#canyoutrademarkthat?

Hashtags - those phrases preceded by the # symbol that have become ubiquitous on social media platforms and beyond - have been the subject of over 1,200 trademark applications filed with the U.S. Patent and Trademark Office (USPTO). The USPTO even added a section to the Trademark Manual of Examination Procedure (TMEP) in 2013, offering guidance on trademark protection for hashtag marks. But USPTO examiners' interpretation of that guidance and courts' application of trademark law to hashtags leave some unanswered questions.

Hashtags were first developed by Twitter as a way to allow users to group posts by topic. Social media users quickly caught on, using pithy tags to join a discussion of trending topics or to lend context or humor to their posts. Other social media platforms including Facebook, Pinterest and Instagram soon adopted the functionality. And with the rise of social media marketing, brands have increasingly turned to hashtags to engage with customers.

Companies encourage consumers to use a brand's hashtag in social media posts by offering discounts or prizes, and hashtags can also foster a sense of instant community among a brand's consumers. In return, companies benefit from a stream of user-generated content and consumer endorsements tied to the brand. A catchy hashtag creates its own social media channel, and brand owners naturally want to prevent competitors from hijacking the hashtags tied to their carefully crafted messages. To do so, companies are increasingly turning to trademark law, with mixed results.

At the USPTO, examination and registration of hashtag marks remain somewhat inconsistent. The USPTO has addressed the issue of hashtags' ability to function as trademarks in the "Hashtag Marks" section of the TMEP. In essence, the TMEP states that the hashtag symbol should be ignored by the examiner and the hashtag mark should be examined in the same manner that any other tag line or phrase would be. In other words, according to the USPTO, a hashtag is no more - but also no less - capable of functioning as a trademark than the nonhashtag form of the relevant tag line or phrase would be. But does this approach ignore some unique features of hashtag marks?

First, while descriptiveness is an issue for both hashtag and nonhashtag marks, the fact that hashtag marks also function as online search terms would seem to increase the need for a hashtag to have a close and obvious connection to a particular brand if it is to be recognized as a trademark - i.e., an identifier of the source of goods and services - and not merely a search term. For example, the word "tasty" may be merely descriptive when used on a package of bread, but #Tasty is arguably even less distinctive when used only in a social media campaign, considering that the hashtag does not actually appear on the product and, considered as a search term, could be relevant to any number of topics.

The TMEP notes this problem and instructs that #Skater for skateboarding equipment would not be registrable as merely descriptive. In practice, however, the USPTO has not always been entirely consistent in assessing the descriptiveness of hashtag trademarks. For example, the USPTO has allowed #LetsBowl for bowling balls and #Smart for clothing without raising a descriptiveness objection. The USPTO also allowed Abercrombie & Fitch to register #SoCalStylist for retail store services featuring clothing and accessories, and a non-profit to register #KickHunger for promoting public awareness of hunger and hunger relief. But the USPTO found #WeatherWednesday for an online newsletter about the weather and #MusicVideoMonday for advertising services and mobile marketing to be merely descriptive, allowing only registration on the supplemental register.

Second, the fact that a hashtag often appears only on social media rather than on the goods themselves or in advertising raises questions regarding what constitutes an acceptable specimen for a hashtag mark. The USPTO has not formulated a clear policy on this issue. The TMEP notes that if #SewFun was the subject of a trademark application for "instruction in the field of sewing" with a specimen consisting of a screenshot of a social networking site used to organize user comments about sewing classes that the applicant offers, the mark would be refused registration for failure to function as a service mark. Accordingly, the USPTO rejected the initial specimen for #LeadershipFlow in connection with business education services that consisted of the applicant's website with posts about business topics. However, the USPTO allowed Procter & Gamble to register #LikeAGirl for "providing information in the field of female empowerment, anti-gender discrimination via social media" with a screenshot of its Twitter page as a specimen.

Only a handful of court decisions have dealt with the subject of trademark rights in hashtags, with similarly inconsistent outcomes. In the first reported case to address hashtags, Fraternity Collection v. Fargnoli, 13-664 (S.D. Miss., Mar. 31, 2015), clothing maker Fraternity Collection brought trademark infringement claims against a former designer based on use of the tags #fratcollection and #fraternitycollection on social media. The court accepted at the pleading stage "the notion that hashtagging a competitor's name or product in social media posts could, in certain circumstances, deceive consumers." Accordingly, the court held that Fraternity Collection's complaint stated a claim for false advertising under the Lanham Act and for trademark infringement under state law, and denied the designer's motion to dismiss those claims.

In contrast, the court in Eksouzian v. Albanese, 13-00728 (C.D. Cal., Aug. 7, 2015), concluded that a competitor's use of a hashtag did not violate a settlement agreement governing trademark usage between the parties because the hashtag was "merely a functional tool." The parties in Eksouzian had entered into a settlement agreement pursuant to which the plaintiffs were permitted to use the terms "Cloud" or "Cloud Vapes" as trademarks, but not in such close association with the words "pen" or "penz" as to form a unitary trademark. A dispute then arose when plaintiffs subsequently used the hashtags #cloudpen and #cloudpenz in connection with promotional contests on social media. The court held that plaintiffs did not breach the settlement agreement because "hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves." This conclusion seems to be at odds with the USPTO's willingness to register hashtags as trademarks.

Muddying the waters even further, the court in Public Impact LLC v. Boston Consulting Group Inc., 15-13361 (D. Mass. Mar. 11, 2016), came to the opposite conclusion. In that case, Public Impact, an education policy and management consulting firm that owns a federal registration for the mark PUBLIC IMPACT, sought a preliminary injunction to prevent the defendant, Boston Consulting Group (BCG), from using the hashtag #PublicImpact and the username @4PublicImpact on social media. The court concluded that BCG's use of the username and hashtag was likely to constitute trademark infringement, particularly given the similarity of the services provided by the two organizations. Accordingly, the court enjoined BCG from using the phrase "public impact" with two or fewer letters, numbers or characters appended in any form on social media or in other commercial activities.

In sum, the application of trademark law to hashtags and the rapidly evolving world of social media is still in its very early stages. With regard to federal registration, one scholar has argued that the USPTO should treat hashtag marks as "primarily merely a hashtag" until the applicant can establish that the mark actually functions as a source indicator, an approach that could avoid some of the inconsistencies seen in the registration process today. The bigger questions regarding the scope of protection afforded to hashtag marks, however, have yet to be resolved.