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John B.
Farmer

 

Lawrence E. Laubscher, Jr.

 

Ian D. Titley

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When Hashtagging for Your Business, Beware of Others’ Trademarks

Wednesday, September 19th, 2018

Using the wrong hashtag in marketing can backfire on you.

In 2014, DiGiorno noticed the hashtag #WhyIStayed trending on Twitter, so it tried to catch the wave by tweeting: “#WhyIStayed You had pizza.”

The DiGiorno tweeter should have checked the hashtag’s meaning before posting. It was being used by women to discuss their experiences in abusive relationships.

It’s not delivery. It’s a social media firestorm. DiGiorno apologized profusely.

Using the wrong hashtag for your business also can get you in a different kind of trouble – trademark infringement. Thus, this question: Can your business can safely use a hashtag in its social-media marketing when that term is another business’s trademark?

Answer: It’s risky.

You must avoid creating a likelihood of confusion amongst consumers, which is the essence of trademark infringement. You can’t use another company’s trademark as a hashtag if doing so might create a false appearance of sponsorship or affiliation between your business and that company.

Consider these tips:

Tip #1. Realize your business can fall into this hashtag trademark-infringement hole unwittingly. You might not realize the term you want to use as a hashtag is another business’s trademark.

Tip #2. So you can identify the trademarks of others, learn to spot them.

A trademark is a distinctive business, product, or service name, or a distinctive promotional slogan. Sometimes a company will label its trademark property with the designation TM, SM, or ®, but many companies fail to do so, so don’t assume something lacking such marking is free to use.

Just because another business uses something as a hashtag doesn’t mean your business is free to also use it. That hashtag might be a trademark slogan.

If you are not certain whether something is another business’s trademark, research it. A trademark attorney should do this clearance. If you do it yourself, realize you’re taking a risk.

Tip #3. Too close can kill you. Your hashtag use doesn’t have to exactly match another business’s trademark for there to be a problem. It’s usually trademark infringement to use a confusingly similar trademark (which could be a hashtag) for the same goods or services or even related goods or services.

Tip #4. Supervise your hashtag usage. Often there is little management oversight of business social-media posting. Especially watch out for members of your sales staff doing independent social-media marketing of your company.

Tip #5. If you want to play it really safe:

Never use a famous trademark (e.g., MERCEDES) as a hashtag. Famous marks have extra protection against use by others.

Never use the trademark of any business in your industry or a related industry as a hashtag.

There are instances where you can legally do those things, but that involves sophisticated legal analysis.

Tip #6. Nevertheless, it’s generally okay to use someone else’s trademark in advertising when doing so is necessary to engage in truthful comparative advertising (“We sell for less than #Amazon”) or to provide a complementary good or service (“We repair #Honda automobiles”).

If you do this, use that other business’s trademark only to the extent necessary to make these statements. Any use that’s unnecessarily frequent or prominent can be infringement. Also, make certain your usage doesn’t create any misimpression you have an affiliation or endorsement relationship with the mark owner.

The right hashtag can have your business trending on social media. A trademark-infringing hashtag could have you trending toward big legal bills and unprofitability. Be careful out there.

Written on September 19, 2018

by John B. Farmer

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