Schroder Brooks Law Firm, PLC




As the song from Annie goes, “You’re never fully dressed without a smile.” But one company wasn’t smiling so much this week when a California federal court granted an injunction against them for using a competitor’s hashtag in social media posts.

Invisalign, by Align Technology, makes a scanner called iTero, that can take a 3-D picture of a patient’s mouth. The scanner uses a single sleeve that slides over a scanning wand. Strauss Diamond Instruments, which also sells dental devices and other dental goods, makes a version of the sleeve called MagicSleeve.

Align filed suit against Strauss, alleging trademark infringement based on Strauss’s use of Align’s marks on social media posts and advertising for the MagicSleeve.

For example, one social media post stated in part: “Our brand new MagicSleeve is autoclavable and allows for a faster scanning time.” Five hashtags followed, including “#invisalign” and “#iTero.” Another post showed a picture of an iTero machine (an image created by Align) with the MagicSleeve superimposed on the image.

While a trademark can be used in advertising under certain circumstances,  such use can’t create the likelihood of confusion or perception of association or affiliation between the product or service being advertised and the trademark. This is called Fair Use, and is often used as a defense in trademark infringement cases.   In order for the Fair Use defense to be valid, however,  the user has to show that the product or service in question is not readily identifiable without use of the mark, only as much of the mark is used as is reasonably necessary, and the use of the mark does not suggest sponsorship or endorsement by the trademark owner of the product or service in question.

Strauss argued that their use of Align’s hashtags was Fair Use – specifically that use of the Align marks was reasonably necessary to identify the product and using the mark did not suggest sponsorship or endorsement by Align of Strauss’s products.

The court didn’t bite. “First, in some cases, Strauss used the marks to refer to its own product….Second, in all cases, Strauss used more of the marks than is reasonably necessary to identify the product.” It was not possible to view #iTero as referring to Align’s products and #MagicSleeve as referring to Strauss’ products as they “are altogether references to the MagicSleeve”. Further, the court argued, “the use of the marks in the hashtags is never reasonably necessary to identify the MagicSleeve.”

The court also stated that a reasonable person would be “confused into thinking that Align has endorsed or sponsored, or given its approval or authorization for, the MagicSleeve”. Strauss was enjoined from further infringing activity.

Why It Matters. The widespread use of social media in advertising makes it virtually impossible that this issue won’t cross your desk at some point. How do you know whether you can use a competitor’s or third party’s trademarks in advertising? First, analyze why you want to use the mark – is it to identify your product? To compare yours to theirs? Take a look at the reasoning behind the use of the marks, the context in which you want to use the marks, and always consult an attorney to make sure you are playing by the Fair Use rules.

Photo: Dan Cook, Unsplash

Addie Johnson