Thanks to World Trademark Review…here at LIPS we have never Ubered and will never Uber. We like buses and bussing.
Uber declares itself a verb – Earlier this month, Uber CEO Dara Khosrowshahi declared that his company’s name has become a verb, indicating the act of taking a ride-sharing taxi. Celebrating this, he said “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”. But, as The Fashion Law points out, this development is dangerous from a trademark perspective. The use of a mark to identify products or services other than those offered by the trademark owners can lead to the loss of the IP right’s use as a source-identifying agent, and therefore its ‘genericide’. So, the blog notes, brands are usually at pains to counter the broader use of their marks as verbs or adjectives, especially given how they have to lose if their rights become unprotectable or unenforceable. A prime example of this approach is that adopted by Chanel, which has periodically run magazine advertisements encouraging people not to use its trademarks in a descriptive manner. However, The Fashion Law suggests, Uber’s approach may reflect its more nuanced understanding of genericide, which (according to a US Ninth Circuit Court of Appeals’ May 2017 judgment) also requires consumers to forget that a term represents a particular brand. The use of trademarks as nouns, adjectives or verbs, the court said, was not itself evidence that consumers have no brand in mind when doing so. (AH)
