At the intersection of social media and comparative advertising sits the hashtag. A hashtag is a word or phrase written as a single term preceded by the “#” character. Hashtags are useful for organizing online content and allowing users to find information related to a single topic.
Marketers want hashtags to start trending because doing so increases the spread of a marketing campaign. One potential way to increase that spread would be to include hashtags using the marks of more well-known competitors. A fledgling shoe company, for example, might tag posts with “#Nike” to attract attention from shoe lovers who follow the Nike brand.
The court considered those implications in Align Technology, Inc. v. Strauss Diamond Instruments, Inc. Align owned trademarks for iTero, iTero Element, and Invisalign in connection with dental services, dental and oral healthcare devices, and computer-aided modeling.
The defendant, Strauss, sold dental instruments and related goods, including a product similar to the iTero Element. One of Strauss’s social-media posts included a competitor hashtag, and Strauss argued that it was free to use Align’s marks under the doctrine of nominative fair use.
The nominative fair use doctrine protects use of a trademarked term when necessary to describe the trademark owner’s own products and not the alleged infringer’s products.
In Align, the court said that, depending on the advertisement, it was debatable whether the marks were intended to describe the trademark owner’s products or the defendant’s products. But that did not matter because the hashtags were still a use of Align’s marks beyond what was reasonably necessary to identify Strauss’s product.
Does the version with the hashtags better identify Strauss’s product? The court said no. The product identification came from the picture and text of the advertisement, not the competitor marks in the hashtags.
The court also rejected the argument that hashtags should be treated like metatags. Metatags function behind the scenes to direct searchers to a webpage, but hashtags are visible to consumers in advertising and may imply association between the advertised product and the trademark owner.
In light of Align, anyone involved in social media or marketing should be aware that using a competitor’s trademark as a hashtag could communicate false endorsement or association and fall outside the fair use doctrine.