Overview
People typically think of a trademark or service mark as a static, two-dimensional term (like "Apple") or design (like Apple's stylized apple logo) used to identify a product or service. Today, many brand owners are challenging trademark fundamentals by rejecting static source identifiers and adopting marks that change frequently - and sometimes constantly - in an effort to energize their brands and connect with consumers. Such "fluid" marks are a natural outgrowth of new media and information technology, but they must be managed carefully or they can jeopardize valuable trademark rights.
Even if you have never heard of a fluid mark, you have probably encountered them in the marketplace. They range from the ever-changing "doodles" on Google's home page to the wide variety of borzoi dog colophons on Alfred A. Knopf books. Picture the artistic renditions of the Absolut vodka bottle that have graced the brand's advertisements for decades, or the mutable Chiquita banana sticker (a personal favorite: "Place sticker on forehead. Smile™). MTV. AOL. The list goes on. All of these brands have enlivened their marks with dynamic, changing presentations. (You can find the authors' collection of fluid marks and related resources on Pinterest.)
In her new book Dynamic Identities: How to Create a Living Brand, graphic designer Irene van Nes explains: "Brands need to constantly adapt to their fast-changing environment in order to survive. Internet, social media and technical revolutions have given brands the opportunity to behave like living organisms." Fluid trademarks communicate. They invite consumers to interact, project and connect the dots. "In the industrial age, a logo was just a signature. It should be a message," comments Marc Gobé, CEO of Emotional Branding LLC and author of Brandjam: Humanizing Brands Through Emotional Design.
Today's branding professionals, and the public at large, have enthusiastically embraced fluid marks. But these ever-changing marks can cause headaches for trademark lawyers because they do not fit neatly into the existing legal regime. Fluid trademarks therefore call for close collaboration between trademark lawyers and creative and marketing teams. The key to retaining trademark protection for fluid marks is to focus on the source-identifying pillars of a brand and strive to keep them consistent. This QuickCounsel reviews some of the issues related to fluid marks and how in-house counsel can avoid some of the inherent risk.
Trademark Basics
Trademarks are the modern equivalent of the ancient hallmarks used by silversmiths, seals by Asian artists, and brands by ranchers. They function as a signature or, in trademark law terms, a "source identifier." Just as you would run into trouble signing your signature differently each time, brand owners can run into trouble if they present their trademarks differently each time.
Under the broad definition in the U.S. federal trademark law (the Lanham Act), the term "trademark" includes "any word, name, symbol, or device, or any combination thereof" that identifies and distinguishes the goods and services of one person from those of another and indicates their source. According to Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995), a landmark Supreme Court decision recognizing that an individual color can function as a source identifier, a trademark may be "almost anything at all that is capable of carrying meaning." Qualitex involved a professional dry cleaning pad in a special shade of green-gold. A better-known example is Owens Corning's fiberglass pink, at least for all of us who grew up watching the Pink Panther commercials promoting it. But even this broad conception of what qualifies as a trademark proceeds from the premise that the mark - whether a word, logo, color, or other identifier - is used consistently and without major variation to symbolize the source of particular products or services.
Of course, a company can own more than one mark, but a mark is by definition a source identifier, and the public may not recognize a particular designation as a source identifier if the designation is not used repeatedly and consistently to identify the same source.
Trademark rights in the U.S. arise from use of a particular mark in connection with specific goods or services. Registration of a mark with the U.S. Patent and Trademark Office has many advantages, and it is possible to reserve rights in a mark not yet in use by filing an application to register it on the basis of a bona fide intent to use. Yet in the U.S., unlike many civil law countries, it is not necessary to register a mark to own trademark rights. The first user of a distinctive mark is said to have "priority," and it can enforce its trademark rights against later comers. Typically, a mark becomes stronger when it is used consistently over an extended period of time, because the public then comes to recognize it as a signifier of source.
Trademarks, whether or not registered, are theoretically perpetual in duration, as long as the mark remains in use. Under the Lanham Act, a mark is presumed abandoned after three years of non-use, and the owner must prove that it intended to resume use of the mark in order to hold onto its rights. In other words, a brand owner who fails to use a mark may lose it.
Under these trademark law principles, fluid trademarks must be carefully controlled because changing a mark can weaken or even destroy it. A brand owner who presents a weak mark in myriad presentations runs the risk of diluting it or even turning it into an unprotectable generic term. One who fails to use a mark risks abandoning it. And one who flits from one presentation of a mark to another misses the opportunity to build consumer recognition and enforceable trademark rights in additional components of the brand identity. For these reasons, brand owners and their counsel must consider the pillars of the brand and take precautions not to undermine them.
The Challenges of Fluid Marks
With the rise of fluid trademarks, brand owners are flouting conventional wisdom that the best way to build trademark rights is to use the same presentation of a mark, without significant change, over and over.
Fluid marks come in many forms. Some involve simply ornamenting the underlying mark, so that the essential characteristics of the mark remain constant but new matter has been added, usually for a limited period of time. Google's doodles used this approach in the early days, retaining most of the basic elements of the Google word mark and logo and merely adding ornamentation. Some fluid marks reinterpret the mark in different media, like Absolut's vodka bottle, which retains the same basic shape recast in a variety of materials. A similar and very popular way to implement a fluid brand identity is to use a frame or three- dimensional container displaying different content in the same medium, as MTV's new logo does. Other fluid marks employ changing backgrounds or moving, multiple, or ever-changing designs.
Even conventional trademarks are not carved in stone. Most brand owners periodically update their logos. They may employ different variants of their logos for different product lines. They may adopt moving image, sound, or color marks. None of these are fluid marks if the brand owner's intent is to use the same mark, in the same format, for an extended period of time. Still, the lessons learned from these more familiar scenarios can provide some guidance in wrangling a fluid mark from a trademark law perspective.
Although the trend toward trademark fluidity has the potential to jeopardize trademark protection, there are ways to use fluid trademarks to strengthen trademark rights rather than destroy them. In fact, fluid trademarks that are recognizable riffs on the same underlying mark may well enhance consumer recognition of that source identifier. Absolut, for example, has established a broad scope of protection for its well-known bottle shape, which consumers recognize as an Absolut bottle by its outline alone. Brand owners who use fluid marks wisely can actually enhance the strength and protectability of their marks.
Best Practices
Basic trademark principles suggest a number of best practices to follow with respect to the conception, adoption, and use of fluid branding devices:
- Start with A Strong Mark: The most suitable marks for use as templates for fluid marks are strong, established marks with a history of use and strong consumer recognition. That way the public will understand the variant as a play on the underlying mark, enhancing the fame and strength of the original. Register the Underlying Mark: An official registration certificate can be particularly useful in the context of fluid marks because the interactivity of fluid marks invites others to come up with their own creative iterations. It is typically not necessary to register each variant of a fluid mark, but the essential brand pillars (e.g., the GOOGLE word mark and logo) should be registered if possible. Continue Using the Underlying Mark: Ongoing use of the underlying mark will keep it alive and avert litigation as to whether it has been abandoned. It will also establish that the brand owner's priority dates back to its first use of the underlying mark (or the date it filed an application to register the mark, if the application was filed on the basis of an intent to use), rather than first use of the new variant. Avoid Random Acts of Fluidity: Be fluid, be nimble - but don't be random. A dynamic brand identity should be relevant to the brand's mission, and the new presentations of the mark should retain the basic characteristics of the underlying mark. Consumers may also more readily identify the fluid mark when it appears in the same context in which they typically encounter the source identifier (like the Google logo on Google's home page or the blue sticker on a Chiquita banana). Adopt a Signature Style: It also makes good sense to be "fluid" in a signature style. For example, for years, The New York Times retained different artists to reinterpret in different media the distinctive logo of its T Magazine (a T in the same distinctive font as the "T"s in its masthead). Readers came to expect the magazine's logo to appear in different artistic interpretations, and that became part of its identity as a mark. Protect New Intellectual Property: The new matter in each variant of a fluid trademark may be protectable in its own right under trademark, copyright, design, or patent laws. Consider how best to protect it. This decision may depend on cost, the value of the new matter, how it is likely to be used in the future, and other factors that experienced intellectual property counsel can help to assess. Clear Rights in New Matter: Conversely, the new matter in a variant may violate someone else's rights, so brand owners should institute proper clearance procedures. Joan Miró's family, for instance, reportedly threatened a copyright infringement suit in response to a Google Doodle styled after the late painter's distinctive abstractions. Be Prepared: Fluid trademarks invite people to engage, and they probably will. Be prepared for fan use and parody. Terms of use may check some abuse, and some brand owners try to corral the energy and creativity of their fans by providing an authorized forum for submissions, such as an official contest.
Enforce Strategically: Brand owners need to consider how vigorously they want to police and enforce their marks in this context because they risk alienating their most loyal customers.
- Word demand letters carefully. Pick the right test case. Otherwise, this marketing strategy may backfire and permanently harm the brand.
Teamwork: Designers, brand managers, and intellectual property lawyers should work hand in hand from conceptualization of the fluid mark through the clearance, adoption, use, possible registration, policing, and enforcement of each iteration of the mark. Their common goals should be to do no harm, have some fun, and, by doing it right, enhance both the brand owner's intellectual property portfolio and the appeal of its brand.
Conclusion
Fluid marks offer unique opportunities for brand owners to deepen and broaden the emotional connections between their brands and consumers, but they also present unique risks from a trademark law perspective and therefore require strong brand stewardship. Successful use of fluid marks therefore calls for close collaboration between creative trademark lawyers and marketing teams who will listen to them (and vice versa). Done right, adopting a fluid trademark can enhance both the brand owner's intellectual property portfolio and the appeal of its brand.
Additional Resources
- Fluid Marks 2.0: Protecting a Dynamic Brand (Lisa Pearson 2013) How Fluid Trade Marks Can Enhance your Brand (Lisa Pearson 2008) For a collection of fluid mark exemplars and related resources, please visit http://pinterest.com/fluidmarks/. "Protect Your Fluid Trade Marks in Europe," Managing Intellectual Property 50 (Flip Petillon and Cedric Vanleenhove 2009) (examining the trend under European law) Logo Design Love (design blog with occasional articles on specific fluid marks, including DC Comics, IDC Congress, and others) The Future Is Fluid: Inside Dynamic Logos (Hexanine, posted March 9, 2011) (design blog article collecting examples of different "fluid identities") "If You Love Your Brand Set It Free," Smashing Magazine (Jose Martinez Salmeron, posted February 8, 2013)
