TiVo's latest battle: protecting its name

Following in the footsteps of companies like Google and Xerox, TiVo has declared that its name should most definitely not be used as a verb. According to The New York Times, news organizations are now getting warning letters from the company if they run articles with sentences like "don't forget to TiVo 'The Real Gilligan's Island'" (well, okay, no one's likely to use that particular sentence, but you get the idea). While we understand TiVo's fears of ending up as a generic term for DVR usage, we think it's a good thing if a company's product has so captured the public's imagination that it becomes a verb. And there are companies that agree. Apple, for example, has actively encouraged the use of iPod as a verb, as in "iPod your BMW." However, if TiVo — which has taken flak for its new advertising plans, and is losing market share to cable companies — is that concerned about maintaining brand integrity, who are we to argue? From now on when we record something on our DVR, we'll just say we're "ReplayTVing it."  Or maybe not.

[JAR @ Dec 19th 2005 1:38AM]

In my household we have a Time Warner Cable DVR from Scientific Atlanta. We felt really weird using "TIVO" as a verb or a noun. The thing just isn't a TIVO.

Instead we say "DIVO" as in, "Did you DIVO Lost?" or "What's on the DIVO?"

Yeah, we're stupid. But we also call tissue "tissue."

[TheZodiac @ Dec 19th 2005 1:38AM]

WHIP IT, WHIP IT GOOD! (Devo) :-P

Anyway, in this instance I tihnk using their name as a verb would be even more beneficial than the one for the iPod. Though, if its trademarked, and the technique/tech is patended, then I dont think they risk the chance of it being diluted by some generic invisiable force.

They should embrace it! :)

[MJP @ Dec 19th 2005 1:38AM]

Adobe had the same complaint about people saying, "I have photoshopped a monkey's face onto my friend".
Why are they unhappy about joining Hoover, Sellotape (UK), and so on?

[matthew @ Dec 19th 2005 1:38AM]

This is the least of TiVo's problems. Google has the luxury of "controlling" the use of its name: because it's a massively profitable company. TiVo's not in that position.

TiVo's management seem dead set on killing that business. Slow bleed style. If it does happen, it won't be anyone's fault by their own. But in the meantime, were it up to me, I'd promote the use of TiVo as a verb and figure out how to squeeze pennies out of the masses instead of dollars from the elite.

[Asten @ Dec 19th 2005 1:38AM]

I'm quite happy with my 5 year old ReplayTV, and they not only don't spam me with commercials, but they haven't yelled at me for saying "I'll Replay it".

[KMc @ Dec 19th 2005 1:38AM]

Just because they're sending out letters doesn't mean they mind people using them as a generic verb. A company can lose a trademark if it passes too far into generic use and they can't show that they tried to protect it. That's what happened to Aspirin.

[JMS @ Dec 19th 2005 1:38AM]

>taken flak for its new advertising plans

Ah, there's really nothing quite like complaints from the uninformed. Anyone with a modicum of TiVo experience and half a brain in their head who takes the time to read what TiVo is actually doing with this "new" advertising scheme will realize that it's not something new, TiVo has done it for a while now and it's absolutely _not_ obtrusive. In fact, it's kind of handy. What's unfortunate are the white flags of ignorance that get run up the pole when most journalists start their screeds over this issue. If only they'd actually take the time to figure out what all those fancy words in the press release mean...

[Dennis @ Dec 19th 2005 1:38AM]

TiVo's doing nothing here that any other company with a trademark HAS to do - they need to provide evidence that when their trademark is used inappropriately (as a generic term in news stories, by a competitor, et cetera) that they have defended their claim to the trademark by notifying the person/group misusing the trademark to stop. That's just the way trademark law works, nothing nefarious (on TiVo's part) there.

[Jim @ Dec 19th 2005 1:38AM]

Two of our friends have a different DVR system but they still say they "TiVoed" a show. We have TiVo so it irritates me a little because I know they didn't "TiVo" a show, they just recorded it. But, I like the idea of TiVo being THE NAME they use even if they don't know how much better the features we have are compared to their system. The problem is they're not going to go buy a TiVo because of the service they already have. Just like I don't have to buy Scotch Tape (US) or Sellotape (UK) any time I want clear sticky tape. Unless I want the best.... :)

[Alex @ Dec 19th 2005 1:38AM]

I don't see anything wrong with what TiVo is doing. To me it is just a smart business practice!

[JD @ Dec 19th 2005 1:38AM]

I had my trademark final exam last night, so I've been studying this stuff a bit ;-) kMC (comment 6) gave the right answer. 15 U.S.C. Section 1064 provides for revocation "At any time if the registered mark becomes the generic name for the goods or services"

Here are some examples: aspirin, escalator, cellophane, zipper, shredded wheat, corn flakes , kerosene, thermos, trampoline, yo-yo.

Close calls: Kleenex, Xerox, Fritos.

Pretty interesting stuff huh? Thanks to engadget for letting us know about TiVo's efforts to keep their TM!

[Scott @ Dec 19th 2005 1:38AM]

Finally some fellow attorneys (and one future attorney) spoke up about the misunderstanding by the general public and the spin that media outlets create on issues such as this. Tivo's decision to protect its trade name has nothing to do with poor customer relations. It has everything to do with not going bankrupt and becoming a page in trademark law textbooks. Posts 6, 8, and 11 already explain it adequately.

Just think about the drooling media outlets just waiting to jump on Tivo and their executives for losing the Tivo trademark and not being smart enough to protect it.

[Jeremy Holloway @ Dec 19th 2005 1:38AM]

TiVo should use their legal resources to win some funding in some other manner. Currently, they are suing Echostar's Dish Network for intellectual property violations. They should be suing Microsoft (deep pockets) for IP theft over the UltimateTV machine or the use of the Xbox with the WindowsXP Media Center. That's a surefire way to get some better funding. Or sue Comcast. As for features I'd like TiVo to incorporate, I'd love to be able to "thumbs up" or "thumbs down" certain commercials and give the advertisers some (mainly negative) feedback. Or the ability to do the same to entire channels (G4TechTV, I'm talkin' to you with a big tripple thumbs down!)...

[servo @ Dec 19th 2005 1:38AM]

Now that cable companies are coming out with their own PVRs its even more important for Tivo to keep a strong brand name. Otherwise you could see ads for a Cablevision Tivo Box.

Another close call on tradmark is Windows. MS actually settled rather than have the courts decide whether it was a generic term (which it is).

[StuBee @ Dec 19th 2005 1:38AM]

Tivo doesn't care if Grandma uses it as a verb, even if she does use another dvr. Tivos interest is stopping other companies from using the term and thus confusing the consumers.

[Mark @ Dec 19th 2005 1:38AM]

Owning a Replay, I say Tivo it, only because if I say replay it no one has a clue what I'm talking about. I'm obviously talking about a better product :-).

[colin @ Dec 19th 2005 1:38AM]

I believe that trademarks are only supposed to be used as adjectives, not as nouns or verbs, unless as a nown in standalone logos, e.g. you should say "We sell Microsoft(r) Word software and the Windows(r) operating system", no just "We sell Word and Windows". I think there's a cereal commercial on now where the mum says "a trademark... protects.... name... as used to represent a product" - it protects an adverb used with a descriptor - a name is a noun. Trademarks go in categories, so if you don't use the descriptor noun, you aren't correctly qualifying your trademark adjective.

Also see first few paras of http://www.microsoft.com/mscorp/ip/trademarks/gnlguide.asp

[Joe @ Dec 19th 2005 1:38AM]

Replay TV > Tivo.

[idaytrader @ Dec 19th 2005 1:38AM]

Tivo is in big trouble and it has little to do with the upcoming advertizing scheme. This is just a symtom of a company who must change fast or die. I had a lengthy discussion with customer service @ Tivo (I own 2 Tivo DVRs) prior to buying my HDTV only to discover that the current models can't handle any of the new HD signals, and they have no plans they are willing to discuss to handle this. It is because of this I now own a ComCast HD DVR and am closing out my Tivo Accounts. It is to bad to see a pioneer die on the vine. It just goes to show you without inovative risk taking management, that a company can be eclipsed into history in a heart beat.