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Trademark Is Not a Verb

Posted by James Juo | Jan 15, 2026 | 0 Comments

Professor J. Thomas McCarthy has stated in his treatise that trademarks should be used as adjectives (e.g., Xerox copier) and not as nouns (e.g., "a Xerox") or verbs (e.g., "to xerox"). See also Laura Heymann, Who Is the Reasonable Person? The Grammar of Trademarks, 14 LEWIS & CLARK L. REV. 1313, 1343-1348 (2010) (discussing the “trademarks must be adjectives” rule while noting that "the top-of-mind use of a trademark in its verb form, far from indicating the mark's generic status, may well indicate the enduring fame of the brand"); cf. Elliott v. Google, Inc., 860 F.3d 1151 (9th Cir. 2017) (holding that usage of a trademark as a verb does not necessitate the legal conclusion that the mark is generic). 

The TTAB also recently noted that use of the term "trademarking" as a verb denotes a lay person rather than a trademark expert. In re Turnkey Storage, LLC, Ser. No. 97796315 (TTAB Dec. 8, 2025). While Applicant's expert witness, Professor Bond, was possibly "an expert in marketing and branding," the TTAB concluded that "he is not an expert in trademark matters," citing "his reference to 'trademarking' as a verb" in his declaration (“If a majority of consumers recognize the term as a generic descriptor, it fails the test and cannot be trademarked.”). "As such, his opinions are, for the most part, akin to that of a lay witness" and was entitled to "little weight."

John Welch at the John Welch has noted that the use of "trademarking" as a verb was a "cardinal sin" (at least in his book). 

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.

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