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

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

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.

  • While there are some companies out there making the mistake of “verbing” the brand (e.g., “Don’t just book it. Thomas Cook it”), in general most companies realize that this is a mistake and can eventually lead to a generic trademark that has diminished value. To me the real problem erupts when consumers decide to verb the brand (e.g., “I’ll Google it”). Is the company then required to run advertising that tells consumers they are stupid (as Xerox did a few years ago explaining that you can’t call them Xerox copies)? Remember how awkward that was? The Xerox internal lawyers no doubt convinced the marketers that it was necessary, but it sure made consumers think the folks at Xerox were missing a few sheets in the ream!

  • Marketers love this trend. But there is a danger that it becomes like kleenex, xerox or popsicle. One of the ways companies have buttressed their protection is through the licensing of their trademarks into categories that are beyond their core business. This is often a win-win for both the marketing & legal teams since the additional product categories both extend the brand into new markets, but all for additional protections of the trademark.

  • Naming is a tough business.
    One of the companies that has done a great job at converting their name to a ‘verb’ is Federal Express to FEDEX.
    This transition came from the groundswell of customers shortening the name in the course of doing business and the company listening to their customers with the name change.
    In the spirit of trying to be hip comes the name change or evolution of the Microsoft Search Network to ‘Bing’. Not really sure what Bing is considered other than a word that could be a verb. Or is it an acronym for ‘But it’s not Google’. Will the name make the leap to ‘just Bing it’ or catch-up to its competitor Google with ‘Just Google it’?
    What are some good examples of a company using a verb for its name?

  • Raeda Latif

    The verbing process of a brand is actually initiated by the brand stakeholders themselves. they think it is going to do wonders for the brand if their brand name can dominate the product category by becoming a verb and the consumer can , Xerox it, Google it , TCS it (TCS is a pakistani courier company which is in my opinion on the verge of genericisation) and so on.
    In this process they instill in the mind of consumers the respective brand name as representative or synonym for the entire category.
    Again in my personal opinion it takes the brand to a dominant position but in isolation. And no amount of copyrighting or trademarking can stop this process.
    As long as the customers use the term (verbicised brand name) at a conscious level and can distinguish between TCS as the most popular courier company versus TCS as Courier service, they are safe but there is such a fine line here that the stakeholders do not even realize when the brand name actually shifted to the other side of the line and became synonymous and overtook the entire category at the exclusion of all other players. In Pakistan, (I’m not sure about the rest of the market) even COKE and PEPSI are becoming generic. and are being used interchangeably for the black beverage although not verbicised.

  • We’ve just received Media magazine’s “Asia’s Top 1000 Brands 2009” – out of the top 100, there are only 2, possibly 3 brands that are verbs (Pampers, Whisper and Pioneer – although that last one was probably intended as a noun). Of the top 10, only Canon and Apple were known words. The others were all invented.
    Regardless of whether noun or verb, invented or known, a strong trade mark is one that steers clear of describing the goods/services, is easily pronounced across cultures and according to my brand consultant friends, are not acronyms and no longer than 3-syllables.

  • Never! It basically dilutes the IP position for protecting the TM rights. The more inconsistent and incongruous usage of the brand TM opens up and allows competitive claims against one of your strongest product/marketing assets, the one thing you accrue value to over time. Ie, two examples… Google as a verb, Klennex as an adjective, both almost diluted as generic terms.

  • Hemant Patwardhan

    I think brandverbing is dangerous. When a brand is used as a verb, there is a very real danger of the consumer’s attention focusing on the noun in the sentence, in the process completely ignoring the brandverb. So, “Let’s google the term using Yahoo Search” focuses consumer attention on Yahoo Search while using Google generically to mean ‘search’. Even the sentence “Canon is a high quality Xerox machine” substitutes the word ‘xerox’ for ‘copy’. In this sentence the focus in on Canon and not on Xerox – a good thing for Canon but not a good thing for Xerox.
    I think marketers should be careful about brandverbing.

  • Stephen,
    Great thoughts and a very informative blog. From a “marketer’s” stand point, we’d all love to reach a “verbing” status.
    However, coming from a franchising background, I also understand the need and importance of protecting the brand. That said…
    Like Xerox, Kleenex–and even FedEx–who got “verbed” by the consumer, each of these companies aggressively advertise in appropriate media to remind everyone that Xerox copiers are great machines and Kleenex tissue is the brand you trust. Thus, giving credence to your “adjective” theory.
    But there lies that elusive golden goblet…Google (and others). They are a noun, a verb and a brand. While people, press and blogs use “google” as a verb, Google also enjoys a VERY solid brand regardless of the fact they have been “verbed.”
    This is the pot of gold at the end of the rainbow that all BRANDS seek and every marketer dreams for.

  • I wonder whether we lawyers end up being a bit over-cautious about this. Yes, “genericide” can happen, and there are some high-profile examples, but most of these seem to involve allowing names to become generic nouns: such as “escalator”.
    Take “Googling”, for example. I don’t think Google will be losing too much sleep over people talking about “Googling” for things. Perhaps their trade mark lawyers break into a sweat when the word changes to “googling”, but as long as that word still denotes “searching on Google”, is it really such a mortal threat to the brand? Where they’d start to have problems is if people started saying they were “googling for it on Bing”.
    So I don’t think that “verbing” brands should necessarily be a complete no-no. However, it needs to be handled carefully, and with the same sort of measures that are used to defend “noun brands” that are in danger of “genericide”: seemingly pointless letters to publications that use lower-case forms of the word, etc. The difference is that the letter Google send will be saying, “please say ‘Googling’ with a capital G” rather than “please say ‘searching on the internet using the Google search engine”.
    Incidentally, does anyone know why Yahoo dropped the slogan, “Do you Yahoo?” Was it because of concerns over genericide, or was it because the all-too obvious answer for most people was “no”? ;-)
    In any event, companies will want to weigh up the risks of genericide against the potential benefits of increased brand recognition.
    (I should add that this reply does not constitute legal advice or a considered legal opinion. This is just me thinking aloud on the subject!)

  • Using a brand name as a verb leads to ambiguity — in patent applications the rules are clear. Using a trademark as a noun in a claim is genericide. (There is a case on point by Judge A. Hand). I always use it as a proper adjective to avoid any confusion.
    For example, the trademarks “Teflon” and “Pyrex” do not refer to single formulations — there are a number of different compounds which are sold under those brand names. Specificity in my profession is paramount.

  • The objective test of validity is still the public perception (measured by on the street interviews) of whether the mark pertains only to the single brand or to the class of products. Mark owners hoping for a subjective test of advertisements reminding the public of the single brand meaning may be in for a rude awakening by a competitor who monitors public perception, then challenges the validity of the mark.

  • A linguistic input (for what it is worth!); there is a lot of contradiction here….it is a known fact that language is a dynamic phenomenon and that it constantly incorporates and “deletes” words and terms. Like it or not; this happens and will continue to happen. If brand owners don¬¥t like this, the only option they have, is to register a brand name that no one will want to use…somehow, I don¬¥t think that this is what they want. I find it rather “repulsive” to think that I will not be “allowed” or be deterred to use a (new) verb or a noun because of the mere fact that it corresponds to a registered brand or trade mark.

  • To add to my earlier comment, it is worth considering the definition of “trade mark” under UK (and EU) legislation: “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.
    In the absence of someone digging up some case law to the contrary, I don’t see any reason why, when it comes to words, that definition can only be satisfied by a noun and not by a verb, an adjective or even – hey, why not? – an adverb: “Do you feel Googly today?” (OK, maybe not that one…)

  • TRIPS Article 21 allows trademark assignment without transfer of the business. This is not the law in the US. (15 U.S.C. ¬ß 1060). A US mark owner may exchange the goodwill of the mark to another of its own goods or services. The US mark owner may not license (assign) a mark to another company’s product or service. Such naked licensing inherently confuses consumers as to the source of the goods or service, and risks invalidity of the mark. (Sugar Busters LLC v. Brennan) (Use by others without control diminishes the strength of the mark.)

  • I think using a trademark as a verb is wrong from a trademark law point of view, but inevitable.
    Marketers love this trend because American colloquial language seems to use trademarks as verbs and nouns all the time. It is just more difficult and clunky to say “I will look it up on the Google¬Æ brand search engine” rather than “Google it.” I really cannot imagine anyone other than a trademark attorney saying the phrase “in-line skating with Rollerblade in-line skates.” Who can blame marketers for trying to avoid that kind of language whenever possible.

  • While the legal view may be that this practice is verboten, the attractiveness of this practice (and the perceived branding benefits so derived) will continue to persuade many to continue to desire to verbalize their brands in a verb-friendly manner. It seems to me that the best-of-both-worlds approach will end up being a dichotomy: selecting brands that entice the public to verb the brand, while the corporate entity toes the line and admonishes their admiring public for not realizing that their precious brand is an adjective denoting a source of these fantastic goods or services (and a registered trademark to boot), and not merely a generic moniker.

  • Another great post Steve. I agree with the premise that (at least linguistically), brand names are adjectives. And in my 15+ years as a naming consultant, I’ve certainly had my share of clients requesting names that can be turned into verbs. While you legal eagles out there will be pleased to learn that I try to counsel my clients about the legal consequences of this seemingly desirable position (of being synonymous with the category itself), clients refuse to back down.
    As I get older (and hopefully wiser), I am starting to ask a different question. Instead of trying to advise clients that they really *don’t* want their brands to become verbs, maybe it’s time to start reconsidering the legal framework that makes this situation so problematic. I understand the *theory* behind genericism, but c’mon … does the fact that people say “I Googled it” really mean that Google should lose some strength on it’s claim to that name? Isn’t this a case of the letter of the law getting in the way of the intent? It’s not like the folks at Yahoo would suddenly start saying they Googled something whenever *they* talked about search.
    Maybe this is just another example of your infamous Dr. No rearing his ugly head again, only in a new way. I’m no attorney, but it seems crazy to me that companies should be penalized for doing such a good job of marketing that they’re brand names are associated with the category itself. Maybe instead of trying to prevent this, we should reevaluate the legal system that makes it such a problem.

  • Brand verbing will take the brand towards the process of genericisation. No amount of copyright and trademark regulations can stop the brand from becoming a generic once it is verbicised.
    Verbicising a brand to the extent that it overtakes the category and represents the category instead of just a name of one dominant cateogry player will eventually kill it. Further the verbicisation of the brand name cant ake the brnads presence to a state of isolation in the consumers mind.On a more serious note this is done by the brand organization itself. It is a virtual suicide.

  • Gerald Prettyman

    The purpose of a trademark is to associate a specific brand of product or service to its source (to prevent consumer confusion). Use of a trademark as a verb is therefore only a generic use if the interpretation is subjectively open to another source and the source understood was objectively different.
    In a one-brand market, use of the trademark as a verb inherently refers to the source (e.g., “barting to San Francisco,” for riding the BART train to San Francisco from the East Bay area. The mark would similarly be safe from genericide when the speaker and listener share by a common experience that the verb refers to the same source of the specific product or service. Such an example occurs between two employees of one company referring to a contracted product or service from one source (e.g., FEDEX as above) for their company. The last example of inherent meaning is in the association to the overwhelming monopolist in the market. Talking about the Office Suite software implies Microsoft for most offices. Google may be ‘safe’ from genericide for now, but Microsoft Bing just knocked Google down to 72% of the market.
    Outside of these circumstances, use of the trademark as a verb becomes less specific, subject to interpretation, with an increased risk of genericide. As stated above, the understanding and meaning of the consumer is paramount to the success of a trademark. Thus, CalTrain and DHL would likely object to the BART and FEDEX examples as they compete with BART and FEDEX respectively, but in limited markets. Taking the train from Millbrae to San Francisco is open to interpretation to both BART and CalTrain as both trains carry passengers between those cities. A passenger could still speak of barting to San Francisco from Millbrae without injury to the trademark if the user had ridden BART and the listener understood the speaker had ridden BART.
    The true injury of using a trademark as a verb occurs when the user and listener or reader do not have the common experience. A Baby Boomer might receive a confused look after asking a Generation Y employee to ‘xerox’ something because with competition and time there is now an entire generation with many people who have likely never used a Xerox brand copier and do not know ‘xerox’ as a verb. Similarly, I might say that I googled “trademarks” and love the way the images jump up from the page. This would confuse a Google, Yahoo or Internet Explorer user because that is a feature of Bing.com.
    Thus, verbing a trademark is not necessarily an injury to the mark. The significance is in whether the use is open to interpretation and whether user and listener or reader understood the verb-mark to apply to the same source of the product or service.

  • Yes, true, perhaps from a TM standpoint. But, from a marketing standpoint, verbs like roller-blading, googling, and black-berrying create a powerful effect. They create the key reference points within the category. Here’s a great little example. I was on an airplane several years ago and the flight attendant came on the PA to announce that someone had lost an MP3 player. She described it as “a cross between a BlackBerry and an iPod, but (she said) it says iRiver on it.” Obviously, iRiver is not the category reference point – too bad for iRiver…not bad for iPod and BlackBerry.

  • Wow, thanks all for sharing your insights and perspectives, some great food for thought in this impressive panel of comments!

  • Tyrone Tellis

    You’re not gonna believe it but as I read your headline and a few of the comments . I was thinking- NIKE is the perfect example of what to do. Nike is synonymous with action but they don’t want people to use the brand name as a verb.
    They’ve already achieved a higher ground and are part of urban culture. Making your brand into a verb is like a school boy crush seems like a good thing but fades away in the long run.
    People in charge of brands need to realise that what’s good in the short run is not necessarily good in the long run.
    Raeda is right about Pakistan surf is a generic term and so is pampers here the danger is losing identity by becoming generic for a category not for becoming an action.

  • George Lewis

    The best efforts of marketing, branding, and legal professionals can not prevent the public, which includes customers and non-customers alike, from verbing some trademarked names. What legal action can profitably be taken against the guy on the street who refers to any kinds of inline skate as Rollerblades? Who is going to haul into court the employee who mentions in an email to another employee that he “googled” something without specifically stating that he used the Google search engine?
    People say what sounds reasonable to them and what they think they have heard or been told to use by authority they respect. Heard On The Street seems to be one of the most respected authorities in existence. American English evolves with little regard for the existing rules of grammar, let alone trademark or copyright law. Folks will be “googling” information long after the brand name disappears or until the process becomes obsolete and a new, probably brandverbable process takes its place.