Open your social media, what’s the first image you see? Someone’s lunch? A food product? Food is ubiquitous on social media. In fact, we wonder if food (and cats) are the reasons social media exists. Food businesses have taken note and joined the social media food scene. By now, most companies have claimed their @ and more are starting to claim space with a hashtag (#).
Many have dedicated staff to curate their social media, all with good reason; social media is a fantastic means for attracting new customers and driving revenue. According to Twitter with hundreds of millions of users, its platform offers businesses the opportunity to reach a global audience of new and existing customers. Over 66% of Twitter users have discovered a new small or medium-sized business (SMB) on Twitter and 94% of Twitter users plan to purchase from the SMBs they follow.
None of this is new, food marketing experts can attest to the power of social media as a sales generator. What is new is the treatment of businesses’ hashtags.
Applications to trademark hashtags have skyrocketed
Hashtags (#), created to organize conversation threads by subject matter on Twitter, Facebook, and Instagram, may also draw consumers to commercial websites where they can purchase goods and services. This has many businesses looking to the US Patent and Trademark Office (USPTO) to protect and trademark their hashtag. And, before you ask, it appears you can and should consider registering a hashtag for trademark protection.
The applications to trademark a hashtag have skyrocketed with 1,398 applications filed last year while only seven were filed in 2010. Since 2014, 103 hashtag trademarks were formally registered, a few of which include food businesses such as PepsiCo protecting two of their hashtags, #SayItWithPepsi and #GetNaked, and Coca-Cola protecting #SmileWithACoke.
The hashtag trademark trend
The hashtag trademark trend is relatively new, with the USPTO only trademarking hashtags since 2013. Similar to trademark requirements, a hashtag can be trademarked if it is used in commerce, meaning the goods and services bearing the hashtag are sold and/or services are rendered across state lines or between the US and a foreign country.
For goods, you will want to show use of your hashtag on the goods themselves or the packaging of the goods, hang tags, or displays. Use of hashtags on social media alone will likely not be enough to constitute proof of use and would likely be rejected by the Trademark Office. Similar to a traditional trademark, a trademarked hashtag may be viewed as a win-win for businesses and consumers.
It protects consumers by allowing them to identify the original source of a product and discourages competitors from moving into your market space.
For goods, you will want to show use of your hashtag on the goods themselves or the packaging of the goods, hang tags, or displays. Use of hashtags on social media alone will likely not be enough to constitute proof of use and would likely be rejected by the USPTO.
The rubber hits the road, however, when it comes to protecting hashtags.
Only a few cases have even considered hashtags in the IP context. The most recently cited decision from a California court, Eksouzian v. Albanese, 116 U.S.P.Q.2d (BNA) 1972 (C.D. Cal. 2015), shows how courts are struggling to keep up.
The action was between two vaporizer competitors regarding use of an allegedly infringing hashtag, #cloudpen. The court ruled that the use was not infringing under a settlement agreement because it was a “functional” device to direct consumers to a promotion. However, #cloudpen had not been registered as a trademark through the USPTO; if it had, the result likely would have been different. The Eksouzian parties settled out of court so no appeal on the issue has been heard.
Protect your hashtag
Social media has been around too long to still be living in the legal Wild West. We expect to see more litigation in the coming years as food businesses protect their brand by trademarking hashtags associated with their product.
In the meantime, given the relatively low-cost of trademarking hashtags with the large potential upside for food companies looking to carve out their space and protect their brand, it’s worth considering protecting your hashtag even if Eksouzian cast enforcement uncertainty.
L-R: Rebecca Cross (partner) and Allison Hagey (counsel) are attorneys at BraunHagey & Borden LLP, a boutique law firm with offices in New York and San Francisco that represents a significant number of food and beverage companies.