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#METOO Trademark Controversy

Sometimes trademark issues bump up into real-world controversies. The makeup brand Hard Candy provides the latest example. On January 17, 2018, TMZ reported that Hard Candy had “applied to trademark #MeToo for fragrances and makeup.”

The story made its way around the Internet, as these things do, and within a few days, Hard Candy had provided the following statement to Bustle:

“As a brand devoted to women since its inception, Hard Candy has and will continue to support women’s rights. Hard Candy has always quietly and proudly supported a non-profit organization that directly contributes to many women’s causes.When the trademark application for #metoo was filed, one of our objectives was to bring greater awareness to this important and long overdue movement”…

“We planned to donate 100% of all profits arising from this trademark to #metoo. Based on several public responses, we have abandoned the application. We will continue to support the work of this watershed movement and other causes that respect the dignity of women and all people.”

So what happened here, from a legal perspective?

On October 20, 2017, Hard Candy, LLC filed an application with the United States Patent and Trademark Office (USPTO) on the basis that they intended to use #METOO, and wished to register it as a trademark, in class 003 for “Cosmetics; Fragrances”. You can see the USPTO filing here.

Let’s stipulate that this was a dumb move.

The timing here is interesting. Note the application date – October 20, 2017. Life comes at you fast, and just three months later (as I’m writing this), it seems like the #MeToo movement (and hashtag) have been with us forever.

However, the hashtag #MeToo, while it had existed for a while in the context of sharing stories and support around sexual harassment issues, didn’t become widely popularized until October 15, 2017 when Alyssa Milano Tweeted about it*. The New York Times story that blew the lid off of Harvey Weinstein’s decades of misbehavior had only been released ten days earlier, on October 5, 2017. So it’s clear that Hard Candy jumped right on this trend as it was emerging.

OK, so Hard Candy filed their application to register #METOO as a trademark. Then what?

As I constantly have to tell clients, once you file a trademark application with the USPTO, nothing happens for roughly four to six months. Finally, you’ll either receive a notice that the application has been approved, or you’ll receive a letter (called an Office Action) from the Examining Attorney assigned by the USPTO to review the application, explaining why it’s being rejected. Sometimes the Office Action details minor issues that can be resolved with a simple filing; sometimes it identifies problems that are fatal to the trademark application.

Of course, nothing’s that simple, and there are a few other things that can happen to a trademark application, but let’s leave that aside for now.

But wait, you say…it takes four to six months to hear back from the USPTO and it hasn’t even been that long since October 20, 2017. True. Somehow TMZ discovered the application had been filed. And because of the subsequent social media uproar, Hard Candy decided to cancel their application by filing a Request for an Express Abandonment. That was filed on January 18, the application was abandoned on January 19, and that’s that. Hard Candy’s #METOO filing with the USPTO is done.

What would have happened if Hard Candy hadn’t abandoned the application?

If you read about this issue online, you’ll probably see it written that Hard Candy “trademarked #METOO” or “tried to trademark #METOO” – that’s not accurate. “Trademark” isn’t a verb. You can’t “trademark” anything. You can apply to register a brand as a trademark. That’s what Hard Candy did. And then they cancelled that application.

Even if the application had proceeded, and the USPTO had issued Hard Candy a trademark registration for #METOO (it’s questionable whether the USPTO would have done so), Hard Candy would not have “owned” that hashtag. They would have had the exclusive right to use that phrase as a trademark, or as a brand name, for cosmetics and fragrances. Victims of sexual harassment and their allies would still have had the right to use the #MeToo hashtag wherever and whenever they chose to do so.

Nonetheless, as stipulated above, this was a dumb move by Hard Candy, and, in any event, it’s no longer an active trademark application.

There are, however, some other “MeToo” trademark filings worth noting.

MeToo! (in the logo form pictured to the right) is a registered trademark datingMeToo! back to 2012 for the following services: “Providing an interactive web site for persons to register complaints against companies and/or services of all types.” The registration is owned by Sagacity Corporation; I haven’t been able to find the website.

On November 28, 2017, a company applied to register #METOO for “Rubber or silicone wristbands in the nature of a bracelet.” The application is pending.

On December 1, 2017, a Virginia law firm called Excellaw PLLC applied to register #METOO and #METOO CLAIMS for “Legal consultation services.” The applications are pending.

And finally, the most interesting one of all. On November 6, 2017 – one day after the Weinstein story broke – a company called Metoo, Inc. applied to register the phrase METOO as a trademark for “On-line social networking services; Providing a social networking website for entertainment purposes” and “Computer application software for mobile phones, handheld computers and tablet computers, namely, software for social media for the purpose of networking and connecting with other users in close proximity and who share common interests; Computer software for social media for the purpose of networking and connecting with other users in close proximity and who share common interests.”

I have to imagine this was just a coincidence and plain old bad luck. The application is still pending, so I’ll be curious to see what happens with this one.

* (I’m basing my timeline on this Wikipedia article and my own recollections – please let me know if the record needs correcting.)

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