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
