When the first social media hashtag was used in 2007, users had no idea how ubiquitous hashtags would become. Today, hashtags are an essential part of our lives (and a subject we’ve been writing about for years). From marketing a business to garnering support for a cause, hashtags have become an essential part of our society. This may even be an understatement. For instance, from May 26, 2020, until June 7, 2020, alone, the #BlackLivesMatter hashtag was used over 47 million times on Twitter. 47 million. Talk about impact.
Your company wants to use a picture taken outside of your office at an event you are hosting or sponsoring. Perhaps the image shows someone wearing your clothing or other product or using something showing your brand. Possibly you participated in a parade and want some images showing your company’s float or views from the float along the parade route. Maybe the image shows the outside of your building or the immediately surrounding area. You may have hired a photographer to take the pictures, they may have been taken by an employee, or someone may have found them on a third-party website or social media posts. The pictures may depict people who were on the street or present at the event, and they may include images of one or more buildings or local landmarks.
Though the USPTO typically examines trademark applications in the order received, special circumstances can from time to time justify examination out of order. The USPTO has determined that the COVID-19 pandemic is such a special circumstance, recognizing the need to bring COVID-19-related medical products and services to market as quickly as possible.
In today’s world, most businesses use hashtags to boost their brand awareness and promote their products and services on social media platforms such as Twitter, Facebook, Instagram and LinkedIn. As the saying goes, “a picture is worth a thousand words”—posting a great photo of a product with the right #hashtag, and the attention received can go from “scant” to “deluged” in moments. Such posts can promote higher customer engagement, attract more likes and new followers, and in short provide fantastic and efficient publicity for businesses.
It’s Monday, and you’re at the local coffee stand with your work buddies sipping pour-overs made from freshly roasted fair trade beans. Brad from accounting is telling everyone about the new show he just binged on Netflix. It’s a coming of age story set in the ’90s and the throwback details are on point: the cool kids sport Starter jackets and Stüssy shirts; the geeks debate whether the Nintendo 64 is better than the Sony PlayStation; and the protagonist questions whether she should drink the bottle of Zima that her friend just handed to her. You interject: “Zima?! Someone should bring that back!” “Maybe we should,” says Tim from sales. “Nostalgia. It’s delicate, but potent,” adds Dan from marketing, because Dan always quotes Don Draper whenever he can, as he shows everyone a “Bring Back Zima” Facebook group. Soon you find yourself brainstorming ideas on how to get rich by bringing back dead, but not forgotten, brands. But then Matt from compliance asks, “Are we going to get sued?”
Of course, the answer is, “It depends.”
“Baby it’s okay, you can Google my name.” This line from T-Pain’s hit, “Bottlez,” became a focus in a recent Ninth Circuit trademark case on my favorite intellectual property issue: genericide. Among other evidence, the court considered if T-Pain’s use of “Google” showed that the Google trademark had become genericide’s latest victim. Genericide occurs when the public appropriates a trademark and begins using it generically for a type of goods or services, as opposed to a source of goods or services.
We recently wrote about a musician who got into some trouble with a court by using social media to flaunt images of hundred dollar bills after he had filed for bankruptcy. Now, an Atlanta-based rapper known as Rolls Royce Rizzy has been found to offend trademark laws through his use of social media. In January 2015, Rolls-Royce Motor Cars Limited and Rolls-Royce Motor Cars NA LLC (collectively, “Rolls-Royce”) filed a suit against Robert Davis (aka “Rolls Royce Rizzy”) for various claims, including trademark dilution, trademark infringement and unfair competition/false designation of origin under the Lanham Act.
We have previously discussed how the use of the hashtag in trademarks is continuously evolving. As it turns out, the latest evolutionary wrinkle might have started to form this past March, thanks to one of pop culture’s more prominent mothers.
In a recent federal district court case in the Northern District of California (Case No. 13-cv-04608-HSG), Pintrips Inc., a website-based travel planning service, effectively pinned to the mat the trademark claims brought against it by Pinterest Inc., the operator of the popular image-sharing website. Following a bench trial, the Court rejected Pinterest’s claims of trademark infringement and dilution, as well as other related state and federal causes of action, which were based on Pinterest’s rights to its “Pinterest,” “Pin” and “Pin It” word marks. The case is of interest to industry observers and participants alike for a number of reasons. In the course of providing practical insight into the judicial thought processes at play in a point-by-point application of the eight “Sleekcraft” factors (from the 9th Circuit’s 1979 decision in AMF Inc. vs Sleekcraft Boats) that can be considered when determining if a mark has been infringed, the case also yielded some insight on the impact of timing in regard to a defendant’s knowledge of the plaintiff’s mark; the potential of making a consumer jump through some hoops; and on the very nature of a “social media service.”
Oh, the once humble hashtag (or pound sign, number sign, octothorpe, etc.). For so long a symbol both ubiquitous and free from controversy, its new life as a go-to signifier of discussions and trending topics on Twitter has made it relevant in ways no one could have predicted a decade ago. For proof, one only need look to the courts, where a recent spat between two competitors highlights the interplay between social media symbology, such as the hashtag, and intellectual property laws (especially trademark law).