Popularized by Twitter, hashtags are so ubiquitous that they are now a part of our cultural lexicon. The term “hashtag” in its modern iteration was even added to the Oxford English Dictionary in June of 2014 (“hashtag n. (on social media web sites and applications) a word or phrase preceded by a hash and used to identify messages relating to a specific topic; (also) the hash symbol itself, when used in this way.”[1]).  Hashtags provide a quick and easy reference point and act as a searchable element for social media users to locate content regarding a certain subject.  Essentially, the hashtag is a keyword(s) that draws traffic to certain posts based on their content, not necessarily their source.

The question enterprising social media moguls want answered is – how can we protect a hashtag? More appropriately – how can we own, and exclude others from using our hashtag?  Individual words and phrases are not protectible under copyright law or patent law.  That leaves trademark law, which can offer protection for terms and short phrases. Even so, hashtags seem to be that proverbial square peg that doesn’t quite fit under the penumbra of trademark protection.  In a trademark sense, hashtags are very similar to website addresses (www.xyz.com) and Twitter handles (@xyz) where, historically, little to no trademark significance has been attributed to the symbols associated with these uses (i.e. “www” “.com” and “@”).

Hashtags typically indicate the subject matter of social media content and thus, are descriptive in nature. Trademarks, on the other hand, are designations of source, and the general rule is the more distinctive (and less descriptive) the mark is, the stronger the trademark rights in that mark will be.  So, although hashtags might be clever and original, hashtags as we typically encounter them in social media do not function as trademarks.

Adding a hash symbol (#) does not transform the term into a trademark and does not impart any ownership rights in the term, per se. In fact, the U.S. Patent and Trademark Office does not consider the # symbol to be a distinguishing feature of a mark, and the # sign is treated the same as any other punctuation mark or common symbol.[2]

In a recent decision, See, In re i.am symbolic, llc, 127 USPQ2d 1627 (TTAB 2018), the Trademark Trial and Appeal Board (“T.T.A.B.”) confirmed this view.  Well known singer/songwriter and pop culture personality will.i.am (notably from the musical group Black Eyed Peas) attempted to register the mark #WILLPOWER for various clothing items.  On examination, the USPTO refused to register the mark, citing likelihood of confusion with a prior registration for the following design trademark also for clothing:

On appeal, the TTAB affirmed the refusal to register holding that the # hash symbol was not a distinguishing feature of will.i.am’s mark.  The TTAB stated in no uncertain terms, “[w]e find, in this case, the hash symbol does not have source-indicating distinctiveness and at most simply appears as the social media tool to create a metadata tag.” Id.

In sum, a successful hashtag is generally one that garners attention and generates popularity through re-use by the social media masses. They are not typically used for long periods of time and are a tool of today’s “hot news” culture, used to generate buzz around a certain subject.  When used properly, trademark rights can last a long, long time and the strongest marks carry a strong association in the mind of consumers as the source of a particular product or service.  So, while the two concepts seem similar, when you look at the underlying purpose and use of each, you will find they are quite different.

A good intellectual property attorney can help you protect your rights and guide you towards the best available option for you.

[1] http://www.oed.com/view/Entry/389023#eid301493073

[2]“. . .[T]he addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable. Cf. TMEP §807.14(c) (“Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.”); TMEP §1209.03(m) (addition of generic top-level domain name to otherwise unregistrable matter typically cannot render it registrable). Accordingly, if a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.” Trademark Manual of Examining Procedure. October, 2017. § 1202.18 “Hashtag Marks.”

The Fourth Circuit Court of Appeals recently upheld a district court decision finding that BOOKING.COM can be registered as a trademark because it is not generic for hotel reservation services.

In a prior blog post, we discussed the lower court’s decision. The protection of the mark BOOKING.COM hinged on whether the term was generic or descriptive.

The primary significance of the mark as a whole is descriptive, not generic

In the recent appeals court decision, the Fourth Circuit held that the U.S. Patent and Trademark Office (USPTO), in determining whether a term is entitled to trademark registration, always bears the burden of showing that the proposed mark is generic. The court then held that the USPTO had not met its burden of demonstrating that the mark BOOKING.COM as a whole was generic for hotel reservation services.

Although courts may consider the meanings of each constituent part of the mark – here “booking” and “.com” – the Fourth Circuit held that court also must consider evidence of how the public primarily perceives the mark as a whole.

The Fourth Circuit rejected the lower court’s position that “.com” alone has any source-identifying significance when added to a second-level domain (i.e., booking), instead focusing on the public perception of the mark as a whole – “booking.com.” The court also rejected the converse position of the USPTO that adding two generic terms like booking and .com together always results in a generic term.

The court noted that considering the primary significance of the mark as a whole apart from its components is particularly important for domain names, where “the relevant public may recognize domain names to indicate specific locations on the internet.” However, the unique meaning of a domain name as an internet location may cut against the owner’s ability to protect its mark: “Given that domain names are unique by nature and that the public may understand a domain name as indicating a single site, it may be more difficult for domain name plaintiffs to demonstrate a likelihood of confusion.”

Even a winning applicant to pay USPTO’s attorneys’ fees

In our prior article on this case, we also discussed the implications of a rejected trademark applicant’s choice between two options for challenging the USPTO’s decision: 1) appealing to the Federal Circuit Court of Appeals, where the parties are confined to the evidence of record before the USPTO, or 2) filing a new suit in federal district court, where the parties can present new evidence but the trademark applicant may be required to pay the USPTO’s expenses.

Here, Booking.com chose to file a new suit in district court. While the company benefited from the ability to present new evidence – particularly consumer survey evidence – it also was required to pay the USPTO’s expenses, including attorneys’ fees, regardless of the outcome of the matter.

In the recent decision, the Fourth Circuit upheld the requirement for Booking.com to pay more than $76,000 in expenses of the USPTO, including more than $51,000 in attorneys’ fees. In 2018, the Federal Circuit held that a similar provision of the patent law requiring the applicant to pay “all the expenses” of the USPTO did not include the USPTO’s attorneys’ fees. The Supreme Court is currently deciding whether to grant a petition for certiorari to hear that case. In the trademark context of the BOOKING.COM case, the Fourth Circuit upheld the payment of attorneys’ fees based upon current Fourth Circuit precedent.

The United States Supreme Court will soon hear arguments in a case that may significantly alter the face of trademark law for the second time in less than two years.

The case, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office v. Erik Brunetti, addresses a portion of Section 2(a) of the Lanham Act which authorizes the U.S. Patent and Trademark Office (“USPTO”) to refuse registration of “immoral . .  or scandalous” marks.

The USPTO refused to register the trademark “FUCT” for various clothing items on this basis, and Erik Brunetti, the owner of the “FUCT” mark, appealed the refusal to the U.S. Court of Appeals for the Federal Circuit.  The appeals court struck down the ban on “immoral” and “scandalous” marks, noting that, despite the “vulgar” nature of the “FUCT” trademark, “[t]he First Amendment, however, protects private expression, even private expression which is offensive to a substantial composite of the general public.”  The U.S. government appealed this decision to the Supreme Court which must now determine whether the USPTO may continue to refuse registration to marks it considers “immoral” and/or “scandalous.”

Many will recall the repercussions of the 2017 Supreme Court case, Matal v. Tam, which found a section of the statute allowing the USPTO to refuse trademark registration for “disparaging” marks (Section 2(a) of the Lanham Act) to be an unconstitutional violation of the First Amendment.  Although that particular case addressed the USPTO’s refusal to register the mark “The Slants” by members of a rock band (who are Asian-American) by the same name, the fallout from that decision famously brought to a close the long-standing battle between the Washington Redskins and the USPTO by removing the statutory ban on registration for the term REDSKINS.

In sum, the government’s position in the current case is that “immoral” and/or “scandalous” marks can be treated differently than “disparaging” marks and the Slants decision is not conclusive of whether the statutory ban on “immoral” and/or “scandalous” marks is facially unconstitutional. Brunetti argues that the same principles of free speech that led to the removal of the ban on “disparaging” marks should likewise apply to “immoral” and/or “scandalous” marks.  That is the question now before the Supreme Court.

If the U.S. loses the appeal, the long-standing ban on registration of “immoral” and/or “scandalous” marks will be lifted, and a flood of trademark applications to register sexually explicit, vulgar and profane marks will likely follow. Trademark owners should be aware that a backlog of the examination of pending trademarks is likely while the USPTO deals with this influx.  The decision may open the door for trademark owners with arguably “immoral,” “scandalous” or “vulgar” marks to finally enjoy the full benefits of a federal trademark registration and enhance their ability to protect their brands.

If you or your company owns a U.S. trademark registration, eventually you may hear that you have the opportunity for the registration to become “incontestable.” “Incontestable” sounds impressive, but what does it mean? And is it worth it for you to pay the extra filing fee to the U.S. Patent and Trademark Office (“USPTO”) to obtain that designation?

First, what is incontestability? In the United States, trademark rights are established through use. This differs from many other countries, where it is necessary to have a registration to enforce the brand owner’s rights. That said, registration plays an important role in enforcement of trademark rights, as well as to put others on notice of the company’s trademark rights.

When the USPTO acknowledges a claim of incontestability, the registration is then conclusive evidence of the owner’s exclusive rights in the mark, subject to some specific conditions and defenses. 15 U.S.C. § 1115(b) This can be quite valuable if the trademark owner needs to go to court to enforce its rights. (In contrast, a registration that has not become incontestable is prima facie evidence, which means it can be rebutted.) An incontestable registration also cannot be challenged on the basis that the mark merely describes the goods or services. Park ‘n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189 (1985).

Requirements

So how does your registration become incontestable? The registrant must submit a signed declaration stating: a) that the registered mark has been in use for the goods or services covered by the registration continuously for a period of five years immediately preceding the declaration; b) that there has been no decision in court or before the USPTO adverse to the owner’s rights in the mark; and c) that there are no pending cases before the USPTO or a court that would affect the owner’s rights.  There is an additional USPTO fee for filing the declaration of incontestability, which is currently $200 per each class of goods and services in the registration.

Unlike other filings before the USPTO that are required to maintain one’s registration, incontestability is not mandatory. In addition, there is no deadline for filing for incontestability. Although the declaration of incontestability frequently is filed between the fifth and sixth year of registration to coincide with a mandatory maintenance deadline, the trademark owner may claim incontestability any time the registration meets the requirements.

Conclusion

Incontestable status can be beneficial if you ever need to enforce your rights against an infringer. For a relatively low USPTO filing fee (the current USPTO fee for claiming incontestability is $200), you’ll have these protections in your pocket should you ever need them, along with the right to call your registration “incontestable.”

Trademark infringement, briefly, is the unauthorized use of a trademark or service mark of another in a manner that is likely to cause consumer confusion. In some cases, affirmative defenses may excuse the otherwise infringing actions of a later user, and permit that later user to continue its use of the protected mark. One of the more common defenses is “fair use.”

In general, fair use can fall into one of two categories. Descriptive fair use, as the name suggests, occurs where a later user makes use of a trademark to describe the user’s products or services, rather than for the purpose of indicating the source or origin of a particular good or service. This is often referred to as “classic” fair use. For a real-world example, SWEETARTS is a registered trademark for candy. The then-owner of the mark sued Ocean Spray for using the term “sweet-tart” to describe the taste of its cranberry juice. The court found Ocean Spray’s use of the term “sweet-tart” to be descriptive fair use and thus not an infringement. See Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995).

What is nominative fair use?

The second category is nominative fair use. In the case of nominative fair use, the second user deliberately uses the registered trademark of another, but does so for the purpose of referring to the goods or services of that trademark owner. For instance, it would be odd and cumbersome for every football fan to have to refer to “the football team from New York that wears red, white and blue uniforms” when you can just say the New York Giants. This type of fair use also encompasses things such as comparative advertising, media reporting, commentary and parody.

Nominative fair use generally is permissible as long as (1) the product or service in question is not readily identifiable without use of the trademark, (2) only so much of the mark as is reasonably necessary to identify the product or service is used and (3) use of the mark does not suggest sponsorship or endorsement by the trademark owner. See, e.g. New Kids on the Block v. News Am. Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

Limitations on nominative fair use

Nominative fair use does have its limitations, however. It is a doctrine that was created through case law. In other words, there is no law or statute that specifically carves out a nominative fair use exception. As a result of being a judicially-driven concept, the doctrine is not universally applied across all federal courts.

For example, disclaimers are often used to state that the party naming another’s trademark is not associated with the trademark owner, i.e., “NEW YORK GIANTS is a registered trademark of New York Football Giants, Inc.” or “XYZ company is not affiliated with the NEW YORK GIANTS football team.” Most courts view the use of disclaimers favorably, but even that is by no means a “Get Out of Jail Free” card. How prominent is the disclaimer? What does it say? Where is it placed? Is it legible? These are all things to consider when analyzing whether any particular use qualifies as a nominative fair use. (Both types of trademark fair use differ from fair use of copyrighted creative works, which we discussed in a prior blog post.)

In our current global-commerce society, it is also important to remember that fair use is not a universal concept that all countries recognize and treat the same. For instance, a comparative advertising campaign being launched in Europe must comply with the European Union directive governing comparative and misleading advertising.

In sum, if you are intending to make use of the trademark of another, you must tread carefully. Do not use any more of the mark than is necessary. If at all possible, try to use the trademark in a narrative form rather than “as a trademark.” This includes things such as making sure that if you are using someone else’s mark, it is not in a different color or font size or style than the surrounding text. As described above, disclaimers can help, but be careful how they are drafted, and remember that a disclaimer alone is not guaranteed to save an otherwise infringing use.

If you have questions regarding a use you intend to make of someone else’s trademark, or if you feel that someone else has made an improper use of your trademark, please feel free to contact our office. We will be happy to review it with you and discuss any relevant issues and potential pitfalls.

It is not uncommon for a business owner to name their business or a product after themselves. You can see examples every day nearly everywhere you look: FOLGERS® coffee, FORD® cars, GOODYEAR® tires, DISNEY®. . . everything.  However, registering your name as a trademark can actually be quite difficult.

As a starting point, the United States Patent and Trademark Office (USPTO) will not register a mark that is primarily merely a surname without a showing of acquired distinctiveness. 15 U.S.C. § 1052(e)(4).  This provision in the Trademark Act reflects the common law idea that exclusive rights in a surname cannot be established without evidence of long and exclusive use, with the idea being that such long-standing and recognizable use changes the significance to the public from the term being merely someone’s last name to being a trademark that identifies particular goods or services – hence, “acquired distinctiveness.”  But surnames are not always unique.  Can an individual stop someone else from using “their” surname?

The Schlafly case

The Federal Circuit most recently considered the issue in the matter of Schlafly v. Saint Louis Brewery, LLC, No. 2017-1468, 2018 WL 6168685, at *1 (Fed. Cir. Nov. 26, 2018).  In its opinion, the Court affirmed a ruling by the Trademark Trial and Appeal Board (TTAB) that the Saint Louis Brewery was entitled to register the mark SCHLAFLY for use in connection with beer and other related goods.  In so holding, the Court dismissed consolidated oppositions mounted by the successors of noted conservative political activist Phyllis Schlafly and other members of her family (including a son who used the Schlafly name in connection with his medical practice) in which they argued that allowing the brewery to register the mark would adversely impact their interest in the commercial value of the Schlafly name.

The Court declined to adopt a novel test proposed by the Schlafly camp (which opposers referred to as the “change in significance” test) under which they argued a surname could not be registered without the applicant showing that there was a change in significance to the consuming public that shifted the public’s perception of the proposed mark from a surname to a trademark associated and identified with specific goods and/or services.

The trademark owner’s evidence of acquired distinctiveness

In support of its position, the brewery presented evidence showing its considerable, continuous, wide-ranging use of the SCHLAFLY mark, including the sale of 75 million units of its 60 types of beer using the SCHLAFLY mark in 15 states and the District of Columbia, through 30 wholesalers and some 14,000 retail establishments, including several national restaurant chains between 2009 and 2014 alone. The brewery also presented evidence that these sales were supported by $1.1 million in advertising over the last five years, which featured the SCHLAFLY mark in advertisements and promotions in several media and at events.

Ultimately, both the TTAB and the Federal Circuit found the evidence presented by the brewery sufficient to show that the brewery’s use and promotion of the SCHLAFLY mark supported a finding of acquired distinctiveness. “No law or precedent suggests that surnames cannot be registered as trademarks if they have acquired distinctiveness in trademark use.” Id. at *5.  As you can see, however, obtaining a registration for your name as a trademark can be challenging, and anyone considering doing so should be sure to consult with an attorney before moving forward.

The Supreme Court recently agreed to hear a case that bears monitoring, particularly if licensing the trademarks of another brand owner is a significant aspect of your business. The case is Mission Product Holdings, Inc. v. Tempnology, LLC, and the primary issue to be decided is whether or not a brand owner that files for bankruptcy can revoke the rights of its licensee to use a trademark.

By taking this case on, the Supreme Court is expected to settle a split amongst the circuit courts in how they interpret a certain provision of the Bankruptcy Code that permits a debtor to decline to perform future obligations under a contract if the cost of performance outweighs the benefit. A revision was made to this section of the bankruptcy laws in the mid-1980s specifically permitting a licensee to keep its rights to “intellectual property” in the event a debtor/licensor elected to reject a license agreement.  However, the Bankruptcy code does not specifically name trademarks within the statutory definition of “intellectual property,” although other types of intellectual property, such as patents and copyrights, are included.

As a result, circuit courts have been left to their own devices to determine what the absence of trademarks from the definition of “intellectual property” means, and whether a trademark licensee’s rights are protected or not. On one side are circuits such as the Seventh Circuit, which ruled that the rejection of a trademark license did not strip the licensee of its rights to use the mark.  In a 2012 ruling (Sunbeam Products, Inc. v. Chicago Manufacturing, LLC, 686 F.3d 372 (7th Cir. 2012)), the Seventh Circuit Court ruled that rejection was merely a breach of the rejected contract, and that in cases of breach of contract, the “other party’s rights remain in place.” That is, the licensee could continue to use the bankrupt party’s trademarks.  Conversely, in the Mission Products case, the First Circuit took the opposite approach, holding that when Tempnology rejected its contract with Mission Products, Mission Products lost all rights granted to it under the agreement that were not expressly protected under the Bankruptcy code – which included trademark rights.

This is clearly an important question, and on the circuit split highlights a potential concern that licensees may lose the right to use the licensor’s trademarks when the licensor is in bankruptcy. Depending upon how the Supreme Court rules, it may continue to be a possibility that a company that contracts to use someone else’s trademarks could have the rug pulled from beneath them if that company files for bankruptcy.

Some of the most common inquiries we receive from our clients concern scams in the form of unsolicited letters or notices received after their federal U.S. trademark applications are filed.

Since the information in federal trademark applications (including the trademark owner’s address) is accessible to the public, scammers collect the contact information of new applicants and use it to send what appear to be official correspondence regarding the trademark application. These solicitations take many forms, and most have the look and feel of official notices from government agencies or are styled to look like invoices.  These notices commonly include (false) instructions to make payments or offers to publish or monitor the trademark application for a fee.  The purpose of these scams is to create a false sense of urgency that the trademark application is at risk (it is not) or that the superfluous services offered will benefit the trademark owner (they will not).

This is yet another reason to work with a good trademark attorney to file federal trademark applications. Not only will an attorney help minimize common filing mistakes, but as the appointed attorney and correspondent, your attorney will also receive all official notices and correspondence from the U.S. Patent and Trademark Office (“USPTO”) regarding your application directly.  You can then rest assured that your attorney is receiving all official notices and anything you receive directly regarding the trademark application is either a scam or a superfluous service you do not need. Here are some more tips for dealing with and recognizing these scams:

• – All official notices sent by postal mail from the USPTO will have a return address of Alexandria, Virginia. Similarly, all official notices sent by electronic mail from the USPTO will be sent from an e-mail address ending in “uspto.gov”

• – The USPTO maintains a list of known scammers on its website which gets updated from time to time. The list is fairly robust, but by no means exhaustive: https://www.uspto.gov/trademarks-getting-started/caution-misleading-notices

• – These scams also target information from non-U.S. trademark applications. The World Intellectual Property Organization (“WIPO”) has a similar list that tracks these scams throughout the world: http://www.wipo.int/pct/en/warning/pct_warning.html

If there is any doubt about the validity of a notice you receive, you should contact your attorney before taking any action. Your attorney can help you weed out these scams so you can concentrate on what’s important – building your brand and growing your business.

How can we help you?

A recent precedential decision of the Trademark Trial and Appeal Board (“TTAB”) sheds some light on how the TTAB evaluates consent agreements between parties with potentially conflicting trademarks. In the case In re American Cruise Lines, Inc., the TTAB held that the mark AMERICAN CONSTELLATION for cruise ship services was not likely to be confused with the prior registered mark CONSTELLATION for the same services. In Re Am. Cruise Lines, Inc., 128 U.S.P.Q.2d 1157 (T.T.A.B. Oct. 3, 2018).

What are consent agreements?

The U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure (“TMEP”) defines a consent agreement as “an agreement between parties in which one party (e.g., a prior registrant) consents to the registration of a mark by the other party (e.g., an applicant for registration of the same mark or a similar mark), or in which each party consents to the registration of an identical or similar mark by the other party.” TMEP §1207.01(d)(viii). These agreements are often presented as evidence in favor of registration of the junior user’s mark following a USPTO refusal to register based on a likelihood of confusion with the senior user’s registered mark. Consent agreements typically include provisions such as limitations on the goods and services to be offered under the respective marks, requirements for presenting the marks (i.e., in a particular font/style and/or with a design element), and the measures the parties will take to avoid confusion in the marketplace. The evidentiary weight and probative value of consent agreements are generally determined on a case-by-case basis, with some limited guidance offered in the TMEP. Id.

The TTAB decision: Do consent agreements need to include provisions for avoiding confusion?

The TTAB considered various consent agreements entered into between the applicant and the owner of the cited CONSTELLATION trademark registration. The USPTO Examining Attorney who had reviewed and rejected the application argued that the consent agreements were not probative on the question of likelihood of confusion since they contained no provision that the parties make efforts to prevent confusion or to cooperate and take steps to avoid any confusion that may arise in the future. The TTAB disagreed, holding that such provisions are not required.

Provisions of this nature are typically seen in trademark consent agreements, but this precedential decision clarified the TTAB’s position that while these provisions may render the agreement more probative in a likelihood of confusion analysis, they are not mandatory.

Consent agreements are a common tool for owners of potentially-conflicting trademarks to allow them to co-exist without causing confusion to consumers and obtain important protections of trademark registration. If your company’s trademark registration has been refused on the basis of a prior registration, we can assist with overcoming the refusal, which can include filing an appropriate consent agreement.