A recent case is a decent reminder that using someone else’s trademark as a hashtag – even in advertising where you are showing your product is compatible with theirs – will be analyzed under age-old trademark law and not viewed with a keen eye to the limits of the forum or format you chose. So if you get limited to characters and can’t make your use comply with standards, you’ll want to stay away from that forum.
Nominative fair use is a defense to a trademark infringement claim that companies using a another’s mark without permission in comparative or other advertising often invoke. Basically, under this exception to trademark infringement, another company may be allowed to utilize your mark so long as the nominative fair use factors are met – these include an analysis of issues such as: 1) whether your product is identifiable without the identification (mark); 2) whether only so much of the mark as necessary to identify your product was used; and 3) whether the use of your mark implies or suggests your sponsorship or endorsement.
In a recent case from the Northern District of California, the Court addressed such a use in hashtags – taking another’s registered mark and using it in social media as a hashtag. The case was between two companies making dental products and the company using the other’s mark wanted to show/state/convey that its products were compatible with the other’s. A classic comparative situation.
In Align Technology, Inc. v. Strauss Diamond Instruments, Inc., (link to complaint) a competitor of Align, Strauss, used Align’s registered marks – “Invisalign” and “Itero” marks as hashtags – #invisalign and #itero – in different advertisements.
Align filed claims against Strauss for the use, including claims for trademark infringement and requested an injunction to stop Strauss from persisting with the use.
The Court granted the injunction (link to opinion) – analyzing Strauss’s use under the nominative fair use standards from the 9th Circuit New Kids on the Block v. News America Publishing opinion the Court found Strauss did not meet the factors.
Strauss used more of the marks than was necessary to identify the product – namely because Strauss wasn’t using the mark to identify Align’s products…
Strauss was not referring to Align’s products when it used the hashtag marks, it was referring to its own products. Strauss put Align’s marks in hashtags about Strauss products and the activity of being a dentist and when viewed along with the images in the advertisements, the Court found the marks were used in referring to Strauss’s products.
The Court found Strauss’s hashtags did not perform an identification function. Holding that one couldn’t read the hashtags and figure out that the product is the Align product.
The Takeaway: Comparative advertising isn’t going away. Neither is using a hashtag to draw attention to a mark. Given the analysis, it is certain that one argument you may meet in hash tagging another’s mark is whether such a use can meet the nominative fair use criteria. You’ll want to analyze how you are using the hashtags and how regular consumers will view your use. In this case, what Strauss was trying to say was that its products were compatible with Align’s, but it botched the job in not being specific enough as to why it was referencing Align’s registered marks. Leaving open an ongoing question as to whether or not certain forms of social media just aren’t good channels for some types of advertising.