United States: Hashtags cannot be protected as trademarks

mark2The hashtag, by its insertion before an expression or a word allowing contents to be classified by theme, has in a few years, become an essential tool for social networks, for private individuals as well as companies through their trademarks. The daily impact of this new communication tool in our connected society is undeniable. It is a direct channel of communication and offers a real proximity with the client.

It is interesting to observe that hashtags can be given the same definition as a trademark as per the Code of Intellectual Property as well as the European directive 2008/95/EC and must therefore be protected in the same way, provided however that registration is sought and that the established requirements are met. In France, Article L.711-1 of the Code of Intellectual Property states that: “The following may constitute [such] sign: a) All kinds of designations such as: words, word groupings, last names and geographical names, pen names, letters, numbers, abbreviations (…)”. A hashtag could therefore be protected under trademark law if it meets the same requirements applicable for trademarks, namely distinctiveness, availability and lawfulness.

Formal registration definitely allows a hashtag to be protected against any unlawful reproduction or imitation. However, it appears somewhat incongruous that the holder of a trademark on a hashtag prohibits its use by web users, as the hashtag’s relevance lies in its sharing and propagation. Only its use by a competitor in his business activities would be likely to be suppressed and deemed to be an infringement.

There are some companies, mostly in the United Sates, that have managed to register trademarks containing the famous symbol ‘#’. For example, the operator T-Mobile USA has filed the trademark ‘#7NIGHTSTAND CHALLENGE’ (n°4671787) with the USPTO, United States Patent and Trademark Office. In France, the trademark ‘#CLIENT ADDICT’ has for instance been filed by Futur Telecom under n°4096205 in classes 9, 35, 38 and 42.

However, recently the California Central District Court, in its decision in the case Eksuzian. v. Albanese, dated 7 August 20151 took the position that hashtags could not be registered as trademarks due to their descriptive nature: ‘« hashtags are merely descriptive devices, not trademarks (…)’. However, according to USPTO, commercial trademarks are words, names, or symbols used to distinguish one product from another. They must have a distinctive characteristic. There are generally 4 levels of specificities from “arbitrary and fanciful” to “generic”. For the more arbitrary and fanciful ones, the USPTO2 allows the registration of a hashtag as trademark. On the other hand, generic trademarks do not benefit from this protection. The stand of the USPTO is more logical than that of the court: the purpose of trademark law is to protect and promote the distinctive characteristic, and to prevent other bodies from taking advantage of such distinctive characteristic. A hashtag potentially promotes the name, the reputation or even the product of companies.

As such, be in in France, at community or even international level, it would seem undeniable and logical that in the future and despite this decision of the California District Court, a distinctive hashtag would continue to be registered as trademark. It will be interesting to see how the situation pans out…

1 California Central District Court, Eksuzian. v. Albanese, 7 August 2015.

United States Patent and Trademark Office.