Brandverbing and Genericide: Can Your Trademark Stay Strong?
“I’ll have to Google that.”
“Let’s Uber to the bar.”
“Can you Xerox me some copies?”
Phrases like these have become part of everyday language, turning distinctive trademarks into verbs or general terms for specific actions. While this might seem like the ultimate sign of a brand’s success, it raises an important legal question: Can a trademark still serve its purpose if it becomes a common word?
In trademark law, a term that “the relevant purchasing public understands primarily as the common or class name for the goods or services” is considered generic. Generic terms cannot be registered as trademarks or protected under trademark law, even on the USPTO’s Supplemental Register. For example, “CARS.COM” is generic for an online car marketplace and cannot function as a unique brand identifier.
Even fanciful trademarks—words that initially have no meaning—can become generic if they enter common usage as descriptors for a type of product or service. The classic example? Escalator, once a trademark for a specific company’s moving staircases, is now a generic term.
Does Verb Use Make a Trademark Generic?
In 2017, the 9th Circuit addressed this issue in Elliott v. Google, Inc., a case claiming that “Google” had become generic. The court ruled that “verb use does not automatically constitute generic use,” distinguishing between using “Google” to mean “searching the internet” and using it generically to refer to any search engine. This decision was good news for companies embracing brandverbs, but it doesn’t entirely eliminate the risk of genericide.
How to Protect Your Trademark from Genericide
If your brand is becoming a verb—or a byword for a product or service—it’s essential to take proactive steps to safeguard its distinctiveness. Here’s how:
- Secure Federal Trademark Registration
A federal trademark registration establishes your exclusive rights to the name and reinforces its status as a distinctive identifier. - Register the Brandverb
If you decide to embrace brandverbing, consider registering the verb form of your trademark or incorporating it into a slogan. For example, “Let’s Uber” could be part of a broader trademark strategy. - Pair Your Trademark with a Generic Descriptor
Use the generic term for your product or service alongside your trademark in advertising and packaging. For instance, instead of just “KLEENEX,” use “KLEENEX Facial Tissues.” This practice clarifies that “Facial Tissues” is generic, while “KLEENEX” is your brand. - Highlight Brand Exclusivity
Create advertising that emphasizes your brand’s uniqueness. For instance, campaigns like “You can’t Google without Google” remind consumers that your brand is essential to the action they’re describing. - Discourage Generic Use
Consider campaigns that directly address misuse of your trademark. A notable example is the VELCRO brand’s “Don’t Say Velcro” campaign, which humorously educates consumers to “Never a Noun. Never a Verb. Always on Brand.”
Striking the Balance
Brandverbing can be a double-edged sword—it boosts visibility and brand recognition but risks diluting your trademark’s distinctiveness. By taking proactive steps to educate consumers and secure comprehensive legal protections, you can enjoy the benefits of a strong, recognizable brand while guarding against the threat of genericide.
Protect Your Brand with Leonov Trademark Law
At Leonov Trademark Law, we specialize in helping businesses navigate the complexities of trademark law. From registration to enforcement, we’re here to ensure your brand remains distinctive and protected.
Contact us today to discuss your trademark strategy and keep your brand on the cutting edge.