From print advertising to TV commercials, a zinger of a line or a catchy symbol often helps businesses and governments market their services and worm their way into the minds of potential customers. Social media has expanded that impact, particularly as entities claim Twitter hashtags to help further their messages.
Although online networks are great promotional tools, they also increase the risk of someone usurping catch phrases and marks and benefiting from them. As a result, companies are looking at legal options to protect their intellectual property on social media.
The Coca-Cola Company, for example, recently applied for trademark protection of #smilewithacokeand #cokecanpics with the U.S. Patent and Trademark Office (USPTO).
But while government agencies are increasingly adopting hashtags, they aren’t taking the next step to ensure their legal rights. Texas, for example, is considering #Texas, #TexasToDo and #txlege as their official Twitter hashtags. But as of late May, the USPTO’s records showed no pending registrations on file for those marks.
In fact, no government entity has trademarked a Twitter hashtag yet, according to David R. Schaffer, a registered patent attorney with Miles and Stockbridge PC. He told Government Technology that there are 153 live trademark registrations that include a hashtag symbol, and none of them is owned by public-sector agencies.
Joanne Ludovici, a partner in the law firm of McDermott Will and Emery LLP, and the former head of the firm’s Global Trademark Prosecution, Transactions and Strategy Practice Group, said she feels Texas and any agency with official marks that aren’t registered with the USPTO are playing with fire.
“If #TexasToDo, #txlege and #Texas are new, and the Texas Legislature said these are their official mottos, I would have already filed trademark applications for them,” Ludovici said.
Ludovici explained that time is of the essence regarding intellectual property rights when it comes to trademark protection. She added that trademark applications should be on file before announcing anything publicly. That way, if there are nonauthorized uses of the mark later on, the agency will theoretically have the documentation to stave off any legal challenges to its ownership.
“If I had a registration, I go to the trademark office, I get a certified copy of it, and I put that into evidence, and that’s done – I’ve proven that I have those trademark rights,” he said. “That’s one of the big benefits of having a trademark registration.”
Both attorneys said the Twitter hashtag trademark issue is new and still evolving for governments at this point. In an email to Government Technology, Chuck Thompson, executive director of the International Municipal Lawyers Association (IMLA), said it isn’t something his organization was following.
But Thompson, Ludovici and Schaffer were united in the opinion that it’s something decision-makers should begin putting a closer eye on, particularly if slogans that contain hashtags for Twitter will be used by municipalities and other agencies over long-term marketing campaigns. While use of a mark provides certain common law rights, the burden of proof during a legal dispute can be more difficult without a trademark registration.
Cost could be an issue for some smaller government agencies, however. Ludovici explained that there are three levels of filing costs, ranging from $225 to $325. At first blush, that may not seem like a lot. But those charges are per class being filed for. For example, if Texas approves its official hashtags and wants to file for protection on #TexasToDo, it’d be wise to file in multiple product and services classes.
That can add up quickly, particularly if it is a mark that an agency has plans to use, but isn’t using yet. To get the protection for a mark, an agency needs to show use. So while it can file for protection, if it isn’t going to use the mark right away, the agency would need to submit extensions for each trademark category it filed on. And that’s just the USPTO fees. That doesn’t take into account the cost for outside counsel or staff time to prepare the applications and paperwork.
Despite the cost, the protections could be worth it, particularly if Twitter hashtags end up becoming fairly popular, like website domains have. Cybersquatting on domains has been a big problem for years. And while neither Ludovici nor Schaffer sees a similar form of squatting taking place on Twitter hashtags currently, they were concerned about what might occur down the road.
“I don’t know if we’ll see a rush on [it,]” Ludovici said. “But you will see an increase in applications to register hashtags, whether they are legitimate owners or not.”
Brian Heaton was a writer for Government Technology magazine from 2011 to mid-2015.