The Northern District of California recently released an order that sheds new light on how courts grapple with the constantly-increasing use of trademarks as hashtags.

Align Technology, Inc., provider of the Invisalign teeth-straightening system, also produces the iTero Element intraoral scanner that allows dentists to obtain three-dimensional scans of a patient’s mouth, teeth, and gums. To complement this product, Align sells single-use protective sleeves that cover the portion of the iTero Element scanner inserted into a patient’s mouth. Strauss Diamond Instruments, Inc. produces a version of the protective sleeve meant to compete with the sleeves produced by Align.

Align sued Strauss in federal court for preliminary injunctive relief to enjoin, among other activity, Strauss’ allegedly infringing use of “#invisalign” and “#itero,” both of which are Align’s registered trademarks, in various advertisements. On April 12, 2019, the Court granted Align’s motion in part, notably granting a preliminary injunction on Strauss’ use of the hashtags.

Applying the 9th Circuit’s nominative fair use, New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992), the Court held that Strauss’ use of the hashtags was unprotected. First, Strauss used the marks to refer to its own products, not Align’s products, which is “the foundational assumption of nominative fair use.” Strauss had used Align’s marks scattered among hashtags referring to its own products and general hashtags about dentistry and attractive teeth, which, taken together with the image these hashtags accompanied, overall referred to Strauss’ product.

Second, Strauss’s use of the marks was not reasonably necessary to identify its product, especially because “the hashtags [did] not perform an identification function.” Instead, they indicated a “vague association” with Align’s products – “you can’t read the hashtags and figure out that this product is the sleeve that goes on the wand of an iTero scanner.” The hashtags did not “better identify” Strauss’ product.

Accordingly, Strauss’ nominative fair use defence failed and the Court enjoined its use of Align’s marks as hashtags.

This decision represents an important development in trademark law concerning hashtags given the limited number of decisions on this topic. Brand owners should be wise to understand that the application of nominative fair use analyses may be how courts approach these hashtag infringement cases going forward.

The case is Align Technology, Inc. v. Strauss Diamond Instruments, Inc., No. 18-cv-06663-TSH (Order, N. D. Cal. Apr. 12, 2019). For more information on using trademarks as hashtags, see Trademarks as Hashtags, Not Hashtags as Trademarks.

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