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Cubbies Got the Win, but Restaurateur Loses on Trademark (1)

Feb. 4, 2019, 4:22 PM

A Chicago restaurateur struck out when trying to register a trademark for a hashtag he created referencing the Chicago Cubs’ 108-year World Series drought.

Grant DePorter, CEO of Harry Caray’s Restaurant Group, failed to convince the Patent and Trademark Office’s Trademark Trial and Appeals Board that #MagicNumber108 identified the seller of T-shirts he sold featuring the hashtag.

The Feb. 4 precedential decision highlights the foundational role of consumer perception in trademark registration decisions, even if no one else uses the mark in commerce. It also illustrates how the board evaluates hashtag phrases used on social media in trademark considerations.

The board didn’t deny that DePorter created a unique mark. But social media evidence shows the public sees the hashtag as “a widely-used message to convey information about the Chicago Cubs baseball team,” the board said.

DePorter argued his case differed from other marks rejected as “commonly used” terms, because no one used the phrase in everyday speech before he coined it shortly before the Cubs won the World Series in 2016. He also said no one else used the mark in commerce. DePorter said in his brief that a refusal to register would “set a dangerous precedent” by denying a creative mark registration just because it “may have been included as a hashtag in a handful of tweets.”

But the board sided with the trademark examiner, who said social media posts using the hashtag showed it was a widely used reference to the end of the Cubs’ pennant drought, not as a T-Shirt trademark.

“That the applied-for mark is arbitrary or fanciful does not necessarily mean that the public perceives it as an indication of source,” the opinion said.

#SourceIdentifier

The board dissected the role of prevalent social media hashtags in trademark decisions. A hashtag, which is a ‘#’ followed by words or phrases serving as a search and categorization tool for social media postings, can function as a trademark only if they spread awareness of a product and link it to a source, the board said.

DePorter didn’t use his mark in that manner, despite submitting tweets with the hashtag and pictures of #MagicNumber108 T-shirts, the board said. The opinion cited examples of the proposed mark used as part of the Cubs’ World Series narrative and not to describe a product. In one example, DePorter’s own restaurant used the hashtag in a tweet with a photo of unrelated Cubs sneakers.

“To be registrable, a hashtag—like any other matter—must function as a trademark,” the board said. “That applicant may have been the first to use the phrase and/or hashtag does not change the fact that the evidence shows widespread use of #MAGICNUBMER108 to informationally convey reference to the Chicago Cubs’ World Series appearance.”

Administrative Trademark Judge Linda A. Kuczma wrote the opinion, joined by judges Karen Kuhlke and Christopher Larkin.

The Law Office of Charles T. Riggs Jr. represented DePorter, who made news in 2004 when he spent $113,000 for the baseball famously deflected by a fan at a pivotal point during the Cubs’ 2003 National League Championship Series loss so he could publicly demolish it with explosives.

The case is In re DePorter, TTAB, Serial No. 87229711, 1/29/19

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editor responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com