The Trouble with Tags: Seeking Mark Protection for Corporate Branded Hashtags - More Trouble Than It's Worth?

• Author: Salter, Kendall

1. INTRODUCTION: HASHTAGS AND MARKETING, A LOVE STORY OR A LIABILITY? II. BACKGROUND: CORPORATIONS HOP ON THE #BANDWAGON A. Corporate Engagement with Hashtags B. Overview of Trademark Law 1. Use in Commerce 2. Distinctiveness 3. Free Speech Tensions in Trademark Law C. Can a Hashtag Be Trademarked? 1. Recent Scholarship 2. Hashtag Trademarks in the Courts III. ANALYSIS: PROSPERITY AND PITFALLS A. Potential Corporate Benefits of Hashtags B. Potential Corporate Drawbacks of Hashtags C. Theory and Policy D. Analyzing the Eksouzian Holding IV. RECOMMENDATION: MORE TROUBLE THAN IT IS WORTH A. Resolving Doctrinal Tension Between Courts and the USPTO B. The High Cost of Policing C. The Constant Threat of Genericism D. Policy Concerns V. CONCLUSION: THE WAIT-AND-SEE APPROACH I. INTRODUCTION: HASHTAGS AND MARKETING, A LOVE STORY OR A LIABILITY?

   Hashtags play a central role in online, social media-based communication for hundreds of millions of users, both in the United States and around the globe. (1) Facebook alone boasts a monthly user count of over 1.5 billion. (2) Instagram hosts another approximately 400 million each month, with Twitter not far behind (at approximately 320 million). (3) These staggering numbers represent a still-to-be-tapped bonanza for corporations and advertisers, who are afforded constant and nearly instantaneous access to potential consumers through a simple, searchable device. (4)

   Hashtags, composed of a term or terms, grouped without spacing and preceded by a pound symbol, are a form of metadata, "data that describes other data." (5) This tool allow social media users (6) to search tweets, Instagram photos, Facebook posts, and more through one-click navigation via a hashtag-turned-hyperlink. (7) Hashtags are a tool, a functional method by which users can organize their online social experience, interact with brands, curate their feeds, and examine breaking news and new cultural trends. (8) They are also a valuable form of expression, adaptable to everything from social commentary to literature. (9) This flexibility, combined with the device's omnipresence across social media, no doubt whets the appetites of many corporate executives, eager to turn fun and fancy into a financial windfall. Corporations reap many benefits from the proliferation of the hashtag. (10)

   This Note explores recent scholarship on the trademarkability of hashtags and the unique challenges corporations face in seeking to enforce their exclusive rights in such marks. This Note analyzes whether seeking such protection is worth the trouble and investment in light of (1) a seeming tension between the courts and the U.S. Patent and Trademark Office (USPTO) over the validity of trademark protection for hashtags; (2) the potential hassle of enforcement; (3) the specter of genericism; and (4) concerns about limiting free speech.

   It further examines alternative theories for benefits corporations may reap from investing in hashtag-based marketing, even in the absence of trademark protection. Recent scholarship has discussed the ability to trademark hashtags as a matter of policy. This Note explores whether or not, in recognition of the USPTO's willingness to grant such exclusive rights, it is worthwhile for corporations to seek trademarks for brand hashtags in light of the potential costs, hassles, and potential negative public perception.

2. BACKGROUND: CORPORATIONS HOP ON THE #BANDWAGON

   Businesses can successfully take advantage of hashtags by using them in a way that reflects a "core brand message." (11) As corporations devote increased resources to maximizing the marketing potential of hashtags, they likewise look for the most effective way to generate positive "brand engagement. (12) On Twitter, a hashtag is a quick and easy way to generate discussion about advertisements, (13) and increase interaction between brands and potential consumers. (14)

   1. Corporate Engagement with Hashtags

      Savvy corporations can turn to hashtags as an efficient way to bring in new customers by tapping into the viral nature of social media, particularly by associating their brand with trending topics, holidays, or other social phenomena. (15) In 2015, 97% of Interbrand 100 brands--a rating of the best global brands--(16) that Tweeted incorporated a hashtag. (17)

      Over the last 5 years, nearly 2,900 trademark applications have been filed for hashtag word marks, including approximately 1,400 in 2015. (18) That number is up from a paltry seven such applications in 2010. (19) Successfully registered marks include #blamemucus, (20) #LikeAGirl, (21) #TheFitNewYorker, (22) #sayitwithpepsi, (23) and #steakworthy, (24) among others (25)

   2. Overview of Trademark Law

      The Lanham Act (codified in 15 U.S.C. [section] 1051-[section] 1141n) defines a trademark as "any word, name, symbol, or device, or any combination thereof," used in commerce to indicate the source of the goods, and capable of distinguishing goods from those "manufactured or sold by others." (26) The definition of a service mark is nearly identical, replacing goods with "services." (27) The primary requirements of a mark, then, are that it be (1) used in commerce; (2) distinctive, either inherently or through acquired distinctiveness; and (3) serve as a source indicator for the holder's goods and services. (28) Section two of the Lanham Act states that, subject to statutory restrictions, "no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature." (29)

      The Lanham Act reflects two theories of justification for granting intellectual property rights in trademarks, including protecting a company's earned "goodwill" and reputation, and protecting the public by preventing consumer confusion. (30) The Supreme Court has recognized that "[n]ational protection of trademarks is desirable ... because trademarks foster competition and the maintenance of quality by securing to the producer the benefits of good reputation." (31)

      The Supreme Court has held that "almost anything" capable of distinguishing one holder's goods or services from another is eligible for protection by trademark, so long as it is inherently distinctive, is used in commerce, and is a source indicator for the relevant goods or services. (32) In his majority opinion in Qualitex Co. v. Jacobson Prod. Co., Breyer wrote:

      Since human beings might use as a "symbol" or "device" almost anything at all that is capable of carrying meaning, this language, read literally, is not restrictive. The courts and the Patent and Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a particular sound (of NBC's three chimes), and even a particular scent (of plumeria blossoms on sewing thread). (33) 1. Use in Commerce

      To satisfy the requirement that a mark be used in commerce, an applicant must establish "the bona fide use of a mark in the ordinary course of trade," such as when it is placed on goods to be sold or transported, or when placed on advertisements for services "rendered in commerce." (34) In addition, applicants may file an intent-to-use application. (35)

      2. Distinctiveness

         As part of identifying the source of goods and services, the mark must be sufficiently distinctive to warrant protection. (36) In the classic trademark case of Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., the court elaborated on the traditional classifications of potential marks as either (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary or fanciful (arbitrary and fanciful occasionally being placed into separate categories by courts). (37)

         Only marks falling into the latter two categories are "inherently distinctive," and therefore registerable and protectable. (38) Generic marks, for example those using a word that merely uses the word or term used by others to connote the thing itself--TISSUE for facial tissue or LIBRARY for a place to borrow books--are not protectable. (39)

         A mark may also become generic through widespread use and subsequent association of the formerly-protected mark with the good or service itself. (40) This phenomenon, known as genericide, results on the loss of exclusive rights in the mark, (41) because it no longer serves as a source identifier for the goods, but as a term that illustrates the "basic nature" of the good or service. (42)

         A merely descriptive mark, one that "identifies a characteristic or quality of an article or service," (43) is not protectable as a trademark unless it acquires distinctiveness through proof of "secondary meaning in the minds of the consuming public." (44) Suggestive marks suggest a characteristic of the good or service, but do so in a way that requires a leap in imagination to connect the term to the goods or services. (45)

         Arbitrary marks are those that, when viewed in the context of the goods at issue, are arbitrary, (46) such as "APPLE" for computers or "CAMEL" for cigarettes. (47) Fanciful marks consist of made-up, concocted terms, such as "KODAK" for cameras. (48) Suggestive, arbitrary, and fanciful marks are all considered inherently distinctive and do not require a showing of secondary meaning. (49)

      3. Free Speech Tensions in Trademark Law

         A trademark grants the holder exclusive rights to use the mark in connection with and as a source indicator for the relevant goods and services. (50) The Lanham Act provides two separate, but similar, causes of action for mark holders, including one for federally registered marks (51) and another for unregistered marks. (52) These statutory causes of action aim to prevent false designations of origin and competing marks which are "likely to cause confusion, or to cause mistake, or to deceive" consumers. (53)

         However, trademark law also fosters a tension between upholding the public's interest in avoiding consumer confusion by granting exclusive rights in certain words or phrases and maintaining the...