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Managing The Legal Risk of “Verbing Up” Brands and Trademarks

Posted in Advertising, Branding, Domain Names, Genericide, Loss of Rights, Marketing, Trademarks

Trademark lawyers need to face the facts. Despite decades of ardent counseling to the contrary, business executives and marketers are not only testing the waters with the treatment of their most valuable brands as verbs, in some cases, they are diving in head first, committing substantial resources and effort toward the clearly stated goal of "verbing up" and having their brands used as verbs by consumers in everyday life and conversation. The most recent example is Vanguard’s decision to promote "Vanguarding" over mere investing.

A growing number of brand owners apparently are convinced the stated risk of genericide is either too remote or distant to fear, or at least that the marketing benefits of encouraging the verbing of their brands far exceeds losing all exclusive rights in the trademarks associated with those brands. So, what is a responsible trademark lawyer to do when those in charge of the brand insist on treating it as a verb? Instead of papering the file with "I told you so" memos, I’d suggest we roll up our sleeves, put on our thinking caps, and get creative.

Last year my DuetsBlog post entitled "Just Verb It? A Legal Perspective on Using Brands As Verbs: Part I," explored the rapidly growing marketing and business interest in brandverbs and brandverbing, stirred a vibrant dialog between marketing types and trademark types, and concluded:

The challenge for trademark types and trademark owners is that many marketers are not listening to these cautious admonitions. As a consequence, trademark types will need to be increasingly more and more creative in their approach to mitigate the risk of the brand not only going to marketing heaven, but dying a sudden death immediately thereafter.

Then, in "Just Verb It? Part II: A Legal Perspective on Using Brands as Verbs," I asked what companies like Microsoft, Culver’s and Yahoo! "know or at least believe" that others don’t know or believe, i.e., those who religiously follow the International Trademark Association’s black and white guidelines to "NEVER use a trademark as a verb." 

Part III of my Just Verb It? series suggested that "not all slippery slopes are created equal" and questioned the slipperiness of the genericide slope, at least as it relates to brandverbing, in "Just Verb It? Part III: Testing the ‘Slippery Slope’ of Using Brands as Verbs," further recognizing:

Given the apparent marketing and business value associated with having brands embraced as verbs, I submit that creative trademark types and marketers can and should work together to find ways of mitigating the extreme risk of trademark genericide without bowing to the slippery slope argument that forbids any brandverbing whatsoever.  

Here are a few opening thoughts and considerations toward mitigating the risk of trademark genericide when the managers of the brand have decided to assume the risk and embraced a brandverbing strategy:

  1. Make clear to consumers that the action suggested by the brandverb (e.g., Googling or Vanguarding) cannot be accomplished without using the branded product or service (e.g., Google or Vanguard);
  2. Build the verbed brand into taglines, slogans, and/or logos that reinforce point (1) (e.g., "Get Culverized," "Googling is Impossible Without Google" or "Vanguarding Can’t Happen Without Vanguard");
  3. Federally register the form of the brand name serving as a brandverb (e.g., Vanguarding) or the tagline, slogan, or logo containing the brandverb (I’ve Been Krogering);
  4. Create and publish trademark and brandverb use guidelines that reinforce points (1), (2), and (3);
  5. Work with dictionaries to make sure that any verb listings are consistent with point (1) (e.g., "to search for information about a specific person through the Google search engine");
  6. Send friendly letters to publishers and media outlets that don’t appear to appreciate point (1) from the context of their brandverb references;
  7. Respect that the majority of the relevant consuming public will decide the meaning of the brandverb and whether it has lost distinctiveness through genericide, so closely and regularly monitor their views; and
  8. Adjust tactics to achieve point (1) when it appears (7) is trending negatively.

What steps would you recommend to mitigate the risk of genericide?

  • Could “verbing”be similar to dynamic logos?
    Traditional graphic wisdom used to be that using anything but the ‘official’ logo to represent a brand was a big mistake. As a 35-year veteran of brand identity design, we used to create elaborate visual rules around trademarks to ensure they always appeared the same regardless of media. Colors were registered, typography customized for uniqueness (and protection), spacial relationships defined to prevent anything from getting near the sacred brandmark and endless examples of what not to do with the graphics were canonized in big printed binders (I have a huge collection I treasure) to ensure vendors didn’t violate standards.
    Vendors wanting to do business with AT&T had to purchase the Saul Bass-authored standards manual and sign a contract to follow it before being considered for projects. The price was high enough to discourage most small shops and the folks at Bass/Yeager enjoyed almost a design monopoly for years.
    Excuse the religious metaphor, but those days of identity management were like the Mosaic Law: everything spelled-out and everything followed carefully. Today, brand management is more about empowering personal accountability. The ‘personality’ of the brand, the ‘voice’, the ‘values’ and the big picture rule. Yes, these are much more difficult to create, monitor and enforce, but they reach deeper into the soul of brand identification.
    For me, Walt Disney was the guru of the higher vision of branding. He created a values-based empire with a plan for 100 years into the future (he believed worthwhile goals had to be longer than the creator’s lifetime). In his heyday, the Disney brand was as easy to distinguish as Apple’s is today. Disney movies, theme parks, television, books, etc. were distinctive for dependable wholesomeness, invention, attention to detail and happy outcomes. Graphic standards would have been meaningless: imagineers just ‘knew’ what fit and what didn’t. The public did too. Different logos, colors, type, etc. populate the Disney milieu extensively. Disney products, packaging, advertising, stores, parks and souvenirs have a common ‘feel’ and coexist harmoniously (although I’m sure defining the subtleties in a legal case would be a nightmare). I hope no one is trying to sue Disney for ‘stealing’ their red or blue color. I suspect the Disney brand isn’t about protecting the details as it’s about communicating the big picture better than competitors. Yes, Mickey Mouse is a registered trademark and determining a ‘confusingly similar’ mouse animation keeps courts in business all over the world, but the Disney brand behind it is protected by their cultural values of innovation, attention to detail and positive outcomes.
    As for ‘verbing’ a brand name, the higher vision of the brand’s meaning should be understood. “Vanguarding my investments” sounds like an ad agency idea. Vanguard doesn’t stand out among competitors and brandverbing it is a clever way to seek differentiation. I suspect the term will catch on in proportion to how differentiated the parent word is within the lexicon of their audience. Of course, the internal audience who approves such decisions will adopt it immediately and absolutely believe the rest of the world will too.
    Xerox, Kleenex and Google aren’t in the Vanguard Investments league. They were (are) leaders in their fields and the first to gain general recognition of their product category. their brandnames were easier to remember than the generic descriptor for what they provided. “Xeroxing” was a better word when their machines started to proliferate offices than trying to remember (or understand) “dry-plate photo copying”. “Googling” is more cool than “doing an internet search using keywords and related terms”. It’s easier to say and a quicker way to communicate than the generic descriptor.
    By nature, people seek the easiest alternative for almost any task. The less interested they are, the faster they’ll adopt shortcuts (slang and profanity are verbal examples of a shortcut — if I don’t want to think of the correct word, a simple four letter term is easier to make my point). I’m skeptical of those creative arguments that a complex name will cause people to think or an artsy design will hold someone’s attention. If pondering or thinking is required, the audience will be very small.
    The new brand reality invites customers to participate in how a brand is expressed. “Bonded” customers (those who are loyal to a specific brand at the exclusion of all others) have their loyalty reaffirmed by “insider speak”, not unlike cults. As that part of a brand’s audience grows, their support of brandverbing grows almost spontaneously. Less loyal audiences will probably accept a brandverb if they get a benefit from it such as being shorter to say or easier to understand than the generic descriptor.
    Simplicity and clarity are hallmarks of superbrands like Disney, Apple, Ralph Lauren, Tiffany, McDonald’s and Coke. They don’t struggle to be understood because their entire brand consistently stands for relevant values. They differentiate by continually innovating, paying attention to details and managing their image based on succinct, understandable values.

  • I think these “verbing” people have their heads stuck somewhere up in a dark place. It really turns me off when people use good, solid nouns like scrapbook, journal and pleasure as verbs. Ugghh.
    And, don’t think any ordinary person is going to use the verb “culverized” without feeling mighty foolish. Same for vanguarding.
    As an investor, I wouldn’t be caught dead using that verb just because I would feel embarrassed. Even if my investment counselor used the word, I wouldn’t repeat it back. How many potential clients will Vanguard lose because people don’t want to deal with the embarrassment of using Ickky language?
    Of course, the verb Googling has appeared in the language, but that has a sort of coolness and cachet about it. And, when people do use the verb Googling, they also use the associated product, the Google search engine.
    Same when someone says they will “FedEx” something. They don’t call UPS, they call FedEx.
    Xerox truly does have a problem because that word has a certain quick and easy coolness about it (just two distinctive syllables), and there are now many brands of dry process photocopiers (4 syllables for the verb photocopy).
    And Kleenex was a cooler noun than whatever preceded it.
    Instead of becoming language police (too much of that already with having to be “politically correct”), the savvy marketers should be coming up with copy like: “If you think it’s cool to Xerox something, it’s even cooler to own one.”
    We have got our creative neurons going, and we are ready to roll!