Uber is a verb, the company’s CEO Dara Khosrowshahi revealed early this month. According to Mr. Khosrowshahi, who was appointed in August 2017 to replace the company’s controversial founder/CEO Travis Kalanick, “Very few brands become verbs; for Uber to have achieved this shows how we’ve captured imaginations and become an important part of our customers’ lives.” While the Uber-as-verb proclamation is being viewed largely as a win for the San Francisco-based ride-sharing company, legal reasoning would traditionally say otherwise.
The tenets of trademark – the body of law that protects any word, name, symbol, device, or combination thereof, used to identify and distinguish the goods/services of one seller from another – have long held that the use of a trademark, such as a brand name, as a verb – as opposed to as a proper adjective – is the death knell for that mark.
To be exact, when a mark is used as a verb or otherwise identify or describe other companies’ products or services, that mark no longer identifies the output of a single company, and thereby, gives rise to – as legal minded individuals call it – genericide. As a result, the trademark-protected term loses its both its practical and legal powers to serve as a source-identifying agent. In short: the word (or trademark) would no longer identify a single brand but a general type of product or service.
The fear of genericide – and the risks that come with it – is why brands’ legal teams have long counseled their clients about the need to actively educate and police the market for such generic uses. It is why, for years, Chanel periodically ran full page “ads” in Women’s Wear Daily, asking industry insiders, including journalists and critics, to stop using its name to describe non-Chanel items.
The brand did not want fashion critics, for instance, to refer to tweed jackets from other brands as “Chanel-like” or non-Chanel-manufactured quilted leather bags as “Chanel-esque.” In other words, the famed Paris-based brand did not want its name used to describe others brands’ products, since that could bring about the risk that consumers would start identifying the Chanel name with the general tweed-style jacket or any old bag quilted bearing a woven leather chain-link strap.
For a brand like Chanel, losing rights in its eponymous trademark would be a multi-billion dollar loss, since Chanel (and other similarly situated brands) is largely in the business of leveraging its name and other trademarks in exchange for consumer dollars. Hence, the efforts to avoid such generic use of its mark.
And yet, Uber is openly quite pleased that its name is being used to describe ride sharing services as a whole. Why is its stance so different from Chanel’s? Well, it is likely because it takes a more nuanced view of genericide. In fact, Uber’s stance reflects a larger shift in the understanding of the risk of genericide that has been underway for at least a decade when the New York Times published a highly-referenced article, entitled, “The Power of the Brand as Verb,” about the modern reality of the use of trademarks as something other than merely source-identifying terms.
As now-Harvard Law professor Rebecca Tushnet told the Times in 2009, “The risk of [a trademark] becoming generic is so low, and the benefits of being on the top of someone’s mind are so high,” the latter being especially true in the ever-crowded consumer marketplace.
Ms. Tushnet has since told TFL that such risk is low “because the key to genericity is whether people understand that there is a brand name [at play, as well as] an underlying thing.” For instance, she states, “Even with nouns, courts today are pretty conscious of the fact that a consumer can say ‘hand me a kleenex’ and mean a tissue, and at the same time, understand that Kleenex is a brand name for a type of tissue.”
Her example coincides with the May 2017 findings of the Ninth Circuit Court of Appeals in upholding the validity of Google’s trademark-protected name. In that case, the court held that “an internet user might use the verb ‘google’ in an indiscriminate sense, [or] with no particular search engine in mind.” On the other hand, they could use it “in a discriminate sense,” meaning that they have “the Google search engine in mind.”
The court gave another example, saying: “If a speaker asks for ‘a Kleenex tissue,’ it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for ‘a Kleenex.’”
As for the use of a trademark as a verb, Tushnet notes that “verb status is basically irrelevant to the legal test [for genericide],” something the Ninth Circuit similarly noted in its opinion, stating, “verb use does not automatically constitute generic use.”
Add to the court’s explicit willingness to take a more generous view of what consumers know and how they use specific trademarks, the fact that consumers in the digital era are arguably more aware of and connected with brands, even if there are so many more of them (brands, that is) than in the past.
Brands now – more than ever before, thanks to the web and social media – have a voice, which can potentially reach hundreds of millions of consumers for little to no cost at all and in barely any time. Moreover, traditional one-way corporate communication is largely dead for consumer goods brands, which have been forced to not only communicate to consumers but to converse with them. This could mean that in many cases, the consumer-brand relationship is stronger in the digital era, giving rise to a heightened understanding amongst consumers that in instances of Google, or Uber, or Chanel, there is the brand and then there is the goods/services that it produces.
Considering this reality, it seems that a more modernized approach to genericide very well might be warranted, one in which neither Uber, nor Chanel stand to be damaged by the extensive use of their names but in fact, may be better off – i.e., more profitable – as a result of it, at least for the time being.