Monday, October 16th, 2017
In 2012, McDonald’s launched a Twitter marketing campaign based on the hashtag “#McDStories.” It wanted customers to tweet about good times at McDonald’s. Unfortunately for McDonald’s, negative tweets such as these stole the show:
“Dude, I used to work at McDonald’s. The #McDStories I could tell would raise your hair.”
“Fingernail in my BigMac Once #McDStories.”
“Hey! Wanna eat PINK SLIME? [link to picture of pink slime] coz you did . . . #UnhealthyFood #McDStories.”
Many companies not only try to build a hashtag-driven marketing campaign on Twitter, Facebook, and Instagram, but they also seek to register hashtags as trademarks.
That raises this question: Should your company try to register marketing hashtags as trademarks?
Businesses have been trying to do so. Over 4500 hashtag trademark registration applications have been filed in the U.S.
Such applications frequently fail. Out of those 4500ish applications, less than 1300 have resulted in hashtag trademark registrations.
Among the hashtags that have been registered as trademarks are #LoveTravels by Marriott, #GetThanked by T-Mobile, and #GoFor2 by Hershey.
Before your company goes down that road, realize there are important limitations on registering a hashtag as a trademark and on what you could stop with a hashtag trademark.
To register a hashtag, you must use the word or phrase in the hashtag as a source indicator for your product or service, such as using the name of the product or service itself, or using a slogan that promotes the sale of that product or service.
So, for example, #McDonalds or #I’mLovinIt might be registrable as trademarks.
To back up this requirement, the federal trademark office requires you to show use of the hashtag outside of social media messages, such as on in-store displays or in television commercials. You won’t get a trademark registration if you use your hashtag only in social-media posts.
Next, you can’t get trademark protection for merely informational matter. Here are examples of what you can’t have a trademark on: a generic name (car), merely descriptive language (four-wheeler), an everyday phrase (Boston Strong), advertising puffery (we sell for less), or religious quotes or citations (John 3:16).
That’s true whether or not you include a hashtag. This means you can’t get a hashtag trademark registration on a trendy slogan and stop others from using it.
Next, pursuing trademark registration for a hashtag may not be worth it. If your company already has a trademark registration for a particular word or phrase, getting a registration for the same word or phrase preceded by a hashtag won’t add meaningful protection when fighting infringers who use confusingly similar trademarks containing hashtags.
I would consider seeking a trademark registration on a hashtagged word or phrase only if that word or phrase will always be used in hashtag form both on and offline. That means you’re always including the # symbol because it’s part of the image you want to cast.
Most importantly, understand what you cannot stop with a hashtag trademark registration.
You won’t be able to stop online use of your hashtag by others to criticize your goods or services, as McDonald’s learned.
Also, you won’t be able to stop hashtag uses by others, even competitors, that are merely informational or part of legitimate comparative advertising. For example, CarMax could not stop a competitor from tweeting “We sell for less than #CarMax.”
Instead, you could stop only uses that might confuse the public as to whether the hashtag user is part of your company, or sponsored by, endorsed by, or affiliated with your company.
Finally, as with all trademarks, think about what your goals are in seeking trademark registration and how much you’re willing to spend to meet them.
Trademarks don’t police themselves. If you don’t stop use by others of confusingly similar trademarks, whether they include hashtags or not, your trademark rights can shrink and eventually die.
I tell businesses that, if you only register your trademark but don’t invest in infringement monitoring and policing, you’re only protecting your ability to use that trademark. Assume you won’t be able to stop others from using highly similar trademarks.
If you want to stop others from getting too close to your trademark, you need to have infringement monitoring and policing done from the beginning. That can be expensive.
Clint Eastwood once famously quipped “A man’s got to know his limitations.” The same applies to claiming trademark rights to hashtags.
Written on October 16, 2017
by John B. Farmer
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