T-Shirt Vendor Strikes Out! No Trademark Protection for Hashtag
May 3, 2019
The Trademark Trial and Appeals Board Recently Made a Decision Regarding Trademark Protection for a Hashtag
After the Chicago Cubs won the World Series in 2016 and ended a 108-year championship drought, Grant DePorter, CEO of Harry Caray’s Restaurant Group, started using the hashtag #MagicNumber108 on social media and eventually began selling t-shirts featuring the hashtag. While DePorter may still savor the World Series victory, he recently struck out when attempting to register the hashtag as a trademark.
Trademark Protection for Hashtags
In 2013, the U.S. Patent and Trademark Office (USPTO) advised its trademark examiners that a mark comprising or including the hash symbol (#) or the term HASHTAG can be registered as a trademark or service mark so long as it “functions as an identifier of the source of the applicant’s goods or services.” This is the same standard that applies to any other word or phrase that is sought to be registered.
In his trademark application, DePorter sought to register #MagicNumber108 (in standard characters) for:
Shirts; Shirts and short-sleeved shirts; Graphic T-shirts; Short-sleeve shirts; Short-sleeved shirts; T-shirts; Tee shirts; Tee-shirts; Wearable garments and clothing, namely, shirts in International Class 25.
The Trademark Examining Attorney refused registration on the ground that #MagicNumber108 is “informational matter that fails to function as a trademark to indicate the source of Applicant’s goods and to identify and distinguish them from the goods of others under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127.”
After his request for reconsideration was denied, DePorter appealed to the Trademark Trial and Appeals Board (TTAB or Board). DePorter argued that his proposed mark does not convey general information about the goods and is not a common phrase or message that would ordinarily be used in advertising or the relevant industry. He further maintained that the tweets and other social media postings in the record featuring #MagicNumber108 do not establish #MagicNumber108 as a common phrase or message that customers are accustomed to seeing in everyday speech from a variety of sources because he is the only user of #MagicNumber108 in commerce.
TTAB Decision to Refuse Trademark Registration
In a precedential decision, the Board affirmed the Trademark Examining Attorney’s registration refusal on the ground that the public will not perceive #MagicNumber108 as a trademark that identifies the source of Applicant’s goods, but rather only as conveying an informational message.
According to the Board, “#MAGICNUMBER108 is perceived as part of an online social media trend related to the phrase ‘magic number 108,’ expressing affiliation with the Chicago Cubs baseball team and their 2016 World Series win after 108 years rather than as an identification of source for the goods identified in the application.”
In support of the refusal, the Board cited evidence showing “wide use of the proposed mark in a non-trademark manner to consistently convey information about the Chicago Cubs’ World Series appearance and win after a 108-year drought. “In denying trademark protection, the Examining Attorney submitted evidence showing that numerous third parties have used #MAGICNUMBER108 as part of messages posted on social media sites, including Twitter and Instagram, during and after the 2016 World Series. The Board agreed that “[t]his evidence is competent to suggest that upon encountering Applicant’s ‘mark,’ prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant’s goods.”
The Board also concluded that it did not matter whether DePorter was the first to use the term in commerce. “To be registrable, a hashtag—like any other matter—must function as a trademark,” the Board said. “That applicant may have been the first to use the phrase and/or hashtag does not change the fact that the evidence shows widespread use of #MAGICNUBMER108 to informationally convey reference to the Chicago Cubs’ World Series appearance.”
The Board also suggested that the inclusion of a hashtag in the proposed mark hurt DePorter’s case for registration. It noted that a hashtag “is a word or phrase preceded by a hash mark (#), used within a message to identify a keyword or topic of interest and facilitate a search for it.” In this case, it emphasized that evidence in the record establishes that DePorter’s proposed mark #MAGICNUMBER108 was used extensively as a hashtag to identify the Chicago Cubs’ World Series appearance and win. Accordingly, the “addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable term typically will not render the resulting composite term registrable.”
With the proliferation of social media, entities are increasingly seeking to obtain trademark protection for hashtags. As the recent TTAB decision highlights, the standard rules and grounds for rejection generally apply when seeking to register a trademark that incorporates the hashtag symbol. Before expending time and resources to invest in a trademark, we encourage businesses to consult with an experienced intellectual property attorney.
If you have any questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, David A. Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.