Trademark Verbing : Duets Blog

What Does "Trademarked" Mean to You?

Posted on September 14, 2009 by Steve Baird

More than a few trademark types cringe when their clients or others say things like "let's trademark it," "they didn't trademark their logo," or "we don't want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “'Trademark' is not a verb. There is no such thing as 'trademarking' a word or phrase." Similar views are expressed here, here, and here.

Perhaps any cringing may result from the fact that the Lanham Act -- the federal trademark statute -- defines the word "trademark" as a noun, not a verb or adjective:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof --

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Section 45 of Lanham Act, 15 U.S.C. 1127.

Turns out though, the words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; 'trademarked goods'".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

Given the various definitions for these words, the speaker might mean labeling a product or advertising material, utilizing or marking such materials with the appropriate trademark notice or symbol, registering a trademark or service mark, or perhaps, all of the above. Since the described actions (labeling and registering) are quite distinct, it becomes important to seek clarity on the speaker's intended meaning.

For example, when referring to labeling with proprietary notices, the TM symbol does not require any registration for its proper use, and its use does not even imply registration has been sought or achieved. It simply communicates that the owner of the trademark in question views the claimed mark as proprietary. Likewise, when the SM symbol is used, no registration is required, and none is implied by its use, it simply means the claimed service mark is intended by the owner to be proprietary.

On the other hand, federal registration with the United States Trademark Office is a requirement before one can use the above-depicted "R within the Circle" symbol in the U.S., and it means that the mark in question (either a trademark for goods, or a service mark for services) actually has been federally-registered -- having a pending registration application is not enough, the actual Certificate of Registration must have issued for the use to be proper and lawful.

Keep in mind, that the word "trademark" can have meaning either a noun or verb, should not be confused with our previous discussion of whether verbing trademarks and brands is a good idea: "Just so you know, in general, the law views brand names and trademarks as adjectives, not nouns or verbs, so kudos to Nancy Friedman of Fritinancy to recognize this important point." [For my previous Just Verb It? Series, see: Part I, Part II, and Part III].

Just Verb It? Part III: Testing the "Slippery Slope" of Using Brands as Verbs

Posted on July 30, 2009 by Steve Baird

Although intellectual property lawyers of the Dr. No variety may not like to admit it -- I submit that, not all slippery slopes are created equal. While some slippery slope cautions might prevent a few bumps and bruises in traveling along a particular path (e.g., the one on the left below), I suspect far fewer slippery slope cautions actually prevent life-ending falls from perilous cliffs (e.g., the one on the right below), yet other man-made slippery slopes specifically are designed for fun and enjoyment -- not danger -- and have generated enormous sales over the years (e.g., WHAM-O's SLIP'N SLIDE brand products).

So, putting aside Professor Douglas Walton's teaching that the slippery slope argument is "often treated as a fallacy," it is worth asking what brand of slippery slope most accurately represents the risk associated with marketers using their brands and trademarks as verbs?

As discussed in Part I of my Just Verb It? series, many marketers love the idea of having their brands embraced as verbs, but many trademark lawyers totally forbid any "brandverbing," i.e., "mis-using" brands (adjectives) as verbs: "Why? To prevent brand names and trademarks from becoming generic names and part of the public domain for anyone to freely use, even competitors."

No doubt, genericide -- the ultimate fear of using brands as verbs -- equals certain trademark death, a horrible result from both marketing and legal perspectives; but, I submit it doesn't necessarily follow that brandverbing activities automatically result in trademark death or genericide. To be sure, far more than a single act of verbing a trademark or brand must occur before a majority of the relevant consuming public no longer sees the claimed trademark or brand as identifying and distinguishing certain products or services as coming from a single source. Given this, there must be an opportunity to engage in some thoughtful and creative level of brandverbing without committing trademark suicide, right?

Unlike the kind of trademark abandonment that automatically results from the single act of non-use of a trademark coupled with no intention at that time to resume use of the trademark, the kind of trademark abandonment that is also known as genericide, in contrast, results from a gradual change in the meaning of a trademark or brand to an unprotectable generic term. A change that shifts the meaning -- understood by a majority of the relevant consuming public -- from identifying, distinguishing and indicating a single source for a particular product or service to a designation that connotes no single source at all, but instead, an entire product or service category with multiple unrelated sources.

As discussed in Part II of my Just Verb It? series, significant companies like Microsoft, Culver's Restaurants, and Yahoo! have all used at least some of their brands as verbs, so I asked "what do these companies know or at least believe that others on the 'straight and narrow' don't know or at least believe?" Perhaps they appreciate that not all slippery slopes are created equal? On the other hand, Yahoo! appears to have erased the brandverbed Do You Yahoo!? bumper sticker that I highlighted was being sold on the Yahoo Company Store website only five weeks ago. Does this signal a desire by Yahoo! to rethink or attempt to erase its brandverbing history? If so, there is some more clean up or erasing needed as other brandverbed items remain for sale there, such as the Do You Yahoo!? pencil, selling for 85 cents, described this way: "Our signature slogan makes a great statement on the classic BIC® pencil." So, Yahoo!'s "signature slogan" consists of a brandverbed phrase. This shouldn't result in trademark suicide, but we'll see how long this item lasts.

The New York Times certainly considers the "verbing up" of brands to be a timely and hot topic, as evidenced in Noam Cohen's July 18 article entitled "The Power of the Brand as Verb," where he reports: "It once would have been unthinkable for a company like Microsoft to encourage people to use its (Bing) brand name so cavalierly. Businesses feared that if their product name became a verb, then it would lose its individual identity." (My previous discussion of Bing, here).

Going forward, will companies like Tivo continue to utilize the slippery slope argument to forbid any amount of brandverbing? Or will they soften these kinds of black/white statements?: "Trademarks are never verbs. It is never permissible to use any of our trademarks as verbs." How about Palm? Adobe?

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.

Stay tuned for Part IV of the Just Verb It? series, and my concluding thoughts about how to avoid or mitigate the risk of trademark genericide without embracing the slippery slope and resorting to black and white prohibitions on any and all brandverbing activities.

Just Verb It? A Legal Perspective on Using Brands As Verbs: Part I

Posted on June 11, 2009 by Steve Baird

There is a growing interest and, quite frankly, a dogged persistence among branding professionals to select brand names that have the ability and potential to be "verbed." This makes trademark attorney types nervous and those of the "Dr. No" variety actually become unglued.

So, why the emphasis or fascination with verbs anyway? The answer apparently can be found in the definition of a verb: "A verb is a doing word (helping, grabbing)." This feature is appealing to marketers. In addition, some argue that "verbing" a brand extends its reach through effective "word of mouth branding." Some feel so strongly about the marketing benefit they argue that "having the public utter your company name as a verb is like going to heaven without the inconvenience of dying. Getting 'verbed' is the ultimate accomplishment for any brand -- the marketer's Shangri-la."

As marketing maven Seth Godin argued as early as 2005: "Nouns just sit there, inanimate lumps. Verbs are about wants and desires and wishes." Given that limited binary choice, David Cameron's recent and thoughtful "Brandverbing Brands" post on his OnBrands Blog, asks a reasonable question: "Wouldn’t you rather have your brand in the latter category?"

I'm wondering and you might be wondering too, what happened to door number three? We'll get to that, patience.

Now, as David correctly notes, the desire by marketers to treat brands as verbs is not new, and as I might add, it does not appear to be going away anytime soon. Apparently, Karl Speak's Brand Tool Box proclaimed in 2005: "Brands are verbs, not nouns," a statement in direct conflict with Al and Laura Ries' "The 22 Immutable Laws of Branding," from 2002, where they write: "A brand name is a noun . . . ." (As a side note, back in 1989, it was suggested by Nancy Allison that when a noun is "verbed" you end up with a "nerb"). Just so you know, in general, the law views brand names and trademarks as adjectives, not nouns or verbs, so kudos to Nancy Friedman of Fritinancy to recognize this important point.

As a result, door number three reveals at least one false premise of the argument, it seems to me: A brand name is not a noun, but rather, an adjective. Nike footwear, for example. Adjectives modify nouns and pronouns, "giving more information about the noun or pronoun's referent." Nike is a brand name infused with meaning, and it serves to modify and give life and further meaning to and information about the inanimate and lumpy noun and generic product we call "footwear." So, what's wrong with adjectives, don't they have any marketing muscle? Personally, I have always found adjectives to be very compelling when storytelling, and isn't that what branding is all about, telling a story?

At any rate, despite this possible flaw in the argument, the obsession to "just verb it" and the tidal wave of marketers encouraging the use of brands as verbs continues. SEO Black Hat wrote about "brandverbs" back in 2006, Mapping The Web// Blog wrote about "brands as verbs" in 2007, Marty Schwimmer confirmed the marketer's desire for "verbable names" in June 2007, Radiant Brands wrote about "Brands That Are Verbs - When the Brand Becomes An Experience" in April 2008, and That Other Blog, Way Over There, wrote about "brandverbing" in December of 2008, immediately followed by Lori Senecal's article in Adweek: "The 'Verbing' of Brands." In January of 2009, Alex Mandossian wrote favorably about "getting verbed" in "Why is Google Unhappy About Getting Verbed?" In addition, 15 Ideas Blog wrote about "When Brands Become Verbs" in April 2009, Shooting Bubbles wrote about "verbing up" in May 2009, and just a few days ago Richard Curtis wrote about "verbing up" in "You Can Google Bing, But Will You Bing Google?"

David Cameron, at least, recognizes: "I’m sure the lawyers would strongly caution against 'brandverbs'…" He's right, the International Trademark Association offers these guidelines on proper trademark use to trademark owners and those in the media: "NEVER use a trademark as a verb. Trademarks are products or services, never actions." INTA provides this example: "You are NOT rollerblading, but in-line skating with Rollerblade in-line skates." It also offers this test: "A good test for correct usage of a trademark is to remove the trademark from the sentence and see if the sentence (generic) still makes sense. If it does not then you are potentially using the mark as the descriptive term or as a verb and not as an adjective followed by a noun as you should." Why? To prevent brand names and trademarks from becoming generic names and part of the public domain for anyone to freely use, even competitors. (You may recall my prior Rollerblading post).

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.

Stay tuned on DuetsBlog for Part II of this topic, coming soon.