Hunton Retail Law Resource

Social media can be a minefield of intellectual property issues. The hashtag, for example, began as a searching tool, but now has evolved into its own form of communication. And if a hashtag can include a trademark or otherwise represent a brand, when can you use someone else’s trademark in a hashtag?

In a recent case, the Northern District of California considered this issue, and outlined certain circumstances in which the use of another’s trademark, in a hashtag, would be allowed. Align Technology, Inc., sells INVISALIGN^® products for straightening teeth, as an alternative to metal braces. As part of this process, Align uses a wand-shaped scanner, called iTERO ELEMENT^®, to scan a person’s teeth. Strauss Diamond Instruments, Inc., makes the MagicSleeve, a silicone sleeve to be used with Align’s iTERO ELEMENT^® scanner, as part of the scanning process. Align sued Strauss, claiming, among other things, unfair competition, trademark infringement and patent infringement.

In a motion for preliminary injunction, Align took issue with a series of social media advertisements where Strauss advertised its products with hashtags referring to INVISALIGN^® and iTERO^® products. Below is an example, including #itero, #iteroscanner, #iteroelement, #invisalign:

Strauss argued that it should be allowed to use these hashtags under the doctrine of nominative fair use. Nominative fair use, according to the Ninth Circuit’s New Kids on the Block standard, requires that the product not be readily identifiable without the use of the trademark, that only so much of the trademark be used as is reasonably necessary to identify the product or service and that the trademark use does not suggest sponsorship or endorsement by the trademark holder. Strauss argued that the references to Align’s trademarks and products were necessary to describe the MagicSleeve. The court disagreed, finding that Strauss’ ads used more of the marks than was reasonably necessary, and even used the marks to refer to its own product without mentioning the phrase “MagicSleeve.”

Notably, the court explained that not all use of Align’s trademarks would be prohibited. The court contrasted the challenged ads with other (unchallenged) Strauss ads that would qualify as nominative fair use. For example, the court pointed to an ad including a caption that read “If you are an iTero user, be prepared to cut your overhead down. Our brand new scanner sleeve is autoclavable and allows for faster scanning time.” In this instance adding “#” in front of “iTERO” would not change the analysis. The court distinguished the general use of Align’s mark from the use of a hashtag that does not obviously convey that the MagicSleeve is compatible with Align’s products. Strauss’ hashtags were not permitted because its use of the trademarks did not convey this message, and instead, the repetitive variants of #iTERO and #INVISALIGN likely signal to readers that the MagicSleeve is associated with Align and its brands.