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Pull up most any social media feed - from Twitter to Instagram - and you’ll likely come across a flood of hashtags. These words or phrases preceded by a hash (aka the pound key #) become links that lead to lists of all content using the hashtag. In this way, hashtags make it easy to follow social media posts on a particular topic. Hashtags that become popular can lead to trending conversations at a group or even global level.

Common hashtags include more general ones like #IPLaw, broadly used by people posting content on intellectual property, as well as some started by businesses for a specific company marketing campaign or product. For example, team collaboration software company Slack started #SlackTips as a way to group together social media posts on Slack features and tricks users may not know about.

When such business hashtags start getting picked up by outside social media users they can take on a life of their own. Given their ubiquity, anyone - from an individual or company account - can stumble upon a popular business hashtag and include it in their posts in ways the originator business may or may not have intended for it to be used. This has led many businesses to race to trademark their popular hashtags. But, there’s a bit of a problem. There are many misconceptions about what constitutes material that can be trademarked and how this applies to hashtags. According to Alexandra Roberts, professor at the University of New Hampshire School of Law, trademarking hashtags is rarely a valid option.

Roberts has long explored problematic trademark requests and is helping to debunk trademarking confusion. In her recent papers “Tagmarks“ and “Trademark Failure to Function“ she explores the importance of trademark requirements and why many seem to misinterpret them. She’s even taken steps to expand the reach of her research, to help educate broader audiences, by breaking it down to produce mainstream articles on popular media sites like BuzzFeed. In the interview below, she discusses her recent work.

Q&A with Alexandra Roberts

In your research you’ve focused a lot on how trademarks often don’t function as intended. Can you speak on this a bit as it applies to your recent papers “Tagmarks” and “Trademark Failure to Function”?

AR: Almost anything can be a trademark. But analyses of whether something qualifies for trademark protection often focus on what that thing is, rather than what it does. Federal trademark law requires that to merit protection, matter be “used as a mark.” If a word or symbol isn’t used in a way that draws consumers’ attention to it and helps them distinguish a producer’s product from its competitors’ products, then it fails to function as a
trademark and hasn’t earned legal protection.

I wrote “Tagmarks” because thousands of producers have applied to register hashtags as trademarks with the USPTO, and when I reviewed the specimens, most of those registrations struck me as problematic. In the article, I explored why hashtags usually make bad trademarks. There are a number of reasons, but failure to function seemed most crucial and kicked off an obsession with trademark use that gave rise to two subsequent projects. First, I wrote a book chapter about athletes seeking to protect their names, nicknames, and catchphrases as trademarks. Then I wrote “Trademark Failure to Function,” in which I consider the importance of that threshold requirement, why it doesn’t get the attention it deserves, the stakes in ignoring it, and solutions to help ensure the statutory use requirement is actually met.

Can you briefly explain what tagmarks are and why they are becoming a bigger player in IP law in recent years?

AR: A tagmark is what I call a hashtag for which trademark protection is asserted. As companies grow their social media presence, and consumers increasingly use the internet to learn about products and interact with brands, the use of hashtags in marketing keeps expanding. Claiming trademark rights in hashtags may seem like a natural byproduct of that trend, but I’m skeptical that it truly reflects consumer perception or serves any real purpose. Registration can be contagious: sometimes producers scramble to register a new category of marks simply because their competitors are doing it.

Do you think hashtags can/should be trademarked?

AR: Only rarely do hashtags truly function as trademarks. On top of that, hashtag campaigns are typically short-lived; by the time registration is granted, the marketing blitz that gave rise to it has often ended. Lastly, registering the tagmark version of a word or phrase likely doesn’t give its owner any greater protection than registering the text version: a federal registration for #Scholastica for software, for example, doesn’t provide greater protection than a federal registration for SCHOLASTICA for the same services.

So do tagmarks qualify for registration? Only in exceptional cases. Is it worth the time and money to register them? Same answer.

In your article “Tagmarks” you argue that trademarks should only be registrable and protectable upon a showing of secondary meaning. Can you explain this?

AR: Some types of trademarks acquire protection beginning with their earliest use, on the assumption that consumers will automatically recognize them as trademarks. Certain other types of marks can only gain protection once they’ve been used broadly enough and for long enough that the public comes to understand them as source indicators. The outcome of that process is known as “acquired distinctiveness” or “secondary meaning.” I argue tagmarks should be categorically treated as falling in the latter camp. Because most of the time, when we encounter a hashtag like #BlackLivesMatter, or #HowDoYouKFC, or #NetflixAndChill, it strikes us less as a source indicator and more as a trending catchphrase or an organizational tag or an invitation to join a conversation on social media. And granting exclusive trademark rights in something that the public doesn’t understand as a trademark can chill speech and competition. Some tagmarks are capable of becoming trademarks, but we ought to make sure they earn it.

You also wrote a BuzzFeed article breaking down your research on tagmarks. What inspired you to use BuzzFeed as a communication outlet?

AR: How we understand words and symbols lies at the heart of trademark law, so it’s a subject that benefits from conversations with lots of different people. My students were really helpful when it came to the tagmark question because they speak fluent hashtag. In order to channel different perspectives while researching these two articles, I conducted a survey; blogged; asked questions on social media; discussed the projects with students, professors, and USPTO attorneys; and wrote the Buzzfeed and Medium pieces. All of those conversations enabled me to test assumptions and solicit input about consumer perception. Writing with an eye toward reaching laypeople with short attention spans helps me articulate legal concepts more plainly and clearly.

How has writing about your research in different formats like BuzzFeed impacted its reach? Is this something you plan to continue in the future?

AR: A thousand people clicked on the Medium post; the Buzzfeed piece got 1,800 readers. That’s more people than I expect to wade through a 65-page law review article. It’s great to have a way to reach journalists, practitioners, and others who are curious about the topic, and gifs and graphics help communicate concepts like use and distinctiveness with concrete examples.

So, yes: I think presenting academic ideas in various formats expands their reach, and I’ll continue to experiment with different ways to get people thinking about trademarks.