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US: Hashtags do not prevent likelihood of confusion




With the expanding popularity of social media, the use of the hashtag symbol (#) – a social media tool placed in front of a word or phrase to create a metadata tag to indicate what a message is about – in conjunction with trade marks has become increasingly common. The Trademark Trial and Appeal Board (TTAB) recently addressed the issue of what role the inclusion of the hashtag plays in differentiating similar marks in the precedential opinion issued in In re i.am.symbolic, llc.

Applicant, i.am.symbolic, llc, filed a trade mark application for the mark #WILLPOWER in standard characters covering a range of apparel products. The USPTO examiner handling the application refused to register the mark on the grounds that, when used in connection with the identified goods, the mark so resembles a third party registration for the stylised mark "WILLPOWER WEAR Have the Will…" as to be likely to cause confusion. After the applicant's request for reconsideration was denied, an appeal of the refusal proceeded before the TTAB.

In its appeal brief, the applicant argued that its founder, Will Adams, is known globally under his stage name WILL.I.AM as the front man for the Grammy Award winning and platinum musical group The Black Eyed Peas and whose solo album is titled "#willpower", and that the goods to be sold under the applied-for mark are "targeted to, and purchased by, wholly different consumers, namely, consumers seeking merchandise in connection with Applicant's album and with Applicant." The TTAB was not persuaded by this argument, indicating that for the purposes of determining the availability of the mark for registration, it must consider the goods as they are identified in the application, stating that "[w]hile the Applicant may be associated with William Adams, there is nothing in the application that limits the marketing of the goods to methods that would unmistakably associate the goods with him, his persona, or his album."

The applicant also argued that the inclusion of the hashtag symbol helped to differentiate its mark from the cited registration. In addressing this issue, the TTAB held that the use of a hashtag plays a functional role in facilitating searches on social media platforms and, therefore, "generally adds little or no source identifying distinctiveness to a mark." Having determined that the hashtag in the applicant's mark did not serve to distinguish the mark, the TTAB found that there were no design elements in either of the two marks which would diminish the significance of the words "WILLPOWER". Specifically, the TTAB ruled that "although the additional wording and design elements in Registrant's mark and the hash character in Applicant's mark present dissimilarities, they are not sufficient to overcome the strong similarities in connotation and overall commercial impression that the marks share due to the identity of the dominant element, WILLPOWER." Looking at the mark in its entirety, the TTAB held that the term "WILLPOWER" (which is the term shared between the marks at issue) stands out as the most dominant element of the mark and conveys a stronger commercial impression than the "#" symbol.

Accordingly, the TTAB affirmed the refusal to register the #WILLPOWER mark. The issue may not, however, be fully resolved as the applicant subsequently gave notice of its appeal of the TTAB's order to the US Court of Appeals for the Federal Circuit.



Karen Artz AshBret J Danow

Katten Muchin Rosenman LLP 
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com


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