Trademarks as verbs and the significant of meaning

DuetsBlog.com (1) asked in the LinkedIn group Intellectual Property Professionals, "What do you think about brands being used as verbs?" A number of the serious answers generally favored allowing the use of trademarks as verbs or said it at least is inevitable. Of the first nineteen answers, only one used the word "confusion," and no one (including any of my first four postings) stated the rational of a trademark as a symbol to avoid consumer confusion as to the source of the goods. In fairness, all the posters were attorneys who knew this and an early poster noted the protectionist act of "admonish[ing] their admiring public … that their precious brand is an adjective denoting a source of these fantastic goods or services (and a registered trademark to boot), and not merely a generic moniker."

In my first post, I discussed the objective and subjective aspects of trademarks validity.

"The objective test of validity is still the public perception (measured by on the street interviews) of whether the mark pertains only to the single brand or to the class of products. Mark owners hoping for a subjective test of advertisements reminding the public of the single brand meaning may be in for a rude awakening by a competitor who monitors public perception, then challenges the validity of the mark."

In my second post, I responded to a poster who stated that "[o]ne of the ways companies have buttressed their protection is through the licensing of their trademarks into categories that are beyond their core business." This somewhat surprised me.

"TRIPS Article 21 allows trademark assignment without transfer of the business. This is not the law in the US. (15 U.S.C. § 1060). A US mark owner may exchange the goodwill of the mark to another of its own goods or services. The US mark owner may not license (assign) a mark to another company's product or service. Such naked licensing inherently confuses consumers as to the source of the goods or service, and risks invalidity of the mark. (Sugar Busters LLC v. Brennan) (Use by others without control diminishes the strength of the mark.)"

In my third post, I responded to a poster who remarked that a cornstarch manufacturer successfully held off a trademark challenge using cookbooks as evidence of genericide by "showing that over the years they had written cease and desist letters to loads of publishers demanding that they stopped using their brand as generic."

I responded, the "example is on point that a trademark challenge requires the proper segment of the public. The cookbooks submitted did not show the public perception of the right persons. The proper audience for the public perception survey (and trademark challenge) would have been the persons who buy and use cornstarch. As long as people using search engines recognize there is a search engine brand named Google, the public can google along on any search engine and say they "googled it."

The poster disagreed with me, saying "the recipes in magazines showed the public perception of the right people: homemakers who used corn starch in their cooking, and for whom Maizena had become such a staple and a household name that it had reached their "top of mind" so that they thought of all corn starch being Maizena." The poster added that the "[s]ame happens with Henkel's glue stick "Pritt"; since I was a child doing school pro[j]ects I've never heard any one go to a stationary store and ask for a stick of glue; people will ask for a "Pritt". He added that, "people here will refer to all sticks of glue as "Pritts", even if they're holding a stick of UHU glue in their hand ... however I've never heard anyone say they "Pritted" a picture on their album or so."

In my fourth posting, I replied slightly more on topic, but still focused on mark validation.

"Whether the misuse of the mark is as a verb or as a generic noun is irrelevant. "The primary significance of the registered mark to the relevant public [is] the test for determining whether the registered mark has become [] generic." (5 U.S.C. § 1064(3)).

Invalidation of a trademark is a two-part test. The first test is to establish the relevant product market. (A. J. Canfield Co. v. Honickman, 808 F.2d 291 (3d 1986) (holding that there is a difference in the relevant market for a diet chocolate fudge soda as a chocolate diet soda, or as a chocolate fudge soda.)) Maizena is a mark for cornstarch, not a mark for an ingredient in a cookbook recipe.

The second step is determining whether "the term [is] understood by the relevant public primarily to refer to that genus of goods or services?” ((In re Reed Elsevier Properties Inc., 06-1309 at 3 (Fed. Cir. 2006) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986)). The relevant public is "in the minds of the consuming public." (A. J. Canfield Co. v. Honickman, 808 F.2d 291 (3d 1986)). Maizena sending individual letters to the publisher could not change public perception because the consumer purchasers of Maizena never saw the letters.

Evidence of the mind of the consuming public may be "any competent source [that] show[s] the relevant public’s understanding of a contested term, including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers, and other publications. (In re Reed Elsevier Properties Inc., 06-1309 at 3 (Fed. Cir. 2006) (citing In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570 (Fed. Cir. 1987)). Were the cookbook publishers truly the relevant public, then the court would have invalided the Maizena mark because Maizena had already lost the strength of the mark. Closing the barn door after the horse is gone does not recover the horse.

[The] Pritt example is a prime case of a mark about to die from genericide."

In my fifth posting, I finally addressed the affect of trademark verbing.

"The purpose of a trademark is to associate a specific brand of product or service to its source (to prevent consumer confusion). Use of a trademark as a verb is therefore only a generic use if the interpretation is subjectively open to another source and the source was objectively different.

In a one-brand market, use of the trademark as a verb inherently refers to the source (e.g., "barting to San Francisco," for riding the BART train to San Francisco from the East Bay area. The mark would similarly be safe from genericide when the speaker and listener share by a common experience that the verb refers to the same source of the specific product or service. Such an example occurs between two employees of one company referring to a contracted product or service from one source (e.g., FEDEX as above) for their company. The last example of inherent meaning is in the association to the overwhelming monopolist in the market. Talking about the Office Suite software implies Microsoft for most offices. Google may be 'safe' from genericide for now, but Microsoft Bing just knocked Google down to 72% of the market.

Outside of these circumstances, use of the trademark as a verb becomes less specific, subject to interpretation, with an increased risk of genericide. As stated above, the understanding and meaning of the consumer is paramount to the success of a trademark. Thus, CalTrain and DHL would likely object to the BART and FEDEX examples as they compete with BART and FEDEX respectively, but in limited markets. Taking the train from Millbrae to San Francisco is open to interpretation to both BART and CalTrain as both trains carry passengers between those cities. A passenger could still speak of barting to San Francisco from Millbrae without injury to the trademark if the user had ridden BART and the listener understood the speaker had ridden BART.

The true injury of using a trademark as a verb occurs when the user and listener or reader do not have the common experience. A Baby Boomer might receive a confused look after asking a Generation Y employee to 'xerox' something because with competition and time there is now an entire generation with many people who have likely never used a Xerox brand copier and do not know 'xerox' as a verb. Similarly, I might say that I googled "trademarks" and love the way the images jump up from the page. This would confuse a Google, Yahoo or Internet Explorer user because that is a feature of Bing.com.

Thus, verbing a trademark is not necessarily an injury to the mark. The significance is in whether the use is open to interpretation and whether user and listener or reader understood the verb-mark to apply to the same source of the product or service."

(1) http://www.duetsblog.com/2009/06/articles/just-verb-it-a-legal-perspective-on-using-brands-as-verbs-part-i/