Consider the case of PepsiCo and #GetNaked
By Peter Lemire
I recently read an article regarding the rise in trademark filings for hashtags. According to the article, 1,398 were filed worldwide last year; the figure for the U.S. was around 500 — a drop in the bucket among millions of trademarks filed worldwide every year.
However, the increase in the number of filings over the previous year is significant. The increase in attempts to trademark hashtags may cause one to ask: Is this a hostile takeover of social media in an attempt to chill free speech? And should my business consider trademarking hashtags?
The answers are: No, not really; and it depends.
Some people argue that trademarking hashtags is an attempt to limit free speech. That’s only partially true. Trademarks seek to prevent the use of a mark in commerce that is likely to cause confusion among consumers. Trademark law doesn’t take those terms out of the public lexicon. One of the applications cited in the article is #GetNaked, which was filed by PepsiCo Inc. with regard to its Naked Juice product.
Should this filing strike fear in the hearts of college students across the country, who can’t use the #GetNaked hashtag when posting skinny-dipping selfies without the fear of PepsiCo suing them? No, because generally those sorts of activities are not considered the commercial use of a mark. The same goes for writing a scathing tweet about PepsiCo or their products and including the #GetNaked hashtag.
What the filing would prevent is a competitor such as Odwalla putting the #GetNaked hashtag on its juice bottles. The stickier question is whether Odwalla could use the #GetNaked hashtag in its own social media. Interestingly, there are certain circumstances in which they could. If Odwalla is engaging in comparative advertising in a social media post, then it probably could include the hashtag. If, on the other hand, #GetNaked was used by Odwalla in an attempt to confuse consumers to buy Odwalla rather than Naked Juice, that would most likely be an infringement.
If someone’s goal is complete control and domination of the use of a hashtag, trademark law probably won’t help much, as the law inherently recognizes that a trademark holder cannot prevent all third-party usage of a mark — just those uses that are likely to cause consumer confusion.
So is it worthwhile for businesses to try to register hashtags they’ve developed? The answer: It depends.
For a company to establish trademark rights for a mark, it needs to be used as a source identifier (think brand) for their goods or services in commerce. If the hashtag is being used with goods, then the hashtag must appear on the product or product packaging.
For services, the hashtag can appear in advertisements, including social media. In the Naked Juice example, the #GetNaked hashtag has to appear on the bottle itself or on multipack packaging. If your company produces actual products and you are not anticipating putting the hashtag on the products or product packaging, then filing a trademark application for a hashtag would be a waste of money.
A business also should consider how long it anticipates using the hashtag. Filing for federal trademark registration is not a quick process. It takes eight months, on average, from the date of filing the application to the issuance of the registration; if the Patent and Trademark Office issues an office action, the time frame extends to more than a year.
When hashtag usage is anticipated to be short term, then it makes sense to rely on common law rights that automatically accrue based on the use of the hashtag rather than seeking formal registration. Given the ephemeral nature of hashtags, it may make sense for a company to forgo formal protection in favor of a more fluid and dynamic usage of hashtags in their social media campaigns.
Finally, a business should consider whether applying for a mark in the form of a hashtag makes sense. Because the # symbol generally doesn’t add any distinctive features to the trademark, a business may want to consider just filing for the words contained in the hashtag. In the juice example, this would mean filing for the mark GET NAKED (the all caps signifies that the mark can be used with any combination of uppercase and lowercase letters).
A GET NAKED registration would cover not only the words “get naked” but also uses such as www.getnaked.com (which incidentally is used by a private electronic messaging company) and #GetNaked. If the hashtag is intended to be used in the context of a comprehensive marketing plan, then it may make more sense for a company to register a word mark that will allow broad usage.
When it comes to trademarking hashtags, it may make sense sometimes. But I wouldn’t recommend running out to register every hashtag you use in a social media campaign. Filing a boring, old-fashioned word mark might actually make more sense and allow for greater flexibility in the future with respect to our ever changing technological landscape.
The bottom line is, if you are inclined to take skinny-dipping selfies, don’t worry about using #getnaked when you share them online. Whether you should share the pictures in the first place — well, that’s another question.