We have previously discussed whether hashtags can be registered as trademarks (yes, they can!) and their increasing prevalence on social media. In this post, we take a closer look at whether brand owners should pursue trademark protection for marks incorporating hashtags.
As we discussed previously, hashtags are inherently meant to encourage conversation and use by many people, which stands in direct contrast to the inherent purpose of trademarks, which is to discourage use by people other than the trademark owner. Beyond this fundamental conflict between hashtags and other types of trademarks, there are several other reasons why brand owners may want to forego registering hashtags as trademarks.
- The mark that is going to be used with a hashtag is likely already protected on its own.Brand owners often want to use hashtags in connection with words, names or slogans in which they already have trademark rights. Adding the hash symbol (#) does not make the underlying mark unprotected, as long as the entire hashtag conveys the same commercial impression as the mark without the hash symbol.
- Enforcing a hashtag trademark could be difficult even with a registration.The history of social media is littered with examples of brands that tried to encourage discussions about their goods or services through creative hashtags only to have those same hashtags used to criticize or mock the brand or otherwise present it in a negative light. Because of the speed (and sometimes the anonymity) with which messages can be posted, shared and deleted on social media, it would likely be difficult for a brand owner to control how its hashtags are being used by individuals, even if they are registered trademarks.
Of course, trademark registration can give brand owners enforceable rights (particularly under the theories of trademark dilution and initial interest confusion), especially against other companies and competitors who try to misappropriate a hashtag trademark. Nevertheless, most social media users are not corporate entities, but individuals, who are more likely to use a hashtag in a manner unintended by the brand owner and against whom it will likely be harder to enforce trademark rights.
- Using a hashtag trademark and subsequently trying to control the “conversation” can make a brand owner unpopular.As discussed above, it may be difficult for brand owners to control the social media “conversations” around their hashtags. But even if they are successful in enforcing their trademark rights, taking action to address critical speech by individuals can reflect poorly on a brand and cause a loss of goodwill amongst consumers.
These reasons are just a few of the considerations that brand owners should take into account when considering whether to pursue trademark registration for a word or slogan to be used with a hashtag. Although registering a hashtag makes sense for certain types of brands under certain circumstances, in many cases, brand owners may conclude that the potential pitfalls will outweigh any benefit acquired through registration.