I have a confession to make. I can be kind of – well, rather – no, in fact, quite annoyingly doctrinaire about certain matters. Certain trademark matters, to be precise. So if you know me well, you’d think that I’d have recoiled in horror at Steve Ballmer’s affirmation that he wants Microsoft’s new Bing search engine to “verb up,” i.e., to be usable as a verb, as in “I Binged ‘Colorado wineries’ and came up with some good places for our road trip this weekend.” (Stay tuned!) Why heavens, doesn’t that violate the cardinal rule of trademark protection – Don’t use it as a verb or as a noun, but always as an adjective with a descriptor. Yes, it does violate that rule. But that rule could use a bit of clarification, and Bing provides an excellent example for us to examine.
First of all, we need to look at the product or service Bing identifies. It’s a search engine. The search engine business is well over a decade old, and the generic term “search engine” is well-established in the industry. Microsoft’s competitors in the search engine area won’t need to use “Bing” to identify their search engines any more than Microsoft needs to use Google to identify its search engine. Second, Bing is an arbitrary mark, which makes it highly unlikely that its competitors would need to use it to identify any aspect of its business. Finally, unless I’m reading them wrong, I see nothing in Microsoft’s promotion of Bing that suggests that its functionality is something other than as a search engine; rather, it merely appears to be promoting Bing as “a new breed of search engine” or as a “decision engine.” So if it’s still a search engine, I don’t see that “Bing & decide” weakens the trademark strength of Bing.
Where do we have these problems? When a company creates a completely new product category, selects a descriptive mark, and fails to create a generic term for the product to take the stress of the descriptive brand name. Yes, I’m looking at Rollerblade and Frappuccino – have “in-line skates” and “blended beverage” caught on all that well? I may sound like a broken record but remember: Kleenex and Xerox are coined marks, and that’s why you never hear Scott Paper advertising its “kleenex” nor Ricoh advertising its “xerox machines.” That doesn’t mean coined marks are never at risk for genericness – aspirin is a great example. But don’t forget the generic term! You adopt descriptive marks or portmanteau words like RollerBlade and Frappuccino as trademarks for new product categories without a generic term at your peril, regardless of how clever your marketing department may be for coming up with the term. Whether we are talking about the Bing search engine or the cutesier “decision engine,” I am happy to grant Microsoft a lot more leeway in how it uses Bing.
So not that you need my blessing, but have at it with Bing, Steve. It’s a good mark for a product in an established category.
(These are not Colorado cherries but they are Bing cherries; I’ll report back with what the western slope of the state offers both in terms of produce and trademarks soon.)