to some forms of private property. One of the biggest opponents of the registrability of hashtags is their creator Chris Messina, who believes the effort to trade mark hashtags to be misguided. In his view, “trademarks don’t belong on hashtags. Hashtags are a kind of conversational commons, and should be owned by no one but the crowd.” Companies however assure that they have no intention to prevent customers and fans from using the hashtags as a trade mark, as their only target is to stop competitors from using them for their sole commercial gain, trying to divert the online traffic and use it as an advertising channel.

Turning to trade mark infringement, according to the relevant provisions, if the use of a hashtag creates a likelihood of confusion on the public or makes it appear that there is a connection or link with the trade mark owner, an infringement might then be found. The grounds of an infringement action have of course to be assessed on a case-by-case basis and while considering the facts, the question that the Courts should try to answer is whether the use of the hashtag really has the power to create a likelihood of confusion or association, or simply promotes an intended social media message. In fact, the possibility of posts “going viral” can happen very quickly and in such circumstances a delicate balance should be drawn between the occurrence of infringement and the will of capturing the public’s attention at a given moment.

Ultimately, it will be on the Courts to have the final say on establishing the “legal status” of hashtags and their enforceability as trade marks. Until then, as brands surely will not stop to seek trade mark protection, they should at least #registerwithcaution.

Cristina Berra

Assistant Editor, QMJIP