Brandverbing and Genericide

All of these phrases and more are common, everyday examples of distinctive trademarks being used not only as bywords for the goods and services that provided under the trademarks, but as verbs used to identify the action of using an internet search engine, ordering a ride share, or making a photocopy. As this practice becomes more and more common among the large and famous players in the trademark (and business) world, everyone seems to be jumping on the bandwagon of presenting their trademarks as bywords for the act of using the good or service in question.

But is this a good idea, from the point of view of preserving your exclusive rights to the trademark? After all, if the trademark is being used as a word to describe some action, can it really uniquely identify your specific goods or services? In other words, can you UBER to the bar in a Lyft? The answer, as is the case with many legal questions, is not entirely cut and dry. On the face of the law, any term that “the relevant purchasing public understands primarily as the common or class name for the goods or services” is considered generic, and therefore ineligible for any form of trademark registration, even on the Supplemental Register that is reserved for descriptive trademarks. (TMEP 1209.1(c)) For the most part, this type of refusal is issued for trademarks that consist solely of terms that are already commonly understood to be the generic terms for the goods or services in question, for example, CARS.COM for “providing information about cars and the leasing of cars via a global computer network” and related services. Though this is where the doctrine of generic trademark refusal begins, it is not where it ends, and even “nonsense words” that denote specific brands can become generic if they enter the common lexicon. The most well-known example is probably “escalator” a term that most people probably have no idea started out as a trademark for the products of a specific company. On the other hand, a recent 9^th Circuit decision in a suit claiming that the trademark Google had become reasoned that “verb use does not automatically constitute generic use” as the verb referred to the act of searching, and not as a generic term for search engines. In other words, the court considered verb use as less likely to make a trademark generic than noun use to refer to the service. Elliott v. Google, Inc., 2017 WL 2655528 (9th Cir. June 14, 2017). Although this ruling is good news for brandverb users everywhere, there are still certain rules that you should follow to help stave off competitor’s claims that your trademark is generic, or, to at least put up a good defense should such a claim result in litigation.

1. This may seem obvious, but get a federal trademark registration. This helps prove exclusive use rights in the first place, and “plants your flag” on the brand name as a unique brand name and not generic term.
2. Somewhat less obviously, if you decide to use a brandverb, register that too! This can be done by registering either the brandverb alone, or as a slogan incorporating the brandverb.
3. Use the actual generic term for the goods/services on at least some advertising, packaging, online media, etc. alongside the trademark. For example, instead of using KLEENEX alone, use something like KLEENEX FACIAL TISSUES which implies that the term FACIAL TISSUES is generic, whereas KLEENEX is a distinctive brand name.
4. Create advertising material that reinforces the fact that any “verb use” cannot be accomplished without your particular branded product or service. Make sure that your customers understand that “you can’t Google without Google.”
5. Alternatively, create an advertising campaign that encourages consumers to not use your trademark in a generic manner. A good example of this is the “Don’t Say Velcro” campaign by the makers of VELCRO brand adhesive strips with the tagline “Never a Noun. Never a Verb. Always on Brand.”