Chicago Cubs Celebratory Hashtag Strikes Out At Trademark Trial And Appeal Board

A Chicago Cubs fan is feeling the effects of a loss before any players even report to Spring Training. A ruling by the Trademark Trial and Appeal Board (TTAB) states that the fan and owner of Harry Caray’s Restaurant Group, Grant DePorter, cannot register the hashtag “#MAGICNUMBER108” as a trademark for use with a variety of apparel.

Initially, the examining attorney assigned to DePorter’s application said that the trademark application was not worthy of registration, because #MAGICNUMBER108 is informational matter that fails to function as a trademark to indicate the source of DePorter’s goods and to identify them from the goods of others. The TTAB affirmed the examining attorney’s opinion.

The ruling is a good reminder to those who believe that simply anything can be registered as a trademark. That is certainly not the case. Citing multiple cases, the TTAB notes as follows:

“The Trademark Act is not an act to register mere words, but rather to register trademarks. Before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify.”

Including a mark on a specimen does not necessarily mean that the mark will be registered, as is shown in the #MAGICNUMBER108 case.

“[T]erms and expressions that merely convey an informational message are not registrable,” said the TTAB in its opinion.

The main issue with DePorter’s application is that the mark is a commonly used term or expression, which means that it is less likely for the public to use it to identify only one source. As such, it would deem the mark as being unworthy for registration status.

Interestingly, the case also demonstrates that social media activity surrounding a mark may serve to diminish its ability to be registered. Here, the examining attorney cited to numerous social media postings that included #MAGICNUMBER108 during and after the 2016 World Series.

Many baseball fans, and probably most Cubs fans, know that the #MAGICNUMBER108 stands for the number of years between the Cubs World Series victory in 2016 and the franchise’s previous win in 1908. While DePorter has definitely used the #MAGICNUMBER108 extensively, it appears that many others have as well. Again, the TTAB’s position on social media use is quite informative.

“[A]ny evidence demonstrating widespread use of the wording is relevant, including, in this case specifically, social media tweets and posts of the type the Examining Attorney made of record in this application,” stated the TTAB. It added, “[t]he evidence provided by the Examining Attorney shows wide use of the proposed mark in a non-trademark manner to consistently convey information about the Chicago Cubs’ World Series appearance and win after a 108-year drought. This evidence is competent to suggest that upon encountering Applicant’s ‘mark,’ prospective purchasers familiar with such widespread non-trademark use are unlikely to consider it to indicate the source of Applicant’s goods.”

Further, the inclusion of a hashtag can hurt an application’s likelihood of success.

“Where a hashtag is used as part of an online social media search term, it generally serves no source-indicating function, because it merely facilitate[s] categorization and searching within online social media,” said the TTAB.

Essentially, the TTAB is saying that inclusion of a hashtag helps prove that the intention is widespread use of the mark by many, thereby potentially eliminating the right to registration status. It is an interesting observation that could cause future applicants to rethink the use of the popularized hashtag in their marks. The caveat to that is hashtag marks will be registered if used to create product awareness, but that was not found to be the case with DePorter’s use of #MAGICNUMBER108.