In August of 2018, the U.S. Trademark Trial and Appeal Board (TTAB), which decides cases certain trademark cases, refused rapper will.i.am’s attempt to register a hashtag as a trademark. Specifically, i.am.symbolic,llc (will.i.am’s company), attempted to register #WILLPOWER for a variety of apparel goods. The Trademark Examining Attorney refused his application because WILLPOWER WEAR was already registered for “Hats; Jackets; Pants; Shirts; Shoes,” and i.am.symbolic appealed the decision to the TTAB.The TTAB agreed with the Examining Attorney that #WILLPOWER was confusingly similar to the registered logo. I.am.symbolic argued that the addition of the hash sign, along with the notoriety of will.i.am and his use of #WILLPOWER in connection with his musical endeavors, created a distinct impression from the registered logo. The Board was not persuaded.
In addition to its precedential holding that the #WILLPOWER mark was confusingly similar to the WILLPOWER WEAR logo, the TTAB provided commentary on the registrability of hashtags as trademarks generally.
In order for a word or phrase to be claimed as a trademark, it must be “distinctive.” That is, it must serve to identify certain goods or services. Marks that are merely the generic term for the goods or services are not protectable. For instance, you cannot claim trademark rights in “Soap” for soap. Marks that are descriptive of the product can only be registered if the user proves that the mark has gained “secondary meaning” among consumers as an identifier of the source of the goods. So, if a lotion company tried to register the mark “Super Hydrating” for hand cream, it would need to prove that consumers associate the term with its brand. Marks that are arbitrary or “fanciful” (made-up words), are the strongest trademarks, and users do not have to prove secondary meaning. An example of an arbitrary trademark would be a computer company using “Soap” for laptops.
The TTAB in In re i.am.symbolic, llc explained:
“[A] hash symbol or the word HASHTAG generally adds little or no source-indicating distinctiveness to a mark. We find, in this case, the hash symbol does not have a source-indicating distinctiveness and at most simply appears as the social media tool to create a metadata tag.”
In re i.am.symbolic, llc, No. 85916778 (TTAB Aug. 16, 2018). The Board pointed to the rule set out in the Trademark Manual of Examining Procedure, which states that the addition of “#” or “HASHTAG” does not render an otherwise unregistrable mark registrable. TMEP §1202.18.
So, when considering whether to claim trademark rights in a hashtag or applying to register a hashtag as a trademark, brand owners should take care to consider whether the mark, ignoring the hash sign, is (1) sufficiently distinctive to qualify as a trademark, and (2) clear for use (i.e., not confusingly similar to other marks on the register). Otherwise, it might be #denied.