Hashtag trademarks: what can be protected?

• Author: Claire Jones
• Position: Trademark Attorney, Novagraaf, London, United Kingdom

Recent research by Clarivate Analytics (formerly Thomson Reuters CompuMark) shows that while just seven companies submitted applications for trademark-specific hashtags in 2010, the number of such applications has been rising steadily, spiking in 2016 with a 64 percent annual increase and some 2,200 applications to register trademark-specific hashtags filed globally.

Social media have become wildly popular means by which to stimulate interest in and reactions to any imaginable event, product or service. They are built around a culture of sharing and openness, and “real-time” marketing. While these tools have become a normal feature of the digital landscape, the sharing culture on which they depend can present some intellectual property-related challenges.

whatisregisterable?

The first is tied up with what may or may not be registered as a trademark. A trademark is a sign that is capable of distinguishing the goods and services of one company from those of another. In sum, it allows consumers to identify the source of a product or service. While a #hashtag alone is a generic symbol with no source-identifying significance, used in conjunction with a product name or campaign tagline it may function in the same way as a trademark and be registerable as such.

Used in this way, a hashtag is a simple yet powerful means of stimulating interest in or reactions to an event, product or service. But while such use can promote a brand, product or service, generate sales and boost brand recognition, it does not automatically turn a brand name or advertising slogan into a registerable trademark.

So when exactly is it possible to register a hashtag used in a marketing campaign as a trademark? Guidance from the United States Patent and Trademark Office (USPTO) states: “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.”

Hashtag trademarks that have been successfully registered as such in the United States include: #smilewithacoke and #cokecanpics (The Coca-Cola Company), #McDstories (McDonalds), and #makeitcount (Nike).

In the United Kingdom, a mark is registerable if is distinctive and has the capacity to individualize the goods and services of a particular undertaking. If such a link exists and the mark does not communicate a message that could apply to any other undertaking then, as with other...