DuetsBlog Collaborations in Creativity & the Law

When You Verb Your Trademark, You Know What?

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

Well, perhaps more than just about every trademark use guideline in existence, including those offered by the International Trademark Association (INTA) ("NEVER use a trademark as a verb"):

 (television commercial link on Youtube here)

Maybe because you have been following the trademark verbing dialogue here on DuetsBlog and you have learned all about Managing The Legal Risk of "Verbing Up" Brands and Trademarks.

If so, you probably also know that it makes sense to seek federal registration of the slogan or tagline containing the verbed use of your mark, as Orbitz has done here.

As I have written before:

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.

Here was my attempt at such creativity, while wearing something close to a thinking cap.

Have you modified your company’s trademark use guidelines to manage/control any verbing uses?

What creative solutions do you have toward mitigating the risk of trademark genericide?

Can we agree that this is one more example of where per se rules simply won’t cut it anymore?

  • Verbing the brand name up… interesting trend indeed!
    But I guess artificial transfers are (still) rarely happening to be successful. Mainly the process runs rather spontaneously, when the certain product reaches a truly critical mass on the market (like Google search in Web surfing once) and thus becomes almost a synonym for some common action. So I’d say it is not a general tool – but rather an option in selected cases.
    Thank you for the link, Stephen!

  • Nice piece of DuetsBlogging, Stephen!