hashtag trademarks: legal and practical implications of use by … · 2020. 3. 11. · engaged by...

Hashtag Trademarks: Legal and Practical

Implications of Use by Brand Owners or

Third Parties

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WEDNESDAY, MARCH 11, 2020

Presenting a live 90-minute webinar with interactive Q&A

David A. Bell, Partner, Chair - Trademark Practice Group, Haynes and Boone, Dallas

Stephen J. Coates, Founder, Coates IP, Seattle

William R. Samuels, Partner, Scarinci Hollenbeck, New York

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I. Can a hashtag function as a trademark?

Stephen Jadie Coates | Coates IP | coatesip.com

What is a hashtag? A hashtag is the ability for users to catalog a word or phrase amongst all content in a particular social media platform through the use of the hash (#) symbol. For example, posting #thiswebinarrocks will allow users to see all content that the hashtag was also used, just by clicking it.

Hashtags are akin to the card catalog of the Internet, allowing certain words to be activated for purposes of cataloging certain words and phrases.

User handles implement the @ symbol. For example, my Twitter handle is @trademarkninja.

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How are hashtags used?

Hashtags allow users to share and access content beyond their social circle.e.g. by posting #straffordwebinar, that post can be more easily and efficiently

engaged by others interested in the content.

Hashtags allow groups of people to communicate publicly in real time, who would not normally be connected.

e.g. use of hashtags was integral for the Arab Spring uprising to take place, where users communicated with #arabspring.

Hashtags allow marketers to connect their customers together in interesting campaigns and online events.

e.g. hashtags can be very effective in real time question and answer sessions, such as #askjpm.

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Stephen Jadie Coates | Coates IP | coatesip.com 7



Offline Use – Hashtags need not be technically functional to be used.

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Q: Can a hashtag function as a trademark?

A: Yes, under some limited circumstances a hashtag can function as a standalone indicator of source for a product or service, but they must be used on those products!

TMEP 1202.18 states, “A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.”

“Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media.”

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New York | New Jersey | Washington, D.C.

3 Park Avenue, 15th Floor, New York, NY 10016 Phone: 212-286-0747 Fax: 212-808-4155 www.sh-law.com

#Trademarks

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#HashtagsFunction

• Use of the hashtag…is 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.

– Eksouzian v. Albanese, No. CV 13-00728-PSG-MAN, 2015 U.S. Dist. LEXIS 104793, at *23 (C.D. Cal. Aug. 7, 2015)

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#HashtagsTrend

• Hashtags are mostly used in unmoderated, ad hoc discussion forums;

• any hashtag, if promoted by enough individuals, can "trend" and attract more individual users to discussion. https://en.wikipedia.org/wiki/Hashtag(2/17/20, 7:32 pm)

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https://en.wikipedia.org/wiki/Hashtag



#HashtagInAction

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#HashtagInAction

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#Mulan

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#HashtagsAffiliate

– Trademark use, within the context of a hashtag,

indicates an association or affiliation—and crosses

the line of nominative fair use or hashtag use.

• Metatags function behind the scenes to direct an

internet searcher to a webpage, but hashtags are

visible to consumers in advertising.

– Align Tech., Inc. v. Strauss Diamond Instruments, Inc., No. 18-cv-06663-TSH, 2019 U.S. Dist. LEXIS 63616, at *19 (N.D. Cal. Apr. 12, 2019)

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#UsingYourMarkAsAHashtag

• What should owners consider regarding whether to use a trademark as a hashtag?

– Getting your brand exposure through trending

– Social Media Blowback

– Third party misuse

– Control of your mark

– Ability to trend your own brand

This Photo by Unknown Author is licensed under CC BY

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https://www.flickr.com/photos/jeepersmedia/14845324003/

https://creativecommons.org/licenses/by/3.0/



#Marketing

• Create brand awareness

• Increase the visibility of your content

• Make easier to track & quantify your content

• Boost your followers and retweets

• Get your audience involved

• Promote events effectively

• Help running contest or launching a product

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#BuildBrandAwareness

• #ShareACoke

– Idea behind the hashtag—cokes with names and titles on them:

• drove massive numbers of sales, and

• generated a ton of user-generated content

• #NationalFriedChickenDay

– started trending on Twitter

– KFC hashtag-brand relation, and ran a promotional campaign around it.

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#SHAREACOKE

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#Bashtags

– "Twitter hashtag disasters" happen with regularity.

• #McDStories

– Intended to draw out positive stories about McDonald’s and experiences

– Became PR nightmare with a lot of bad publicity

– People’s stories were perhaps honest, certainly negative

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#Trolls• Adidas #DARETOCREATE Campaign:

– like and share a tweet advertising the brand

– Adidas jersey is automatically generated with social media handle on the back, with a message that says: “This is home. Welcome to the squad.”

• Third party use of hashtag spread negative association—from the Adidas account

– campaign was interrupted when accounts with Twitter handles like ”@GasAllJewss,” ”@MadelineMcCann” and ”@96wasnotenough” started tweeting #DareToCreate.

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#MAKEITHAPPY

– Coca Cola's social media marketers came up with a cute idea. Add #MakeItHappy to a negative tweet and Coca Cola's Twitter bot will pick it up and use the message's characters to create a cute ASCII art image.

– Sounds awesome until your company suddenly is posting ASCII art made from quotes from Adolf Hitler’s “Mein Kampf”

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#MAKEITHAPPY ?

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#FairUse & Other ConsiderationsWhere a defendant uses a trademark to describe the plaintiff's product rather than its own product, a commercial user is entitled to a nominative fair use defense provided defendant meets three requirements:

– the product or service in question must be one not readily identifiable without use of the trademark;

– only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and

– the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Downing v. Abercrombie & Fitch,

265 F.3d 994, 1009 (9th Cir. 2001)

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#FairUse

• Disclaimer?

• Advertisement?

– Plaintiff has offered no evidence Defendants used the mark DRIP CLUB on its advertisements or products, as opposed to using it as a hashtag.

• AOP Ventures, Inc. v. Steam Distribution, LLC, No. EDCV 15-1586-VAP (KKx), 2016 U.S. Dist. LEXIS 193035, at *33 (C.D. Cal. Oct. 11, 2016)

• How much used and whose product is referenced?

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#Hashtag Use to Categorize or Affiliate

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#Context

• Is it used in an advertisement

• Used to identify own product?

• Used to reference third parties?

• Use of more of the mark than is necessary

– Is there use of the mark in images?

– What other comments are there in the tweet?

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Thank You

Trademark Nuts and Bolts

Bill [email protected]

www.sh-law.com

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David A. Bell

[email protected]

214-651-5248

When can the use of a hashtag give rise to liability?

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Approval process

Monitoring marks

Case examples

Liability – Case Examples

Khaled v. Bordenave, 2019 WL 1894321, slip. op.

(S.D.N.Y. 2019)

T-shirt company used #WeTheBest and

#WeTheBestBrands

Court granted plaintiff’s motion to leave to amend

The “plaintiffs' allegations…as to defendants' use

of hashtags clearly state a claim of trademark

infringement” and “numerous cases have

permitted claims of infringement based on uses

of protected marks in hashtags.”

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Fraternity Collection, LLC v. Fargnoli, No. 3:13-CV-664-

CWR-FKB (S.D. Miss. Mar. 31, 2015)

Fraternity Collection is a clothing manufacturer

Former designer used #fratcollection and

#fraternitycollection to advertise for a competitor.

Plaintiff brought Lanham Act false advertising and

common law TM infringement claims

Use of a competitor’s name or product name as a

hashtag “could in certain circumstances, deceive consumers.”

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3 Ratones Ciegos v. Mucha Lucha Libre Taco Shop 1

LLC, No. 16-CV-4538 (D. Ariz. Sept. 27, 2017).

Plaintiff owned TM registrations for "Lucha Libre" and

"Lucha Libre Taco Shop" for restaurant services

Defendant used #luchalibretacoshop and #luchalibre

on IG to refer to its own restaurants

Plaintiff sued for infringement over IG postings

Court found plaintiff had stated plausible claims

for relief

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Public Impact LLC v. Boston Consulting Group, 169 F.

Supp. 3d 278 (D. Mass. March 11, 2016)

Plaintiff was an education policy and management

consulting firm

Defendant used #publicimpact throughout Twitter

Court issued preliminary injunction

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Align Tech., Inc. v. Strauss Diamond Instrs., Inc., Case

No. 18-cv-06663-TSH, 2019 WL 1586776 (N.D. Cal.

Mar. 12, 2019)

Hashtag use

was more

than

necessary –

in fact, never

necessary to

identify

plaintiff’s

products – so

the

nominative

fair use

defense failed


TWTB, Inc. v. Rampick, No. CV-15-3399 *6-8 (E.D.

La. Jan. 20, 2016)

Use of a hashtag deemed relevant to the

likelihood of confusion analysis and evidence of

an intent to trade off the trademark owner’s

goodwill.

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Outliers

Eksouzian v. Albanese, No. CV 13-00728-PSG-MAN,

2015 WL 4220478 (C.D. Cal. Aug. 7, 2015)

The hashtag is “merely a functional tool” used to

direct consumers to a particular promotion and

was not an infringing act likely to cause confusion.

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Outliers

AOP Ventures, Inc. v. Steam Distribution, LLC, No.

EDCV151586VAPKKX, 2016 WL 7336730, at *13 (C.D.

Cal. Oct. 11, 2016)

Citing Eksouzian as precedent, found that

“hashtags are merely descriptive devices, not trademarks.”

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Summary

General trend – especially post-2016 and outside C.D.

Cal. – to treat hashtags similarly as other use

Context still relevant in determining infringement

Most cases involved use by a competitor, to promote

the competitor’s own services

Involved preliminary determinations

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Liability – Approval Process

Trademark search of hashtag….

What are the goals of the use?

New brand

Exclusivity

Descriptive use

Contest/ sweepstakes

Long vs. short-term use

Use outside social media

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Levels of trademark search

Full search

Preliminary search (USPTO, social media, Internet)

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Possible red flags

Used by third-party (Especially if almost exclusive)

Aggressive owner

Well-known Mark

Celebrity

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Liability – Monitoring Marks

Ways to monitor

Third-party vendors

Yourself / in-house

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Liability – Monitoring Marks

Good practices

Know the key sites in your client’s industry

Develop contacts at sites for speedy takedowns

Maintain standard takedown notices

Create spreadsheets to track takedown requests and

content once deactivated

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IV. IP Protection


Can a hashtag be registered as a trademark? Yes!

TMEP 1202.18 states, “A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.”

“[T]he addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable.”

TMEP 1202.18(a) states, “A mark may be registrable with a disclaimer of the wording HASHTAG or the hash symbol in cases where they are separable from other registrable matter. Therefore, if a mark consists of the hash symbol or the term HASHTAG combined with wording that is distinctive for the goods or services, the hash symbol or the term HASHTAG should be disclaimed.”

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IV. IP Protection


Considerations for registering hashtags as trademarks.

• Disclaimers - Hashtags require disclaimers, so the underlying verbiage needs to be distinctive.

• Specimens of Use – As hashtags are overwhelmingly used in advertising campaigns and posts online, they typically do not function as trademarks. Therefore, obtaining specimens of use can be challenging.

• Short Term Campaigns – Hashtag campaigns are typically quite short in duration, by the time you have a registration, that campaign might be over.

• Other Trademark Coverage - You may be covered by your other ”non-hashtag” registrations, which have a broader scope of protection.

• Nominal Enforcement Value – It may be very difficult to stop others from using a trademarked or branded hashtag, even by your competitors.

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IV. IP Protection


Enforcement Considerations

• Does the alleged infringement function as a trademark? If the use is nominal or referential, it may be very difficult to force someone to remove that use.

• Streisand Effect. If you object to the use, will it inflame the situation more, and cause more engagement?

• Can you ignore it? Typically, the pain points of a hashtag are short term, and most content is not viewable after a short time.

• Is the use hurting your licensees? Sporting and music events typically include use of hashtags for sponsorships, and you may be contractually required to police such use by others.

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Thank You


Stephen J. [email protected]

hashtag trademarks: legal and practical implications of use by … · 2020. 3. 11. · engaged by...

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