Copyright Duration

My wife is a library student studying for her MLIS and concentrating on archives management. For her Introduction to Archival Methods and Services class (still not as boring as Civil Procedure), she completed a brief unit on copyright law. Because she and I are both losers and would rather spend our Friday night talking about her homework than doing literally anything else, we had an interesting conversation about some of the legal challenges regularly faced by archives and archivists:

  • Who owns the records?
  • How do we reconcile copyright protection with access?
  • How do we handle physical documents possessed by the donor but authored by someone else?
  • In the case of private, unpublished material, how do we reconcile privacy with access?

Some of these issues will be determined by various privacy and record keeping statutes, but others will depend on copyright. Naturally, because an archives might receive collections during or after the creator's lifetime, copyright duration becomes extremely relevant, specifically, copyrights for works created prior to January 1, 1978.

Why is January 1, 1978 Important?

January 1, 1978 is the effective date of the Copyright Act of 1976, which, among other things, significantly changed the way we calculate copyright duration. The law prior to the ’76 Act was the Copyright Act of 1909. Under the 1909 Act, a work was protected by federal copyright law if it was either published (copies disseminated to the public) or registered. Federal copyright protection lasted for 28 years from the date of publication or registration, with an optional 28 year renewal term, for a maximum total of 56 years of protection.

Current Copyright Duration

The '76 Act changed the old system, eliminating the mandatory renewal for new works going forward. Now, for works created after January 1, 1978, the duration is either

  • For works by one author: the author’s life + 70 years
  • For works by two or more authors: the life of the last surviving author + 70 years
  • For anonymous, pseudonymous, or works for hire: 95 years from publication or 120 years from creation, whichever expires first

Copyright Duration for Works Created Before January 1, 1978

Determining copyright duration for older, pre-1978 works is a little more complicated because the calculation uses elements from both the 1909 and ’76 Acts.

The first step in the analysis is to determine whether the work was already subject to federal protection. In other words, was the work published or registered? If the work wasn’t published or registered, then we generally use the same calculation as we would for post-1978 works. Sounds easy enough. If the work WAS already subject to federal copyright protection, however, then we have some more work to do.

Protected pre-1978 works are still subject to the 1909 Act system, 28-year-plus-renewal term. Now, however, the renewal term has been extended from 28 years to 67 years, granting a total of 95 years of statutory copyright protection for those works. To determine copyright duration for these works, we need to know (1) the publication/registration date and (2) whether the work was its initial 28-year term or its renewal term on the effective date of the ’76 Act.

  • For works in their first term on January 1, 1978: copyright owner still had to voluntarily renew the copyright
  • For works in their renewal term on January 1, 1978: renewal term was automatically extended from 28 to 67 years
  • For works copyrighted between January 1, 1964 and December 31, 1977 (right before the effective date of the ’76 Act): the works would be automatically renewed, and renewal registration would be optional

Works that were published prior to January 1, 1923 are now public domain because the 95-year copyright term has expired.

I hope this information is useful. For more details, check out the Copyright Office’s Circular 6A, which describes copyright renewal, and Circular 15A, which explains copyright duration in more detail.

If you’re dealing with a copyright duration issue, it’s always a good idea to consult with a copyright attorney.

As always, if you have any questions, feel free to contact me.

 

 

S.D.N.Y. Embittered by Embedding

Just a couple weeks ago, the Southern District of New York issued an opinion that may very well change the way we use social media. In Goldman v. Breitbart News Network, LLC et al., the court held that embedding a tweet containing a copyright protected photograph constituted copyright infringement.

By way of background, the photo in question was taken in July of 2016 by the plaintiff, Justin Goldman, and it depicted Tom Brady and Danny Ainge, among others, in East Hampton. Goldman uploaded the photo to his Snapchat Story, and from there it went viral, ultimately landing on Twitter. The defendants, a variety of news outlets, including Breitbart, Time, Vox, the Boston Globe, and NESN, embedded the tweets containing the photo into their articles about Tom Brady’s effort to help the Boston Celtics recruit Kevin Durant. Goldman sued the news companies for copyright infringement on the grounds that he never publicly released or licensed the photo, and therefore they infringed his exclusive right to publicly display the work under section 106(5) of the Copyright Act.

On motion for partial summary judgment, the defendants argued that the court should apply what they call “the Server Test,” in which a website publisher is only directly liable for infringement if the image at issue is hosted on the publisher’s own server. The Server Test originates from the 2007 case, Perfect 10 Inc.* v. Amazon, Inc. (yeah, that Perfect 10). In that case, the Ninth Circuit affirmed a Central District of California decision holding that the thumbnail images created by Google for display on Google Image Search infringed copyright because the thumbnails were stored on its own server. However, the court also held that the full-size images users would see after clicking the thumbnail did not infringe because they were merely linked to photos stored on third-party servers. The defendants felt that the Perfect 10 reasoning applied here.

Naturally, Goldman argued against applying the test, claiming it would not only yield a result that would be inconsistent with the Copyright Act, but would also eliminate any incentives for websites to pay licensing fees.

The court sided with Goldman and rejected applying the Server test. First, the court strongly disagreed with the notion that copyright infringement could hinge on whether a party had possession of the image:

Nowhere does the Copyright Act suggest that possession of an image is necessary in order to display it. Indeed, the purpose and language of the Act support the opposite view. The definitions in § 101 are illuminating. First, to display a work publicly means to “to transmit . . . a . . . display of the work . . . by means of any device or process.” To transmit a display is to “communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.” Devices and processes are further defined to mean ones “now known or later developed.” This is plainly drafted with the intent to sweep broadly.

The court, citing excerpts from the defendants’ declarations, also highlighted the affirmative effort made by the defendants to embed the tweets, namely, copying the embed code into the HTML code for the offending webpages.

Second, the court relied on the guidance of the Supreme Court of the United States’s decision in American Brodcasting Cos., Inc. v. Aereo, Inc., concerning a service provided by Aereo which allowed subscribers to stream television programs over the internet as they were being broadcast over the air. In Aereo, Aereo was found liable for infringing ABC’s public performance right even though the subscriber controlled which “performances” (TV shows) were being transmitted, not Aereo:

This difference means nothing to the subscriber. It means nothing to the broadcaster. We do not see how this single difference, invisible to subscriber and broadcaster alike, could transform a system that is for all practical purposes a traditional cable system into a “copy shop that provides patrons with a library card.”

Third, the court emphasized that Perfect 10, though affirmed by the Ninth Circuit, was in fact not widely adopted. The case law is scattered at best, and those U.S. District Courts that did address Perfect 10 directly often did so with respect to the exclusive right to distribute a work under the Copyright Act, not the exclusive right to publicly display it. The court also noted that two deciding factors in Perfect 10 were that Google, the defendant, operated a search engine, and that the user made an active choice to click an image before it was displayed.

The court concluded with the position that the results are not nearly as dire as the defendants suggest. There are a number of important defenses available: the argument that Goldman released the photo to the public domain by sharing it on Snapchat, fair use, and a defense under the DMCA.

What’s important to note about this decision is that it only addresses the question of whether the act of embedding a copyrighted work violates the public display right under the Copyright Act. It does not address liability or any defenses. The parties agreed to let the court divide the litigation into two phases, with the ultimate decisions regarding liability occurring at a later date. In this particular case, there’s a strong argument for fair use, as the photo was newsworthy and was subsequently used by the defendants for sports journalism.

Personally, I’m not yet alarmed by this decision. As I mentioned, the court hasn’t ruled on liability yet, and the defendants may very well appeal the decision to the Second Circuit regardless. Moreover, as the court said, the case law on this issue is both sparse and scattered, and this is currently the law in but one U.S. district.

What do you think? Do you think the S.D.N.Y. got it right? I’d love to hear your thoughts in the comments!

Amazon Brand Registry: A TM Protection Tool for Online Sellers

Last year, Amazon overhauled its brand registry system, enabling brand owners to take stricter control over the sale of their products. Provided the brand meets Amazon’s eligibility criteria, the program gives brand owners increased authority over listings featuring their brand names, among other (supposedly) more robust tools geared toward curtailing trademark infringement and sale of counterfeit goods.

There is a caveat, however: sellers seeking to take advantage of the program must first show ownership of a registered trademark. Moreover, Amazon currently only offers this program to owners of registered trademarks that

  1. include words, letters, or numbers, and
  2. “have been issued by government patent and trademark offices in the United States, Canada, Mexico, India, Australia, Japan, France, Germany, Italy, Spain, the United Kingdom, and the European Union.”

These criteria limit eligibility pretty narrowly. First, only owners of registered word marks or composite marks (words and design) may enroll. This means that trademark owners whose only registrations are for pure design marks with no “literal elements” are -- at least for now -- SOL. Second, honestly, it isn’t clear to me whether “government patent and trademark offices in the United States” includes solely federal registrations issued by the USPTO, or if it includes state-issued registrations as well. If I were to guess, though, I’d assume it means federal registrations only. Fortunately, aside from these two restrictions, the requirements otherwise seem straightforward: provide your trademark registration or serial number, images of the logo, images of the products carrying the logo, a description of the applicable product categories, and the countries in which the products are manufactured and distributed. Owners of federally-registered trademarks will have already provided most of this information to the USPTO.

In any event, for Amazon sellers who meet the requirements, Amazon Brand Registry might be another valuable tool in your trademark protection tool belt. For more details on the program, check out the Amazon Brand Registry summary and FAQs.

If you have any questions about trademark protection or trademark registration, feel free to contact me!

UDRP, for When "Your Domain is in Another Castle."

When you think of trademark enforcement measures – y’know, as one does – I would wager that the first ones to come to your mind are cease and desist letters and lawsuits. Of course, this is for good reason: the former can be very economical, and the latter can provide closure. However, in the age of information technology, where money is earned and lost depending on web traffic, and a high-demand domain name can command prices in the millions, the value of securing a quality domain name cannot be understated. So what do you do when you, a (legitimate) trademark owner, seek to register a domain for your trademark, and you’re faced with

No, I  don't  want "thedomainyouwantisunavailable .us ," and don't even get me  started  on " .biz ."

No, I don't want "thedomainyouwantisunavailable.us," and don't even get me started on ".biz."

Well, under certain circumstances, trademarks owners may have another option: filing a “UDRP” complaint.

The UDRP, or “Uniform Domain Name Dispute Resolution Policy” – liberal understanding of acronyms, I know – is a policy adopted by ICANN and mandatorily adopted by all domain registrars. The policy allows the owner of a registered trademark to file a complaint against the registrant of an infringing domain with the goal of cancelling, suspending, or acquiring the offending domain. Complaints are submitted to the dispute resolution service provider of the complainant’s choice, and are reviewed by either a single arbitrator or a panel of three, depending on the parties’ preferences (and budgets). Respondents have 20 days to answer, and once an arbitrator has been appointed, the decision is made within 14 days. From complaint to decision, UDRP proceedings can be resolved in under as little as 60 days.

In order to file a complaint, the aggrieved party must have a trademark. Beyond that, the complaint is fairly straightforward and follows a pretty standard format, though there may be some minor differences between arbitration providers. Generally, the complaint must set forth:

  • the name of the complainant;
  • the name of the respondent;
  • the offending URL and domain registry info;
  • the complainant’s relevant trademarks, including descriptions of goods and services;
  • the bases for the complaint; and
  • the relief sought

Rule 3 of the UDRP Rules describes the specific contents required in a UDRP complaint.

There are currently five providers approved by ICANN: the Asian Domain Dispute Resolution Center, the National Arbitration Forum, the WIPO Arbitration and Mediation Center, the Czech Arbitration Court Arbitration Center for Domain Disputes, and the Arab Center for Domain Name Dispute Resolution. The providers abide by the same UDRP rules of procedure, and they all have jurisdiction to handle UDRP complaints from anywhere, so deciding is mainly a matter of personal preference (and, again, budget). Like U.S. District Courts, however, each provider has its own local/supplemental rules.

Of course, there are drawbacks. As with any legal proceeding, there’s no guarantee of success. A respondent may successfully defend against a UDRP complaint by showing legitimacy of use. Another disadvantage is that, because a UDRP action solely concerns domain name registrations, the scope of relief is narrow and relates only to the complained-of domains and is only applicable against the named domain registrant of record. To that end, a UDRP decision against an infringing respondent won’t (necessarily) put them out of business, especially if (a) they own many domains, or (b) the named domain registrant is different from the actual infringer. Moreover, while a UDRP action is cheaper and quicker than litigation, the up-front cost is still substantial: the filing fee for a single-arbitrator proceeding is in the neighborhood of roughly $1500 across all five providers, give or take a couple hundred. Given the costs and risks associated with UDRP proceedings, it is likely an avenue best used by owners of registered trademarks or owners who have already invested heavily in their trademarks.

In sum:

PROS

  • Easy
  • Quick turnaround
  • Cost-effective

CONS

  • High up-front cost
  • Narrow relief
  • No guarantee of success

UDRP complaints are a helpful trademark enforcement tool, especially today, where domain names are a valuable commodity. The relatively low cost and quick turnaround make it a good intermediate step for those aggrieved trademark owners who have already sent (multiple) cease and desist letters, and who have the resources to litigate but are not yet ready to make the commitment.

As always, if you have any questions, feel free to contact me!

WHAT.

WHAT.

On Marijuana-Related Trademarks

There have been quite a few pot-related trademark cases in the last year.

Back in June, the Trademark Trial and Appeal Board (TTAB) decided In re PharmaCann LLC, Serial Nos. 86520135 and 86520138 (June 16, 2016) (precedential), affirming the USPTO examining attorney’s refusal to register the marks “PHARMACANN” and “PHARMACANNIS” for “retail store services featuring medical marijuana” and “dispensing of pharmaceuticals featuring medical marijuana.” The basis for the refusal was that the claimed services are illegal under the Controlled Substances Act (CSA), and therefore PharmaCann couldn’t have a bona fide intent to lawfully use the marks in commerce.

Before diving into the case, let me start by saying that there are many trademark registrations and registration applications for services relating to marijuana:

2080, and these are just the ones for marijuana-related  goods and services  .

2080, and these are just the ones for marijuana-related goods and services.

And not all registration applications get refused: many marijuana-related services are for education, advocacy, and other activities not related to distribution. However, I think the PharmaCann case – and the TTAB cases preceding it – represents a common misunderstanding by the public about drug laws: that state legalization has any force against federal prohibition.

What Happened in PharmaCann?

PharmaCann applied to register the PHARMACANN and PHARMACANNIS marks, and the examining attorney refused to register both because the goods and services described activities prohibited by the CSA. The examining attorney further requested that PharmaCann amend and clarify its goods and services. Interestingly, PharmaCann revised the goods and services descriptions in both applications to say “Dispensaries selling medical marijuana in compliance with Illinois state law.” As you might expect, the examining attorney issued final refusals on the same grounds.

PharmaCann appealed the refusal to the TTAB. On appeal, the examining attorney repeated his argument: the CSA prohibits manufacturing, distributing, or dispensing controlled substances, including medical marijuana, and PharmaCann’s services include selling, distributing, and dispensing medical marijuana. Case closed.

PharmaCann argued that its intended use of the marks doesn’t per se violate the CSA for two reasons. First, it argued that the Department of Justice has refused to enforce the CSA against medical marijuana since 2009:

[PharmaCann] claims that “[o]n October 19, 2009, the United States Department of Justice announced that it no longer would prosecute caregivers for providing medical marijuana or individuals for using medical marijuana, so long as the ‘actions are in clear and unambiguous compliance with existing state laws providing for the medical use of marijuana,’” and that “[o]n August 29, 2013, the Department of Justice renewed and reiterated its stance on not enforcing the [CSA] against medical marijuana.”

Second, PharmaCann argued that Congress has agreed with the DOJ position. In the Consolidated and Further Continuing Appropriations Act of 2015 (as renewed in 2016 and 2017), Congress prohibited the DOJ from expending funds to prevent states that have legalized marijuana from implementing their state laws authorizing the use, distribution, possession, or cultivation of medical marijuana. In short, if Congress and the DOJ aren’t enforcing the CSA against medical marijuana, the TTAB should follow suit.

The TTAB rejected both arguments. Regarding the DOJ’s position, the DOJ’s August 29, 2013 memorandum was intended merely as guidance for enforcement, and explicitly noted that “neither the guidance herein nor any state or local law provides a defense to a violation of federal law . . . .” As for the Congressional argument, the TTAB noted that Appropriations Acts did not make medical marijuana legal under the CSA. Ultimately, PharmaCann loses.

The CSA (and the Supremacy Clause) is Still a Thing

If this decision and others like it have anything in common, it’s the message that the Controlled Substances Act is still here despite what the individual states do. While PharmaCann’s Appropriations Act argument was novel, it isn’t an uncommon sentiment: “I operate in a state where growing, distributing, and using medical marijuana is legal, so I should be able to conduct my medical marijuana business.” That isn’t how the law operates, though. We have two systems of law, state and federal, and under the Supremacy Clause (Art. VI, cl. 2), federal law takes precedent. The CSA trumps state legalization statutes.

What Does it Mean?

Does this mean you can’t ever register a trademark for marijuana related goods and services? No. Does it mean that you can’t ever register a trademark that references marijuana? No. This case simply reinforces the principle that marijuana retailers and dispensaries are still “illegal” uses for purposes of trademark registration regardless of whether the applicant uses the mark in states where marijuana distribution is “legal.”

Additionally, the USPTO has tunnel vision: it is only ever concerned with one question, whether a trademark may be registered. Even PharmaCann can still use the PHARMACANN and PHARMACANNIS trademarks, they simply won’t enjoy the protections that come with registration. Moreover, the USPTO doesn’t enforce drug laws, it doesn’t force businesses to shut down— it doesn’t even handle trademark infringement actions. However, as I mentioned in my post about Matal v. Tam, all trademark registration applications are public record, including applicant information. While the USPTO doesn’t enforce drug laws, the information is publicly available and relatively easy to find.

As always, if you have any trademark questions, don't hesitate to contact me!

Matal v. Tam Decided!

It's funny: now that I'm out of law school, I enjoy reading Supreme Court cases.      

Anyway, the day of reckoning is finally upon us. Matal v. Tam (formerly Lee v. Tam) has just been decided by the Supreme Court of the United States: the disparagement clause of the Lanham Act, 15 U.S.C. § 1052(a), is unconstitutional under the Free Speech Clause of the First Amendment. I’m not too surprised by this outcome and, personally, I think the Court came to the right decision.

First, by way of background for those who aren’t familiar with this case, The Slants are an all Asian-American dance rock band based in Portland, Oregon. Their name is partially derived from the anti-Asian slur referring to the shape of their eyes. Simon Tam, the founder and bassist for the band, applied to register the “The Slants” at the U.S. Patent and Trademark Office. The examining attorney refused to register the mark on the basis that it disparaged Asian people in violation of section 2(a). Tam appealed to the Trademark Trial and Appeal Board, which affirmed the decision of the examining attorney. Tam further appealed to the U.S. Court of Appeals for the Federal Circuit, which heard the case en banc, meaning that the entire court heard the case, rather than the three-judge panel typical of hearings before U.S. Courts of Appeals. The Federal Circuit ruled in Tam’s favor, finding that the disparagement clause is unconstitutional under the Free Speech Clause of the First Amendment. Finally, then-Director of the USPTO, Michelle Lee, petitioned the Supreme Court, and the Court granted cert.

In short, the Supreme Court agreed that the disparagement clause is unconstitutional because it isn’t “viewpoint-neutral.” The Courts are very reluctant to uphold a law that restricts speech based on its content. This includes laws that favor or discourage a particular viewpoint. In Tam’s case, the Court concluded that “The Slants” and similar offensive or hateful language is a viewpoint, and by refusing to register it, the government took a side. The Court rejected the government’s arguments that (1) trademarks are government speech (they aren’t); (2) trademarks are a form of government subsidy (they aren’t); and (3) that the Court should adopt a new test to determine the constitutionality of the disparagement clause (it shouldn’t).

So The Slants will likely get their trademark registration, provided there are no further substantive problems with the mark.

As I said, I think the Court made the right decision. Like it or not, we have a longstanding legal tradition of protecting even offensive speech:

[T]he proudest boast of our free speech jurisprudence is that we protect the freedom to express “the thought that we hate.” Lee v. Tam, 582 U.S. _ (2017) (quoting United States v. Schwimmer, 279 U. S. 644, 655 (1929) (Holmes, J., dissenting)).

It isn’t the government’s place to police unpopular, offensive, or hateful ideas – it’s the people’s.  Those of us who abhor hateful speech have to counter it with our own speech, and hope that when it all shakes out, the majority of people are well-meaning, rational, and on our side. I get it, though. It's 2017. Simon Tam might be a special case – not everyone who adopts an ethnic slur is a marginalized minority doing so with the intention of co-opting it. Did the Supreme Court just open the floodgates and permit the U.S. Trademark Register to become a wretched hive of scum and villany?

I don’t think so.

Here’s the thing: first, Brandenburg v. Ohio has been on the books for almost 50 years now. National Socialist Party of America v. Village of Skokie, 40 years (40 years last Wednesday – spooky). People know that protected free speech includes hate speech. Have you read YouTube comments before? People know.

Second, I’m going to assume that the small number of opportunists who, inspired by this decision, decide to apply to register a hateful mark solely for the purpose of being hateful probably don’t understand federal trademark registration procedure. It’s a legitimate legal proceeding not unlike filing a lawsuit. U.S. trademark registrations and applications are public record, including the applicant’s name and address. Even if someone pays the $225-600 filing fee, fully expecting to abandon the application, the record is permanent. For the even smaller number of folks who intend for their marks to register, they have to show use in commerce, meaning that at some point they have to transact business using that mark and submit proof, which also becomes public record. If someone really wants their name or business to be permanently associated with a hateful mark, fair enough. For most, though, I imagine it isn’t preferable.

It’ll be interesting to see where trademark law goes from here (if anywhere). I believe the Redskins appeal was stayed pending the outcome of this lawsuit, so that case might be decided soon now that there's guidance from the Court.

As always, if you have any questions about trademarks, contact me!

You can read the full Supreme Court Opinion here!

For more legal scholarship regarding the Tam case, SCOTUSBlog has some solid coverage, as well as all of the amicus briefs if you're a real Constitutional law junkie.

SCORE Intellectual Property Basics Recap

On Thursday I had the privilege of giving a presentation on intellectual property law along with my friend, Michael Gu, to some of the small business owners at Boston SCORE. We covered patents, trademarks, copyrights, and trade secrets. Here’s a quick recap of some of the main takeaways.

Trademarks

Use it or Lose it

Trademark rights arise from use, whether your mark is registered or not. If you’re using your trademark on a "common law" basis (using it without registering it), your rights cease when your use ends. Even if you have a registered trademark, your registration will be cancelled if you fail to show proof of continued during your renewal period.

U.S. Registration is a Legal Proceeding – Get Assistance

Applying for a federal trademark registration is a process involving substantive legal analysis and adherence to strict deadlines. It isn’t as straightforward as applying for a business certificate or filing to create a new entity. For example, responding to an examining attorney’s refusal to register a trademark requires legal argumentation similar to that of a motion in litigation. To that end, it’s strongly recommended that you hire an attorney. Even the USPTO recommends retaining a lawyer. *cough*

Use your Mark Properly

You threaten your trademark rights when you don’t use your mark properly. Some tips for proper use include

  • Using the trademark consistently
  • Using the trademark as an adjective, not a noun or a verb
  • Using trademark notices (TM/SM if it isn’t registered, ® if it is)

Copyrights

Check out my AIGA presentation recap for an overview of basic copyright law.

Patents

Patentable Subject Matter

“Anything under the sun that is made by man” may be patentable. However, patents don’t protect abstract ideas, laws of nature, and natural phenomena. Moreover, the invention must be useful, novel, and non-obvious.

Rights Granted

Patents grant the exclusive right to exclude others from making and using your patented invention. The right must be affirmatively asserted, it isn’t automatic. The right is also limited in geographic scope: a U.S. patent cannot be enforced outside of the U.S.

Visit www.uspto.gov/patent or contact a licensed patent agent or patent attorney for more information.

Trade Secrets

What is a Trade Secret?

A trade secret is information that (1) derives independent economic value from its not being generally know and not being readily ascertainable by other persons; and (2) is subject of reasonable efforts to maintain its secrecy.

The Law Varies from State to State

While many states have adopted the Uniform Trade Secrets Act in some form, a number of states, including Massachusetts, have not. Some protect trade secrets by separate statute, and others protect them under common law.

Closing Thoughts

This was another fun presentation with a very active audience. My Kevin James joke bombed – I guess even I can’t make Paul Blart funny, but you can’t win ‘em all. Thanks again to Boston SCORE for letting us give the presentation, and thanks to Harvard Ed Portal for letting us use their cool location.

As always, if you have any questions about copyright or trademark, don’t hesitate to contact me!

#Trademarks

Let’s talk about hashtags. Can I register one as a trademark? Do they even work as a trademark? What should I do? #help

Believe it or not, the USPTO actually has guidance on hashtag marks – section 1202.18 of the Trademark Manual of Examining Procedure (or “TMEP”), if you’re curious. #blessed

Trademarks are identifiers of the source of goods or services. They’re adjectives: Nike sneakers, Skullcandy headphones, Jif peanut butter, etc. That is why “descriptive” or “generic” marks are considered “weak” as trademarks: they identify the product, not the source. To that end, marks containing the word “hashtag” or the “#” symbol are only registrable as a trademark if they can serve to identify the source of goods or services. #foundationsoftrademarklaw

What this means is that, generally, the words following “hashtag” or “#” have to be registrable as a trademark. Here are a couple of examples of registered hashtag marks from the USPTO: #VISIONISCOOL (optometry and ophthalmology services);  #WERUNTOGETHER (charitable fundraising and athletic event promotion); #WHITEANDWOKE (clothes); #INSTAREADY (cosmetics); #GOBOWLSDEEP (juice bar).

“Hashtag” or “#” by itself typically does not function as a trademark unless it is distinctly stylized or designed, or if the goods and services are not related to social networking. For example:

(For accounting and financial services)

(For accounting and financial services)

(For downloadable content sharing app—all I know is that his name is “Hashtaggy” and there’s no way I  wasn’t  going to include him)

(For downloadable content sharing app—all I know is that his name is “Hashtaggy” and there’s no way I wasn’t going to include him)

Because the practical function of a hashtag is to make data searchable on a social network, applying to register a hashtag mark used in connection with any social networking or related services will likely result in a refusal by the USPTO on the basis of “mere descriptiveness” (also known as a “§ 2(e)(1) refusal”). Moreover, adding “hashtag” or “#” to an otherwise unregistrable mark will not make it registrable. #realitycheck

Sometimes the USPTO will also ask applicants to disclaim the “hashtag” or “#” portion of the mark, meaning that applicants cannot claim the exclusive right to use that part of the mark. #noclaimismadetotheexclusiverighttousehashtagapartfromthemarkasshown

In short, hashtag marks can function as trademarks and can potentially be registered at the USPTO.  Personally, given that technology changes so frequently and that social networks come and go along with it, I wonder if registering hashtag marks is worth the expense. I would venture a guess that in 5-10 years, Twitter and Instagram will be replaced by yet another service, possibly one not using hashtags, and when those hashtag marks are up for renewal at the USPTO, the $300+ per class maintenance fees won’t be #worthit.