As the explosion in popularity of various social media outlets continues, new norms are increasingly clear: once-descriptive social media hashtags and Twitter handles are now valuable assets that we associate with specific parties. Businesses, in particular, should have social media account usernames and hashtags cleared before using them in marketing and advertising their goods or services.
Initially, hashtags and Twitter handles were seen as merely descriptive devices for directing consumers to the location of promotions, not as trademarks. But as the times change, so does the importance of these symbols. They are now the key to accessing discussions and trending topics on social media, and they are relevant in ways that no one could have guessed ten years ago. Recent litigation between two competitors, Eksouzian and Albanese, examined the evolution of these social media tools into intellectual property.
In Eksouzian v. Albanese, the parties both made and sold compact vaporizer pens and had settled a trademark infringement dispute. However, in a Motion to Enforce the Settlement Agreement, the parties later aired allegations that each violated provisions of the agreement. The agreement revolved around avoiding consumer confusion by limiting usage of the words “cloud” and “pen,” among others, and the court was called on to evaluate the impact of using #cloudpen in Instagram posts.
The court cited the Trademark Manual of Examining Procedure (“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”), and noted that “[t]he addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically cannot render it registrable.” In accordance with this view, the Court found the plaintiffs’ use of #cloudpen to be a non-infringing, merely descriptive device for directing consumers to plaintiffs’ promotion.
If defendants had demonstrated that their mark CLOUD PEN had gained secondary meaning and thus was itself registrable, however, the hashtag form (#cloudpen) might have been held to be an infringing trademark use. The Trademark Manual allows for registration of marks including the hash symbol (#) only if they function as an identifier of the source of goods, which is to be determined on a case-by-case basis. The Manual gives as an example its view that #SKATER for skateboarding equipment is merely descriptive and not registrable, but #INGENUITY for business consultation services is registrable with a disclaimer of the hash symbol.
Numerous trademark registrations already exist for marks that include the hash symbol. For example, see #BOSSBABE (Reg. No. 4750980) and #FIXITJESUS (Reg. No. 4743330).
As time moves on, we will likely see more litigation surrounding hashtags, as they evolve from social media tool to intellectual property. An interesting twist in this trademark litigation is going to result from the very nature of hashtags, when considering the test for trademark infringement, which is a likelihood of confusion. One factor tending to disprove confusion and therefore infringement is use of the marks in connection with unrelated goods or services. However, because a specific hashtag creates a single feed for all posts under that tag, regardless of what goods or services may be involved, consumer confusion is in fact quite likely, despite the unrelated nature of the parties’ goods or services.
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