Hashtag with Care
Hashtags (the “#” symbol) are used across social media to make it easier for users to identify and find posts on a specific topic.
The hashtag can also be used ironically and self-mockingly, as with #firstworldproblems.
The symbol (also known as the pound sign or number sign) has been around since at least 1850. It’s been used to flag topics on Twitter since 2007 and the word “hashtag” was added to the Oxford English Dictionary in 2014.
The hashtag symbol is just a form of punctuation, like a comma or question mark, and as such isn’t protected as anyone’s intellectual property.
However, using a hashtag improperly can get you sued for trademark infringement, as several recent cases illustrate.
Likelihood of Confusion
The US Patent and Trademark Office (USPTO) examines applications for federal registration of trademarks and decides whether or not to grant them. One common reason for refusing a registration is a “likelihood of confusion” between the applicant’s mark and a mark that already exists.
“Likelihood of confusion” exists when marks are similar AND the goods or services they’re used with are so related that consumers could mistakenly believe they came from the same source.
Marks don’t have to be identical to be confusing. Marks might sound alike, be visually similar, or create the same general impression.
Trademarks are registered for specific “classes” of goods and services, for example Apparel, Beds, Bridges, Undertaking, Cutlery, and Nanotechnology. There are hundreds of these classes.
The trademark STURDEE when used for a type of bed wouldn’t necessarily be confused with STURDEE when used for a type of bridge, for example.
However, the mark TOPPER when used for coats might be confused with TOPPER used for hats, because hats and coats are closely related.
The same principles apply when one business is suing another for trademark infringement.
Courts often apply factors derived from the 1961 case of Polaroid Corp. v. Polarad Elecs. Corp.:
- How strong the plaintiff’s trademark is
- How similar the marks are
- How similar the goods or services are
- The likelihood that the plaintiff will “bridge the gap” and expand into the defendant’s product area
- The defendant’s intent in adopting the mark
- Evidence of actual consumer confusion
- Buyer sophistication
- Quality of the defendant’s products (the lower the quality, the greater the harm)
In a Massachusetts case (Pub. Impact, LLC v. Boston Consulting Grp., Inc.), the court found that the use of the defendant's Twitter handle "@4PublicImpact" and hashtag #publicimpact created a likelihood of confusion with the plaintiff’s registered trademark “PUBLIC IMPACT.”
The court noted the fact that the plaintiff and defendant were competitors made it even more likely that consumers would be confused.
In a Mississippi case (Fraternity Collection, LLC v. Fargnoli), Fraternity Collection, a company that designed and manufactured clothing sued one of its designers when she began selling her designs to a competitor. The designer used the hashtags "#fratcollection" and "#fraternitycollection" in her social media accounts.
The court found that the company stated a cause of action for false advertising under the Lanham Act (which governs trademarks), saying that “hashtagging a competitor's name or product in social media posts could, in certain circumstances, deceive consumers."
Hashtag with Care
To reduce the risk of being sued for trademark infringement, it’s a good idea to avoid the use of your competitors’ trademarks in hashtags for social media posts promoting your own goods and services.