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Hashtag trademarks: what can you protect?

30-03-2016

Brands seeking to make the most of social media are increasingly filing trademark applications for hashtags related to their products and marketing campaigns. Novagraaf’s Claire Jones explains what’s registerable when it comes to social media hashtags.

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?

According to research by Thomson Reuters CompuMark, 1,398 applications to trademark specific hashtags were filed globally during 2015. That number has been growing consistently since 2010, when just seven companies applied to trademark hashtags. The number of successful applications also appears to be rising. A total of 103 hashtag trademarks were registered in 2014, according to Thomson Reuters CompuMark’s research.

#whatisregisterable?
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; however, it does not automatically turn a brand name or advertising slogan into a registerable trademark.

The USPTO has gone as far as to issue guidance in respect of hashtags due to the number of recent applications it has received. In particular, it notes: “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.” 

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 the UK common law right 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.

#generic?
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.

#infringement?
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.

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

Click here to download the Thomson Reuters CompuMark report

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