The hashtag symbol is incapable of distinguishing otherwise confusingly similar trademarks, but that did not stop musical artist Will.I.Am from trying to convince the Trademark Office that it was possible to distinguish marks with a hashtag symbol. i.am.symbolic, llc (company owned by Will.I.Am) applied to register the mark #WILLPOWER for a variety of clothing items. The Trademark Office refused registration of i.am.symbolic’s mark on the ground that it was likely to cause confusion with prior registered mark WILLPOWER WEAR HAVE THE WILL . . . & Design for “hats; jackets; pants; shirts; shoes.”
i.am.symbolic’s principal argument was that the hashtag symbol transformed the meaning conveyed by the word WILLPOWER such that consumers would distinguish the two marks. Instead of conveying “energetic determination,” which is the Merriam-Webster definition of the term, the meaning conveyed by the #WILLPOWER mark is “Will’s power.” Unfortunately for i.am.symbolic, punctuation matters when assessing the meaning of a mark and if it is not present in a mark the Trademark Office will not read punctuation into a mark much like it will not read restrictions into an application that are not present in the identification of goods or services description.
The Trademark Trial and Appeal Board found that a hashtag symbol or the word HASHTAG generally adds little or no source-indicating distinctiveness to a mark. At most, the hashtag symbol simply appears as a social media tool to create a metadata tag.
The fact that the cited mark contained the additional wording HAVE THE WILL and two mountain design was also insufficient to avoid a likelihood of confusion. The Board found that the dominant portion of the marks at issue was the word WILLPOWER, and there was no significant dilution of the term. Finally, i.am.symbollic did not narrow its goods description to narrow the universe of relevant consumers so that its arguments about Will.I.Am being a fashion influencer had a chance of being persuasive.
A couple of things to take away from this case trademark searchers. First, unless dilution is present, if your proposed mark is included in its entirety in a prior registered mark, there is a good chance the Trademark Office will refuse registration of the mark. Second, narrowing the identification of goods or services to overcome a registration refusal is not a bad thing. Too often trademark owners mistakenly believe that if they narrow the identification, then they can’t offer the excluded goods or services. The only impact the limitation has is on your registered rights. It does not prevent the use on other goods or services.