What can you #trademark?

Claire Jones, Novagraaf

Coca-Cola has recently applied to the US Patent and Trade Mark Office (USPTO) for two Twitter hashtags: #cokecanpics and #smilewithacoke. Novagraaf’s Claire Jones explains what’s currently registerable when it comes to social media hashtags.

Although hashtags have been used in social media for some time, it was Twitter that led to their use on a widely popular scale. In 2009, it introduced the use of hashtags to group words of a tweet to a theme. By 2010, hashtags were being used to identify trending topics on the Twitter homepage.

Since then, hashtags have become widely used across a variety of social networks, as well as appearing in almost every type of media possible. There is even the term Verbal Hashtagger (yes, it is a real thing) to describe those among us who verbalise the word ‘hashtag’ in real-life conversations.

Social media by its very nature is built upon a culture of sharing and openness, and ‘real-time’ marketing, all of which has become the norm. However, this is creating a challenging landscape – where do the boundaries of intellectual property (IP) lie?

A hashtag is an expression of an idea or a theme; it promotes something; and, apart from brand identity, can be searched for and commented on. If it is used to promote a brand, product or service, it generates sales and brand recognition. Therefore, should it not be protected?

Hashtags are an important marketing tool; however, they do not automatically turn a brand name or advertising slogan into a registerable trademark.

The USPTO has gone as far as issuing guidance in respect of hashtags due to the number of recent applications.

“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.” (The full guidance can be reviewed here).

In the UK, for a mark to be registerable, it must be distinctive and have the capacity to individualise the goods and services of a particular undertaking. If there is that link, and the mark does not send a message that could apply to any undertaking, then, as with other trademarks, a hashtag-based mark will be registerable.

Extensive use of a hashtag could also give rise to common law rights of passing off, but proving that your company has acquired the requisite goodwill in the hashtag, needed to have the right to stop someone else from using it, is likely to be challenging.

In the UK, cheese producer Wyke Farms organises 'Free Cheese Fridays', which has been running for four years and draws more than 25,000 entrants each month. Each Friday, a winner is selected and receives 300g of cheddar cheese. Its success with #freecheesefriday has resulted in a successful application for the trademark 'Free Cheese Friday'. Wyke claims that it is the first UK brand to register a mark linked to a social media campaign.

Although the case highlights the willingness of the UK’s IP Office (IPO) to accept social media usage as evidence of acquired distinctiveness, does it really change that much? If the campaign was run on a different forum, it is likely that Wyke Farms would still have been able to prove distinctiveness through use and, therefore, register the mark.

The hashtag symbol is a generic term, with no source-identifying significance. The question of registerability will therefore lie with the term accompanying the hashtag.

Does including a brand’s hashtag trademark in a social-media post make you liable for trademark infringement? If the use makes it appear as if there is a connection or link with the trademark owner, it could well do. The question will need to be asked whether the use of a hashtag is creating a likelihood of confusion or association with the trademark owner or simply promoting the intended social media message.

The possibility of a tweet ‘going viral’ can happen very quickly and there will be a delicate balance between infringement and capturing the public’s attention at a certain moment.

In a recent case in the US following the death of Eric Garner, two US companies applied to register “I can’t breathe” and “#Icantbreathe” as trademarks. The words ‘I can’t breathe’ were used as a rallying slogan in protests across the world against the decision not to charge the police officers involved. There were more than 1.3 million tweets for #Icantbreathe.

Both applications were refused by the USPTO as there may have been the suggestion of a connection with Mr Garner. It further commented: “a hashtag generally serves no source-indicating function and adding such symbol or term to an otherwise unregisterable mark does not render the mark registerable”.

Following the Charlie Hebdo attack in France, the #JeSuisCharlie hashtag was considered to be one of the most retweeted hashtags of all time. Not only that, but in France alone, there were more than 50 separate applications to register the phrase as a trademark, none of which came from the actual creator of the original image and words.

US car care company Turtle Wax batted heads with UK-based Dodo Juice last year. Both companies ran a campaign asking customers to take a ‘selfie’ in the reflection of their cars and post them to the company’s social media platforms. Both companies used #reflectie to promote their competitions.

Dodo Juice launched its campaign more than a week before TurtleWax, but Turtle Wax had applied to register #reflectie prior to the launch of both campaigns and demanded Dodo stop using #reflectie, claiming all rights to it in the US, UK and wider EU. The resulting argument was conducted over social media, until both campaigns seemed to run their course.

Hashtags are a great way to promote a business or marketing campaign but, as with all things, #proceedwithcaution.

Claire Jones is a trademark attorney in the London office of Novagraaf

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