<< Return

Itís Time for Associations to Break Some Trademark Rules - 3/10/2015 -


Price                      Pierce
Itís Time for Associations to Break Some Trademark Rules

Nonprofits should take note of the increasing practice of for-profit brand owners who "verb up" their own marks, and in some cases, deliberately disrupt their own logos. Strong brands can be flexible, fluid, and living ó for for-profits and nonprofits alike.

By Andrew D. Price and Justin E. Pierce

As trademark law and practice evolves to keep pace with changing consumer sophistication and expectations, nonprofits should not be afraid to break the old rules of proper trademark use when it comes to strong brands. In fact, nonprofits should take note of the increasing practice of for-profit brand owners "verbing up" their own marks and in some cases deliberately disrupting their own logos. Strong brands can be flexible, fluid, and living ó for for-profits and nonprofits alike.

Under the traditional rules of proper trademark use (also known as the ACID test), brands must be used:

  • As adjectives
  • In a consistent manner
  • With an identification or symbol indicating whether the mark is registered
  • In a distinctive or attention-grabbing manner

However, while this standard works for many brands, the first two rules ó using brands as adjectives only and in a consistent manner ó are too restrictive when it comes to strong brands. Nonprofits with strong brands, especially famous ones, may break these rules when their culture, tradition, and policy allow.

Beyond Adjectives

Recent trademark usage trends suggest that there are ways that strong or well-known brands can use their marks as a noun or verb without substantial risk of genericide. A number of organizations have used their key trademarks as verbs in advertising campaigns without suffering any apparent genericide damage; this is despite having publicly displayed policies on how to properly use and refer to their trademarks (e.g., use as an adjective as opposed to verb/noun).

For example, investment company Vanguard used the term "vanguarding" to convey the long-term outlook of its investment products to investors, while Microsoft's chief executive officer Steve Ballmer told the New York Times in 2009 that the Bing search engine brand had the potential to verb up, and that he hoped people would "bing" a new restaurant to find its address. In the last year, Google launched its advertising campaign "Play your heart out" to entice consumers to visit its PLAY store online.

Traditionally, organizations would not use or encourage use of their brand names as verbs or as anything else beyond use as an adjective. Most feared that if a branded product or service became a verb, the brand would lose its distinctiveness and become a name for a generic category or function. A brand is lost to genericide when use of the term becomes so prevalent or generic that it is no longer associated with the brand-owning organization.

History is replete with successful brands that were lost to genericide and are now viewed as generic terms for certain products: Aspirin, escalator, and zipper were all distinctive trademarks at one time. Organizations even launched advertising campaigns to encourage the public to use their trademarks properly. Consider the example of Xerox, which urged consumers to "photocopy" instead of "xeroxing" documents in an attempt to ensure that the phrase "to xerox something" did not become another way of saying "to photocopy something." If this happened, then the term Xerox would not be associated with the company's distinctive brand of copiers, but instead with the function of photocopying. This was significant because genericide of the Xerox brand would have resulted in the loss of ability to distinguish its products or services from those of its competitors.

Yet in stark contrast to these historical examples, the increase in competition in nearly every product category ó along with greater consumer sophistication today ó has reduced the risk posed by a brand name becoming a verb. Moreover, ever-shortening product lifecycles and the fleeting attention spans of most internet users mean that brands must focus on gaining a market share and voice in a short period of time.

As a practical matter in today's market, when a brand becomes popular and its use widespread, there is low risk of genericide if the brand is verbed up. The public's use of the Google brand is one of the best examples of this. People often say that they will "google" something on the Internet to mean that they will look up some information online using the Google search engine, rather than just any search engine.

Given the pace of change evident in today's internet-fueled markets, there is clear marketing value associated with the verbed-up use of brands. To mitigate any risk of trademark genericide, we suggest that nonprofitsthat want to engage in this practice:

  1. Make clear to customers that the action suggested by the verbed-up brand use cannot be accomplished without using the branded product or service ó the verbed-up brand can be built into taglines, slogans, and/or logos that reinforce this point (e.g., "Google Play, play your heart out.")
  2. Register the verbed-up brand or the tagline, slogan, or logo containing the verbed-up brand.
  3. Create and publish online verbed-up brand use guidelines (and/or update trademark guidelines) that reinforce the point #1.
  4. Send friendly letters to publishers and media outlets that do not appear to appreciate the necessary connection between the brand and the verb in their references.
  5. Work with dictionaries to ensure that any verb listings are consistent with your new verbed-up brand policies.
  6. Monitor the public's use and view of the verbed-up brand. Ultimately, it is the consuming public that determines, through its use, whether a verbed-up brand has lost distinctiveness through genericide.

Trademark law and practice must evolve to keep pace with changing consumer sophistication and expectations. As it does, nonprofits should not be afraid to break the old rules of proper trademark use when it comes to strong brands ó especially famous ones ó when their culture, tradition, and policy allow.

Andrew D. Price and Justin E. Pierce are partners at Venable LLP. AM&P members can enjoy the full discussion of this topic in the March/April 2015 issue of Signature magazine.


 

© Copyright 2017, Association Media and Publishing. All rights reserved.