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Volume XI, Number 63

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Hashtag Trademarks: #ItsAllAboutTheUse

Brand owners have embraced hashtags (words or phrases preceded by a hash or pound sign - #) as a way to both engage consumers and track social media posts regarding a specific product or topic.   Not surprisingly, the increased utilization of hashtags has led to a rapid increase in applications for hashtag marks in United States Patent and Trademark Office (USPTO) – particularly for services. However, many of these marks fail to register for technical reasons that can easily be dealt with if understood and addressed prior to filing.

The USPTO examines applications for hashtag-fashioned marks in the same manner as any other mark.  Therefore, a hashtag preceding an otherwise unregistrable term, phrase, or symbol will not be sufficient to overcome a refusal to register based on genericness, descriptiveness, or likelihood of confusion.  Adding a “#” symbol to merely descriptive wording, for example, only creates a mark that is still merely descriptive.

In addition to basic registrability issues, one of the biggest impediments to registration of hashtag marks is the difficulty in providing specimens that are sufficient to show the USPTO that the mark functions as a source indicator for the goods and/or services. For example, the mere use of the “#” symbol together with wording on a social media site will not prove “use in commerce” for the goods/services, and instead may be viewed as nothing more than a data tag or a filter to organize users’ comments about the wording following the symbol.  Because the hashtag symbol alone is seen as a data tag, the ideal USPTO specimen would not merely show the hashtag mark in a string of text or in the same small font of a text or tweet.  

The best hashtag mark trademark specimens show use of the mark in the same manner as any other trademark, e.g., on a label, on a container, or a display associated with the goods; or in the same manner as any other service mark, e.g., in advertising, brochures and webpages where the mark appears in close proximity to the related goods and/or services.  

With a little thought and planning upfront, hashtag trademarks can become an important tool in protecting online brand identity.

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© 2020 Sterne KesslerNational Law Review, Volume V, Number 181
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About this Author

Associate

Ms. Dalier is an associate in the Trademark, Advertising, and Anti-Counterfeiting Practice.  She focuses her practice on trademark portfolio management, prosecution, and matters before the Trademark Trial and Appeal Board. She counsels clients on mark selection, clearance, and on the creation and maintenance of trademark rights worldwide.  She conducts due diligence reviews of intellectual property assets, and works with clients on domain name monitoring and trademark enforcement. With more than ten years of experience in trademark law, she is well versed in all aspects...

202.772.8633
Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...

202-772-8688
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