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Time to break some trademark rules in 2014?

Venable LLP

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USA May 15 2014

The increasing practice of brand owners ‘verbing

up’ their own marks and in some cases deliberately

disrupting their own logos demonstrates that strong

brands can be flexible, fluid and living

Under the traditional rule 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; and

• in a distinctive or attention-grabbing manner.

While this standard works for many brands, the first two

elements – using brands as adjectives only and in a consistent

manner – are too restrictive when it comes to strong brands.

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 companies 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

(ie, 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 will ‘bing’ a new restaurant to find

its address. Recently Google launched its advertising campaign “Play

your heart out” to entice consumers to visit its PLAY store.

Traditionally, companies 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 company.

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. Companies 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 competitors.

Yet in stark contrast to these historical examples, the increase in

competition in nearly every product category – along with greater

consumer sophistication today – 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 looked 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-fuelled

markets, there is clear business value associated with the verbedup

use of brands. To mitigate any risk of trademark genericide, we

suggest that rights holders:

• make clear to consumers that the action suggested by the

verbed-up brand use cannot be accomplished without using the

branded product or service – the verbed-up brand can be built

into taglines, slogans and/or logos that reinforce this point above

(eg, “Vanguarding can’t happen without Vanguard” and “Google

Play, play your heart out”).

• create and publish verbed-up brand use guidelines (and/or

update trademark guidelines) that reinforce the first point above;

• register the verbed-up brand or the tagline, slogan or logo

containing the verbed-up brand;

• 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;

• work with dictionaries to ensure that any verb listings are

consistent with new verbed-up brand policies; and

• conduct regular monitoring of the public’s use and view of the

verbed-up brand – ultimately, it is the consuming public that

www.WorldTrademarkReview.com June/July 2014 World Trademark Review 81

brand owners, their counsel and trademark offices view strong

brands: they have the ability to morph and at the same time to

build goodwill. In the non-profit context, the concept of a living

trademark provides a particularly intriguing option. Non-profits

with strong brands could – if their culture, tradition and polict

allow – be more forgiving when it comes to allowing chapters, for

example, to make changes to the licensed brand to attract attention

and build brand loyalty with their local audience.

Trademark offices should find a way to register living

trademarks and give them special status. Offices could require brand

owners to submit evidence of a mark’s strength and examples of the

mark in varied form. In exchange, registrations could provide rights

in the part of the mark that is consistent and confer two special legal

presumptions. First, the logo may change in more than a material

way without loss of rights in the underlying design or stylisation.

Second, the underlying design or stylisation is entitled to broader

protection than a typical design or stylisation, in the same way that

the root word of a family of marks is entitled to broader protection

by virtue of the family. (Trademark offices could note that this

does not mean the mark is a phantom mark, such as LIVING XXXX

FLAVOURS, where XXXX is a variable signalling that the applicant

seeks to register multiple marks through one application.)

So, when breaking the traditional (ACID test) rule of using marks

in a consistent manner, rights holders and counsel should:

• make sure the subject design or stylisation is strong, with

substantial goodwill;

• gauge how much to play with the design or stylisation based

on the relative strength of the mark (eg, famous marks can be

changed the most);

• change only the design or stylisation, not the corresponding

word mark (except when it comes to breaking the ACID test rule

of using word marks as adjectives, above);

• make sure that the essence of the logo is retained (eg, the

stylisation of the word mark GOOGLE is regularly discernible);

• continue regular trademark use of the original design or stylisation;

• maintain trademark registrations for the original design or

stylisation and underlying word mark standing alone;

• not be a trademark bully when others do parodies;

• refer to fluid trademarks as living trademarks; and

• advocate for trademark offices to register living trademarks as

such, and give them special status.

Trademark law and practice must evolve to keep pace with

changing consumer sophistication and expectations. As it does, do

not be afraid to break the old rule of proper trademark use when it

comes to strong brands, especially famous ones. WTR

determines, through its use, whether a verbed-up brand has lost

distinctiveness through genericide.

Fluid and living brands

Traditional thinking says that a mark should be represented in

a consistent manner (ie, the same way each time). Brand owners

fear the loss of rights that can occur when they cannot tack rights

from an updated version of a mark onto rights from the original

mark. Tacking requires that two marks make the same continuing

commercial impression, which can prove a high bar. However, can a

rights holder act strategically to get the best of both worlds: a mark

that is protected, yet flexible?

Google did something disruptive and innovative when it starting

morphing its GOOGLE logo on a regular basis. The so-called ‘Doodles’

are, as the search giant notes, “fun, surprising, and sometimes

spontaneous” (see examples above). Initially, the Doodles startled

consumers. Now demand is so great that Google has a team of

dedicated illustrators and has created over 1,000 variations of its

brand. The innovation worked: the Doodles have helped Google to

attract consumers, keep them interested and build brand loyalty.

Some call brands such as this fluid trademarks. However, this may

be a misnomer. It might be more accurate to call these brands living

trademarks. Like a time-lapse video of a person ageing, these brands

transform in appearance over time, but retain their essence; but unlike

such a video, these marks are not really fluid – the word calls to mind

motion marks, which have a stream of movement that is missing here.

Why do living trademarks work for Google? The brand is

strong enough to avoid getting lost in the Doodles. The underlying

famous brand, in effect, shines through. Over time, the Doodles

have arguably enhanced goodwill in the Google brand by making it

come to life in the eyes of consumers. And Google has conditioned

consumers – for the benefit of all brand owners – to believe that

strong brands can change, yet remain consistent source indicators.

Google notably continues to use its classic GOOGLE logo (see below)

and maintains registrations for both that logo and the word GOOGLE

in standard characters. Moreover, Google has played it safe on the PR

side by not attacking Doodle parodies and becoming a trademark bully.

Tinkering with a major brand was once unthinkable. Google’s

experiment has changed consumer expectations of what it means

for a strong brand to be consistent. It should therefore change how

Andrew Price and Justin Pierce are partners at Venable LLP

jpierce@Venable.com

adprice@Venable.com

Figure 1. Google Doodle examples

Figure 2. The classic Google logo

Venable LLP - Andrew Price and Justin E. Pierce
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Filed under

  • USA
  • Trademarks
  • Venable LLP

Tagged with

  • Chief executive officer
  • Xerox
  • Aspirin
  • Escalator
  • Zipper

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