Three Things to Consider Before Registering Hashtags as Trademarks

By Marc P. Misthal

Hashtags are everywhere. They can be seen on storefronts, in advertisements, on packaging and, of course, on social media. Given their prevalence, it is hardly surprising the hashtags, like domain names before them, have found their way to the U.S. Trademark Office via trademark applications and registrations. Whether it is necessary to register hashtags is another question.

Can a Hashtag be Registered as a Trademark?

In the most recent version of its Examination Manual, the Trademark Office has set forth its position on the registrability of hashtags. Hashtags identify the subject of a particular message or photo posted on social media sites such as Twitter and Instagram (for those who do not know, a hashtag generally consists of the pound or hash sign followed by a descriptive word or phrase). Trademarks, on the other hand, serve as a means of identifying the source of a product or service.  Since hashtags by definition function to identify the subject of a post rather than the source of the post, they generally do not function as trademarks.

Is the Hashtag Used as a Trademark?

To be clear, the Trademark Office has not established a blanket rule that hashtags are not registrable. Indeed, the Trademark Office’s Examination Manual recognizes that in at least some instances, hashtags can serve to identify the source of goods or services—imagine a product’s hangtag with the hashtag #CalvinKlein or a contest requiring contestants to submit their entries to #BrandPhotoContest. Such usage would convey to consumers the source of the product or the contest. And for that reason the U.S Trademark Office has issued registrations for hashtags such as #EverydayMadewell (which has appeared on store windows and in advertising), #BlameMucus and #SayItWithPepsi. On the other hand, if an application to register a hashtag as a trademark is accompanied by a specimen showing the hashtag being used on a social media site to organize users’ comments about the applicant or goods or services offered by the applicant, the application will be refused.

Is There an Advantage to Registering a Hashtag?

Having established that the Trademark Office will register hashtags as trademarks, the real question is not whether it is possible to register hashtags as trademarks. The question is whether it is necessary to register hashtags as trademarks in the first place.

To a large extent the answer to this question depends on the nature of the hashtag. Where the hashtag which is under consideration for registration is in the form of #RegisteredTrademark or incorporates an existing registered trademark, from an enforcement point of view there is likely no need to register the hashtag. The test for determining whether a trademark infringes another is whether consumers are likely to be confused between the two uses, not whether the two uses are identical. Thus, if a third party were to start using #RegisteredTrademark and the trademark owner only had a trademark registration for their mark (without the hashtag), the trademark owner would be able to prevail over the user of #RegisteredTrademark. So in that case registration of the hashtag would not be necessary.

Where services are being rendered through social media, it might very well be necessary to register a hashtag as a trademark. For example, if a company offered customer support by telling their users to label their posts with the hashtag #TrademarkService or #TrademarkHelp, and then the company’s customer support personnel responded to those posts, it might be possible to register the hashtag for use in connection with online customer support. Similarly, if a company sponsored a contest and instructed contestants to submit their entries to #TrademarkContest, it might be possible to register the hashtag for use with conducting contests.  A registration might cover goods or services not covered by other registrations and would aid in enforcement efforts.

While not strictly necessary, in some cases it might be helpful to have a registration for a hashtag. Many websites have their own trademark enforcement policies, and although they may be willing to take action where a trademark owner has a registration for its mark (without a hashtag) and a user is using #RegisteredTrademark in an infringing manner, a website might be more inclined to act where the trademark owner has a registration corresponding to the hashtag. This is especially true when dealing with websites located outside of the U.S.

In sum, in most situations there is no need to rush out and register hashtags as trademarks, particularly where the hashtag is #RegisteredTrademark. Nevertheless, it has become the trendy thing to do—The Wall Street Journal had an article about such registrations earlier this year, and Women’s Wear Daily has even written about it. The sound practice is to evaluate your trademark portfolio and how your company is using hashtags in its social media campaigns, and then determine whether it makes sense to register hashtags, legally, strategically, and economically.