Pattishall IP Blog

July 18, 2017

“Brandverbing Your Trademark.” Is that a good thing?

Filed under: Litigation, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:43 am

By Janet Marvel

Trademark lawyers get nervous when clients use their trademarks as verbs.  Using a trademark as verb, the lawyers say, might kill the trademark by making it the generic name for a type of product instead of a brand of the product.  But increasingly, modern businesses try to create “brandverbs” (e.g. “Bing and  Decide,” to use a rather ill-fated example).  They praise “brandverbs” as some of the best expressions of brand leadership.  In Elliott v. Google, Inc., 20178 WL 2655528 (9th Cir. June 14, 2017), Google got away with it, arguably because GOOGLE is one of the most famous trademarks in the world.  For many “mere mortal” brand owners, using a trademark as a verb is still risky and companies need to weigh the risk before doing or encouraging it.

In Elliott v. Google, a cybersquatter argued that “googling” to describe the act of looking for information via a search engine made GOOGLE generic, thus forfeiting legally protectable trademark status. The plaintiff contended that “verb use constitutes generic use as a matter of law.”  Interestingly, “the district court assumed on summary judgment that the majority of the public uses the verb “google” to refer to the act of “searching on the internet without regard to [the] search engine used.  In other words, it assumed that a majority of the public uses the verb ‘google’ in a generic and indiscriminate sense.”

However, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  It then held that Elliott’s examples of allegedly generic use of “googling” were not persuasive because they referred to use of “google” as a verb for searching and not to the search engine itself.  Moreover, Google presented overwhelming evidence that GOOGLE was a brand name for a particular search engine, and not a generic term for the general class of search engines.  According to a survey, 93 percent of consumers recognized GOOGLE as a brand.

Trademark lawyers still typically recommend against “brandverbing” because it contributes to a slippery slope leading to a potential finding that a mark is generic.  Trademarks are proper adjectives.  They modify the generic name of a product, e.g. Band-Aid bandages, not Band-Aids, or Kleenex tissues, not Kleenex. The use of a term as a modifier encourages consumers to think that not all bandages are “Band-Aids,” for example.  Similarly, using a trademark as a verb leads consumers to think that, for example, any in-line skate can be used for “rollerblading,” and any photocopying machine can be used “to xerox.”  It is a short step to call all in-line skates “Rollerblades” and all photocopiers “Xeroxes.”

The bottom line is that you can “brandverb” if you think the marketplace rewards outweigh the legal risks, but you should think about the long term consequences, and talk to your lawyers about mitigating risks.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

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