“FOMO”— A New Word or A Brand Name?
The acronym “FOMO” has become a familiar part of our shared vocabulary. Particularly common online, where social media has generated a new universe of experiences (and words to describe them), it stands for the Fear of Missing Out.
Like any other new word, “FOMO” was invented by people who needed to describe something new. It was created and coined by internet users on chatrooms and message boards. That’s why the letter we received on 23 January 2019, was so unexpected.
FOMO: A Brand Name?
Picture a world in which everyday words can be bought and sold as trademarks. Restaurants are forced to calculate the licensing cost of the Burgers™ and Chips™ listed on their menu. Engineers are unable to build cities without infringing on the trademark for Concrete™. Every aspect of life is subject to the scrutiny of lawyers (or, it would be, if the word Lawyer™ had not been trademarked by a far-sighted legal firm).
It’s a peculiar scenario. And yet, this is the situation we were presented with on 23 January, 2019, when we received the letter. It turned out to be the first of many…
First, some context: ours is a software company that gives business websites a way to show persuasive notifications to visitors. By showing customers messages about recent sales and popular products, the notifications create effects like Social Proof and the Fear of Missing Out (FOMO). Our FOMO notifications have been available since 2017 and have helped countless businesses to succeed in a tough industry.
So, when we were contacted by a rival company and threatened with legal action for using the word “FOMO” to describe our product, it came as quite a shock. This is the letter we received:
To Convertize, 23 January 2019
My name is *******,
I’m an attorney at ********** in Massachusetts. Our firm represents Solstice Equity Partners, Inc. (dba Fomo) (“Fomo”) in connection with its intellectual property matters. As you are likely aware, Fomo is the leading provider of social proof marketing products and services under its FOMO trademark.
….
Our client welcomes fair competition, but is concerned that your use of the term “FOMO” in this way is likely to cause confusion with Fomo’s FOMO trademarks. Consumers are likely to think your product is in some way associated or affiliated with Fomo and its FOMO brand product…
On behalf of our client, we ask that by February 1, 2019, you remove the above-referenced uses of “FOMO” from the Nudgify website and listing at the Shopify app store, and refrain from using the term in the future to refer to the Nudgify product or any of its features.
We take the ethical side of our business very seriously. So, to make sure we weren’t missing something, we did our due diligence possible. This is what we found…
“FOMO” Notifications
Trademarks are important to both businesses and customers. Without them, it would be impossible to distinguish an exceptional product or service. However, if used in the wrong way, they can prevent the kind of competition that gives consumers a fair choice.
Our first step was to check if our rivals had indeed attempted to trademark the term “FOMO”. There were 100 different products and companies with trademarks for the word, including a soap product, a hair-care product, and even a beer. Sure enough, in 2017, our rivals had listed the trademark “FOMO” in a number of different classes.
“FOMO” (4 April, 2017 — International Class 035)
Interestingly, we also found out that they had listed a number of other trademarks. For example, there were a pair of phrases, frequently used within our industry, that had also been listed…
This is a marketing phrase often used by Social Proof apps. One of the principle appeals of these products is that they recreate in-store experiences online.
“BOOST SALES WITH SOCIAL PROOF” (17 April, 2018)
This phrase is even more commonplace, and is used to describe the industry as a whole.
The idea that phrases like “boost sales with social proof” of “FOMO” could be distinctive enough for an enforceable trademark seemed unlikely. To make sure that the terms were as generic as we believed, we decided to do a bit of research.
A History of FOMO
Searching for the term FOMO in Google produces over 9,700,000 results. Across the world, interest in the term has been growing for over a decade.
The fear of “Missing Out” is not a new phenomenon, of course. “Don’t miss out” has been an advertising mantra for as long as advertising has existed. It plays on deep-seated, perhaps innate, anxieties about social exclusion. However, with the availability of instant communication across almost any distance, the experience of dislocation has become more common.
In 2007, the FOMO phenomenon was named in an article published in Bloomburg Businessweek. In this case, it was used to explain the habits of MBA students at Harvard University.
By 2011, FOMO was commonly used to describe the effect of Social Media and was beginning to be exploited as a marketing opportunity. In 2012, the marketing communications brand JWT published a research document exploring how FOMO was affecting people in the US and the UK. When asked, 70% of 18–35 year olds said they could “completely or somewhat relate” to the idea of FOMO.
For over a decade before the term “FOMO” was listed as a trademark, it was being used by journalists, marketing experts and online communities to describe a shared experience.
After checking with our patent attorney in Munich, we decided to ignore the letter. Unfortunately, it was not the last one we received.
The Second Letter
We did not hear from The FOMO.com solicitors again until 10 October 2019. When it arrived, this second email contained more detailed requests than the first.
To Convertize, 10 October 2019
You will recall that in January of this year I contacted you regarding concerns of my client Fomo about your use of its FOMO mark on various pages of your Nudgify website…
It has come to our attention, however, that a search for “Nudgify” returns the following result:
It appears this is the result of your use of “Nudgify — Shopify Social Proof & FOMO” as the title of the Nudgify home page.
We also note that your website includes a page comparing Nudgify to FOMO. Our client has no objection to that, as you are free to refer to the FOMO trademark in a comparative manner. However, about halfway down that page is a section that reads as follows:
…
We must insist that you revise the home page title and the language on the product comparison page to remove use of the FOMO mark.
I look forward to receiving confirmation by October 17, 2019, that you have made this change.
Having received this second message, we decided to consult our patent attorney once again.
As before, however, our attorney reassured us. It seemed there was only one response available to us…
To FOMO Ltd, October 2019
1. Fomo is a descriptive term and we use it in its original context of the dictionary. Therefore there is no trademark infringement here.
2. We just use it as a descriptive term in flowing text as thousands of other websites do (there are more than 12M search results for FOMO in Google…). Our app is not called Fomo.
3. The only page where we mention the brand FOMO is our comparison page
FOMO is not a brand like Shopify, which is not in the dictionary and could be challenged if used in pages or domain names like https://builtwithshopify.com
What We Learned
Trademarks are an essential part of business — especially for SaaS companies. We sell an invisible product, so a strong brand, protected by a trademark, is essential.
However, words that are commonly used to describe shared experiences, like “FOMO”, do not make good brand names. Yes, FOMO is a trademark when used as a product name, but NO, FOMO.com can’t stop anyone using the word FOMO.
