for Associations to Break Some Trademark Rules
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.
Andrew D. Price and Justin E. Pierce
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.
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
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.
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).
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.
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.
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.
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:
- 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
"Google Play, play your heart out.")
the verbed-up brand or the tagline, slogan, or logo containing the
- Create and publish
online verbed-up brand use guidelines (and/or update trademark guidelines)
that reinforce the point #1.
friendly letters to publishers and media outlets that do not appear to
appreciate the necessary connection between the brand and the verb in
- Work with
dictionaries to ensure that any verb listings are consistent with your new
verbed-up brand policies.
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
AM&P members can enjoy the
full discussion of this topic in the March/April 2015 issue of Signature