MarkIt to Market® - August 2018: #NOPOWER? will.i.am's Hashtag Problems

Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sterne, Kessler, Goldstein & Fox P.L.L.C.

In a recent precedential decision, the U.S. Trademark Trial and Appeal Board (“Board”) confirmed that a hashtag symbol (#) generally adds little or no source-indicating distinctiveness to a trademark. In this case, rapper will.i.am applied to register the mark #WILLPOWER under his company name i.amsymbolic, llc, for a number of clothing items in Class 25. The Examining Attorney refused to register the mark in light of a prior registration for the mark, also for clothing items in class 25.

william

In arguing against a likelihood of confusion, will.i.am put forth the theory that the hashtag symbol gives the #WILLPOWER mark a plainly different meaning from the WILLPOWER WEAR design mark, especially given consumer recognition of will.i.am’s use of #WILLPOWER as the title of his 2013 album. The Board disagreed, and noted that the use of a hashtag “at most simply appears as the social media tool to create a metadata tag.”

This decision affirms the PTO’s guidance about hashtags in TMEP §1202.18, which draws an analogy between the hashtag symbol and a generic top-level-domain (gTLD). With respect to both hashtags and gTLDs, the hashtag or domain symbols or lettering merely facilitate categorization and searching online, and do not provide a source-indicating function.

There are two takeaways from this case – first, while a hashtag can be part of a registrable mark, do not expect this symbol to be treated differently from any other generic component. And, second, be sure to consider use of hashtagged social media identifiers as part of normal trademark clearance.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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