On October 20, 2017, Hard Candy LLC applied to register #METOO as a trademark for cosmetics and fragrances. The application was likely to be rejected. As the hashtag for a social movement, #METOO does not function as a trademark. However, Hard Candy voluntarily abandoned the application before it was even examined by the United States Patent and Trademark Office (USPTO). Why?
On January 17, 2018, TMZ reported that the cosmetics company, which sells makeup and accessories exclusively through Walmart, was trying to lock down the exclusive right to use #METOO as a brand. Overnight, the company was flooded with criticism, with many on social media accusing the company of attempting to capitalize on the current social movement to speak out against the widespread prevalence of sexual assault and harassment. It is a cautionary tale for companies who wish to secure trademarks for terms associated with social movements. Not only is it likely to be unsuccessful, but it could seriously harm the company’s reputation.
The purpose of a trademark is to preserve the ability of consumers to identify and distinguish a particular source of goods or services. So long as that source-identifying function is present, nearly anything can be the subject of a trademark registration, including a name like Coca-Cola, a symbol like the Nike Swoosh, the pink color of Owens Corning insulation, the layout of Apple Stores, or the flowery musk scent of Verizon stores. In contrast, if the proposed trademark is merely an informational, social, political, or religious message, it fails to function as a trademark.
#MeToo is a textbook example of the kind of social or informational message that simply cannot function as a trademark. The phrase was originally coined in 2007 by Tarana Burke – the director of the organization Girls for Gender Equity. However, it took on a new life in 2017 in the wake of widespread allegations of sexual misconduct against powerful men. The #MeToo hashtag started appearing on social media on October 15, 2017. Since then, it has appeared in millions of social media posts, becoming a symbol of solidarity, women’s empowerment, and the need to raise awareness of the prevalence of sexual harassment and assault.
Hard Candy applied to register a standard-character version of #METOO on October 20, 2017, just five days after it started appearing on social media. If granted, the company would have had the exclusive right to use any variation of #METOO (font, color, design, etc.) in connection with cosmetics, fragrances, and anything related to those products. The application went unnoticed until the January 2018 TMZ article. Less than 12 hours after its publication, Hard Candy’s CEO personally signed the paperwork to abandon the application. He issued a statement claiming that the company intended to donate the proceeds from the sales of #METOO products, but by that point, the damage was done.
For trademark practitioners, the decision to seek registration of a #METOO trademark seemed unwise. #METOO is a textbook example of the kind of informational, social, or political message that would lead to a failure-to-function as a trademark refusal. For instance, of the 15 applications that were filed to register BLACK LIVES MATTER:
Seven were abandoned after receiving a failure-to-function as a trademark refusal;
Six are currently awaiting examination (but will likely suffer the same fate);
Likewise, 11 applications were filed to register BOSTON STRONG in the wake of the Boston Marathon Bombing (two of which were within two days of the tragedy). All 11 applications received a failure-to-function as a trademark refusal, and every single one has since been abandoned. Similarly, someone applied to register a trademark for SEPTEMBER 11, 2001 on September 11. The application received a failure-to-function as a trademark refusal, the applicant appealed, and somewhat unsurprisingly, he lost.
In the case of #METOO, Hard Candy is not alone in attempting to lock down the exclusive right to sell merchandise with that phrase. Applications have been filed to register METOO for social networking software, #METOO for rubber or silicone wristbands, and #METOO and #METOO CLAIMS for legal consultation services. In all likelihood, these applications will be rejected. However, if the Hard Candy case is any indication, it’s not just the loss of the trademark application at stake, but also, the company’s reputation.
The opinions expressed are those of the author(s) and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes and is not intended to be and should not be taken as legal advice.
Jon Jekel is an Associate in the Silicon Valley office, where he advises artists, inventors, entrepreneurs, and Fortune 500 companies on business and intellectual property matters. In that capacity, he has served clients in a wide array of industries, including analytics, cosmetics, cleantech, consumer products, cloud computing, computer...
Lisa Greenwald-Swire is a Trademark and Copyright Principal in the Silicon Valley office of Fish & Richardson. Her practice focuses on global trademark counseling and prosecution including brand strategy, strategic portfolio development, licensing, and trademark rights on the...