In 2013, almost everyone uses social media websites. We use Facebook® for personal connections, LinkedIn® for business, YouTube® for video, Skype® for voice calls, and Twitter® for quick updates.
Each of these platforms has established itself as the leader in its field, and because of that, some are used colloquially to describe the service they provide, or a task they allow us to perform. For example, we regularly hear people say “just Google that”, “Facebook me”, or “I’ll see you on Skype.”
Service providers actively discourage the use of these terms. Why? Because, otherwise, they run the risk that their trade mark may become common parlance, or generic, in which case the exclusive right to use, and prevent others from using, the trade mark is lost.
Trade mark distinctiveness and genericism
Trade marks, by their very nature, must be distinctive of the product or service being provided. A word like “apple” could never be a trade mark for apples (being descriptive of apples), but can be a trade mark for computing goods and services.
The situation becomes more complex where the goods or services are unique. This can happen where the trade mark is applied to a new type of product on the market. Take, for example, Rollerblade® for in-line skates. How many people do you know who simply refer to in-line skates as “rollerblades” and in-line skating as “rollerblading”?
Once a trade mark starts to be used as a noun or verb (for example, “rollerblades” to describe in-line skates, or “rollerblading” as a verb), there is a real risk that its distinctiveness will be eroded, diluted, or even lost entirely. And when that happens, the particular trade mark may be revoked by reason of being generic – in the industry, this is referred to as “genericism” or “genericide”. Rollerblade® has been saved this fate because its owner has insisted that people call its product “Rollerblade® in-line skates”.
Social media websites: advertisers take care
The same principles apply to social media websites. Typically, to ensure that their products do not become victims of genericide, social media companies do not permit modification of their trade marks (including as a verb), and they always request that use of the marks refers back to their company. We outline some guidelines below, as suggested by the companies themselves. Social media companies actively pursue compliance with these guidelines:
- Do: Distinguish Google trademarks from the surrounding text in some way, e.g. capitalise the first letter, capitalise or italicise the entire mark, place the mark in quotes, use a different type style or font.
- Do: Use the trade mark only as an adjective.
- Don’t: Use the trade mark as a noun or verb, in the plural or possessive form, or in a way that suggests a common, descriptive, or generic meaning.
- Do: Use a generic term following the trademark (e.g. “GOOGLE search engine”, “GOOGLE web search”.
- Don’t: Combine any part of the Facebook trade mark with other names or generic terms.
- Don’t: Use any icons, images or trademarks to represent Facebook other than what is found on the Facebook resource centre.
- Don’t: Modify Facebook brand assets in any way, such as by changing the design or colour.
- Do: Make sure that if mentioning “Tweet,” you also refer to Twitter or otherwise display the Twitter brand (e.g. “Tweet with Twitter”).
- Don’t: Use the Twitter or Tweet marks to refer to any service other than Twitter.
- Don’t: Use Tweet in the name of your application if used with any other service.
- Do: Capitalise the first letter of the mark, Skype™, or put the whole trade mark in capital letters SKYPE™, italics skype™, or quotation marks “skype™”.
- Do: Use Skype™ only as an adjective, followed by the descriptive generic term, e.g., Skype™ software.
- Don’t: Use the Skype trade marks as verbs.
- Do: Use the “LinkedIn” trade mark with either the ® or ™ symbol.
- Do: Use the LinkedIn trade mark as one word, as an adjective, and followed by a description of our services (e.g. “LinkedIn® professional networking services”).
These guidelines are likely of little significance for the average user, although they generally form part of the terms of service that we all agree to. Companies and advertisers who use the services should be more cautious, as their conduct will be more closely scrutinised by the trade mark owners.
And of course the trade mark owners themselves have to be careful not to fall into similar traps – once they begin to use their own marks as generic terms it can be a slippery slope.
Next time, we will take a look at re-posting and social media. What can you re-post, and what re-posting carries a risk of copyright or trade mark infringement?