Update on Coca-Cola's Trademarking of Twitter Hashtags

coke-hashtag_mburtonIn what may be a growing trend in social media marketing, attempting to trademark Twitter hashtags -- a phrase or keyword preceded by the symbol # to help users find messages about a topic -- has skyrocketed globally over the past few years. Indeed, according to a recent Wall Street Journal article, "Companies Increasingly Trademark Hashtags" (link), as of 2015, more than 1,000 trademark applications were filed for hashtags in the United States alone. Companies want to capture the market in the various popular social media platforms, including Twitter, and using hashtags that often link to events and products that companies want advertise has become more commonplace. One downfall to this type of marketing, however, is the nature of the hashtag itself – it is open to the public and can be used or retweeted by anyone, including a company's competitors. The fears about a competitor's use of the hashtag, perhaps to redirect attention to the competitor's product or to denigrate the company's product, may be why companies are looking to trademark hashtags for protection from such use. Holding a registered trademark gives a company substantial benefits, including giving the company the exclusive right to use the mark and protection under federal law, specifically, the Lanham Act, 15 U.S.C. § 1114(1) and 15 U.S.C. § 1125, to limit the use and copying of a registered mark by others without permission.

Beverage giant Coca-Cola joined the trend of trademarking hashtags in late 2014 when it filed two applications with the United States Patent and Trademark Office ("USPTO") to trademark two Twitter hashtags: #SMILEWITHACOKE and #COKECANPICS. A Notice of Allowance was granted for both hashtags in 2015. #COKECANPICS was granted a Notice of Allowance on June 9, 2015 and #SMILEWITHACOKE followed shortly thereafter with a Notice of Allowance granted on October 13, 2015.

Despite its trendiness, Coca-Cola however, has appeared to abandon pursuit of trademarking these two hashtags. The USPTO requires a trademark applicant to file a Statement of Use within six months of the Notice of Allowance. A Notice of Allowance is issued by the USPTO when an application is filed based on an intent-to-use the mark in commerce under Trademark Act Section 1(b), the kind of applications Coca-Cola filed here. The Notice of Allowance does not mean that the trademark has been registered yet; actual use in commerce must be shown first before the USPTO will determine whether registration should be granted. Without the filing of a Statement of Use, the trademark application will be considered abandoned. Coca-Cola did not file a Statement of Use for #COKECANPICS, and the USPTO issued a Notice of Abandonment on January 11, 2016. Coca-Cola was to have filed a Statement of Use for #SMILEWITHACOKE in April, 2016, but as of the date of this writing no Statement of Use or extension of time request has been filed by Coca-Cola for #SMILEWITHACOKE.

It is unclear why Coca-Cola has appeared to abandon its attempt to trademark these hashtags and one may never know. But, does the fact that one of the largest and most recognizable brands in the world has abandoned its attempts to trademark Twitter hashtags indicate that the trend will be but a short-lived fad? Only time will tell.

About The Author

Melinda Burton | Faruki Attorney