Trademark Infringement and Joining the Discussion on “#Rio2016”

By August 4, 2016 Articles, Business
Trademark Infringement

Can churches join the Olympic conversation?

With the summer games set to commence in Rio de Janeiro this weekend, the whole world will be watching as more than 10,000 athletes compete in the first edition of the Olympics in South America. And, of course, social media will be trending with the results and electrifying moments — and grinding with non-stop commercial advertising.

Given that those corporate sponsors have invested billions dollars in the games, a debate has made headlines.

The United States Olympic Committee has been accused of “bullying” companies that aren’t official sponsors, sending legal cease and desist letters, demanding that companies remove certain social media content protected by U.S. intellectual property law. Particularly, content with the alleged trademarks “#Rio2016” and “#TeamUSA.”

Should churches worry as they share Olympic-themed content with those hashtags?

From a legal point of view, the question is whether U.S. trademark law provides ownership and protection for those hashtags. Let’s crack open the federal law books, for just a moment. The relevant provision on trademark protection states, in part, that:

Any person who, on or in connection with any goods or services … uses in commerce any word, term, name, symbol, or device, or any combination thereof … which … is likely to cause confusion … shall be liable in a civil action….

15 U.S.C. § 1125 (the “Lanham Act”).

Courts have interpreted this language, distilling it to certain elements for a valid claim for trademark infringement. Generally, an owner of a trademark would need to prove: (a) that the contested marks are protectable; (b) that the claimant owns those marks; and (c) that the offending party’s use of the marks is likely to cause confusion.

For the first two elements, the hashtag in question must meet registrability requirements, as any trademark would. And generally, yes, hashtags can indeed receive trademark protection.

In fact, companies are increasingly filing trademark applications for hashtags related to their products and brands. According to research by Thomson Reuters CompuMark, approximately 1,398 trademark applications for specific hashtags were filed globally during 2015. That number has grown since 2010, when just 7 companies submitted trademark applications on hashtags.

Moreover, the U.S. Patent and Trademark Office has certain written guidelines, in fact, to instruct its trademark application examiners on the subject of hashtags. The key points from that manual are that:

  • The mere addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically cannot render it registrable;
  • A mark comprising or including the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media; and
  • If a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.
  • See Trademark Manual of Examining Procedure, ¶ 1202.18 (Wolters Kluwer eds., 2014).
  • But for our discussion, here, if we assume that “#Rio2016” and “#TeamUSA” are validly registered and protectable trademarks, then the question for churches turns on whether their use of these marks is “likely to cause confusion.”

This is the core element of trademark infringement — whether the offending party’s conduct is likely to confuse customers about the source of the products. The test for likelihood of confusion is whether a “reasonably prudent consumer” in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. Further, the confusion must be probable, not simply a possibility. To answer that question, courts look at many factors, such as evidence of actual confusion and marketing channels used.

Though a more detailed analysis would be needed in each case, it seems unlikely that any “reasonably prudent consumer” would confuse content from a church or an invitation to its Sunday gathering as an offering of the International Olympic Committee. Rather, it’s more likely that your audience will identify the tweet about your favorite athlete or patriotic post as that of a fan, without any commercial confusion or motive.

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