#Trademarks: Are hashtags protected by trademark law?

On August 23, 2007, Chris Messina asked a new and growing Twitter audience, “How do you feel about using # (pound) for groups. As in #barcamp [msg]?” The former Googler and current Uber executive is often credited with inventing the “hashtag,” a word or phrase preceded by the # symbol. Hashtags categorize topics, making it easier for social media users to organize and search for particular content. Although the hashtag first gained popularity on Twitter, Messina did not attempt to patent the idea and hashtags are now ubiquitous across platforms like Facebook, Snapchat, Instagram, and Tumblr.
The meteoric rise of platforms like these has led many businesses to treat social media as a key component of their marketing strategy. Today, that strategy also involves attempts to register hashtags as trademarks. In April of this year, the United States Patent and Trademark Office (USPTO) addressed “Hashtag Marks” in the Trademark Manual of Examining Procedure (TMEP), where they explained, “A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.” TMEP §1202.18. In 2010, only seven applications were submitted to register specific hashtags. By 2015, that number had soared to 1,042 applications in the United States alone. Why have companies started to seek registration for their hashtags in increasingly large numbers?
Aaron P. Rubin, a partner at Morrison & Foerster LLP remarks, “You often see companies register their tag lines or slogans so they can protect those trademarks and prevent competitors from using them. A hashtag trademark is the same basic concept.” This line of reasoning has led to the successful registration of hashtags like Madewell’s #everydaymadewell, PepsiCo’s #SayItWithPepsi, and Kentucky Fried Chicken’s #HowDoYouKFC. Rob Davey of Thomson Reuters explains that while PepsiCo would want consumers to use #SayItWithPepsi, they would not feel the same way if Coca-Cola used it to create buzz for their own products. In theory then, registration should help businesses by preventing competitors from using hashtags for their own advantage. In practice, is that how it works?
The issue arose in Eksouzian v. Albanese (C.D. Cal. 2015), where the district court considered whether the use of #cloudpen breached a settlement agreement the parties had signed on to. Defendant owned the trademarks “CLOUD PENS” and “CLOUD PENZ” and the agreement prohibited Plaintiff from using “the words CLOUD, CLOUD V, and/or CLOUD VAPES in close association with the words “pen,” “penz,” “fuel,” “pad”…in association with Plaintiff’s products as a unitary trademark.” Although this decision came after the TMEP asserted that hashtags could be registered, the court held that “Plaintiffs did not breach the SA through their use of ‘#cloudpen,’ because hashtags are merely descriptive devices, not trademarks, unitary or otherwise, in and of themselves.” There are those that agree with the decision, arguing that consumers do not see hashtags as identifiers of source and that suggests they are not trademarks. After all, the Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof” used “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods.” For the rest of the trademark world however, the decision introduced a great amount of uncertainty to the field, as it is arguably in conflict with the PTO’s position that hashtags are registrable as trademarks.
What does this mean for businesses? The decision in Eksouzian has not yet reached the appellate level and remains the only instance of litigation and guidance concerning hashtags as trademarks. The high level of uncertainty surrounding the matter should discourage businesses from spending resources on registration applications, at least until courts take up the issue again and provide more answers. Until then, we are left wondering whether courts will enforce trademark protection for hashtags.
And how does the “hashtag godfather” feel about the registration of hashtags as trademarks? Messina explains, “For my part, and for the interests that motivated me to ‘give away’ the hashtag in 2007, trademarks don’t belong on hashtags. Hashtags are a kind of conversational commons, and should be owned by no one but the crowd.”
Milagros Villalobos Navas is a J.D. candidate, 2018, at NYU School of Law.