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How Realistic is the Risk of Trademark Genericide?

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

The Grand Marshal in the Parade of Horribles, at least for some trademark types, is the one who forbids any deviation from the absolute "rule" against using brand names and trademarks as nouns or verbs, a standard "rule" commonly found in trademark use guidelines (only permitting the use of trademarks as adjectives). As I have written about previously, these "rules" they are a changing, or at least they’re seriously being challenged by some creatives and marketing types:

A couple of days ago I was reminded that the trademark verbing trend is not going away when I saw a light rail train in downtown Minneapolis fully encased in an advertisement for Cisco’s Flip video camera, asking consumers what its Silicon Valley neighbor Yahoo! Inc. used to ask in their advertising (Do You Yahoo!?), but of course, Cisco’s new and current use is tailored to Cisco’s Flip trademark, asking their consumers and potential consumers, do you flip?

 

Cisco is not only breaking the "rule" against "verbing" trademarks, but it also encourages the use of the Flip trademark as a noun too, in advertising telling prospective customers to "Find Your Flip," and then asking them to decide "Which Flip is right for you?"

Smartly, I believe, it also has filed a trademark application to register the Do You Flip? tagline and question (see point three in listing of how to manage the risk of genericide).

Although there is certainly no shortage of recent trademark genericness decisions, they focus on inherently generic marks, ones that started out generic, not ones that have become generic over time through misuse or changes in the English language.

The poster child for this type of genericness decision is "ScreenWipe" for wipes used to clean computer screens. Of course, vigilance to trademark use guidelines and other trademark "rules" is imperative when you’re on the border of the genericness or descriptiveness lines or the suggestiveness and descriptiveness lines, along the Spectrum of Distinctiveness, so, not a good idea to identify your ScreenWipe product as "a . . . wipe . . . for . . . screens."

I’m happy to be enlightened or steered in the right direction, but I can’t think of the last time an arbitrary, coined, or fanciful trademark degenerated into an unprotectable generic term, landing in the Trademark Graveyard, through the process known as trademark genericide. Can you?

Given how prevalent trademark and brand verbing is, why haven’t we seen any recent trademark genericide examples? Or, are they just on the horizon?

How realistic is the risk of trademark genericide anyway?

  • Steve

    Hi, Stephen.
    Isn’t this a case of short term gains overriding trademark principles? Who at Cisco is thinking FLIP is going to be around in 5 years? Much like the banking fiasco, Cisco and others are going for the gold now and dealing with the potential repercussions later.

  • Pam

    386 for microprocessors. Intel Corp. v. Advanced Micro Devices, Inc., 756 F.Supp. 1292 (N.D.Cal.,1991).

  • Stephen, this is really fascinating. I agree that there’s a rise in this type of “VERBiage” in branding and of course, it must be properly executed to remain genuine rather than generic.
    I think Flip walks a fine line – on one hand it asks a question – Do you flip? – that might provoke additional discovery. On the contrary, it seems that incorporating “flip” in every possible way can also risk of degrading it’s original intended “catchy allure.”
    On first glance, I am weary of these types of rhetorical questions; do they command a response from us? Well, for me to know if I “flip”, I might need to know what “flip” means to know if I do so. This language might be better placed at a different interaction point. With that said, I do think the concept works for “Do you yahoo?.”
    As for some alternatives, just off the top of my head, (instead of “Do you Flip?”): Flip could say “Flip Out!” for example. Edgy, succinct and not contingent on a so called “reply” to a question.
    Also we don’t “take this product out of our bag”, we literally “Flip it out, capturing spur of the moment memories” So an alternative to “Which flip is right for me?”, we might say, “Flip ’em Out,” and simply click to show the product models, for instance.
    This is obviously a product that wants to be a little “on the edge” – that’s ok, but it can be done with less ambiguity while staying original.
    * Jesse