United States: Keeping it fluid in the United States

United States: Keeping it fluid in the United States

Fluid trademarks are a good strategy to capture the attention of millennials, but certain steps should be taken

Confident, self-expressive, diverse, technologically savvy, optimistic – just some of the adjectives commonly used to describe millennials, the newest generational cohort and the current apple of the marketing world’s eye. However, they are equally descriptive of fluid trademarks, a relatively recent development in the branding world. Fluid marks tap into the millennial psyche, appealing to the desire for personal connection, individuality and authenticity.

The longstanding credo of trademark law is that the strength of a trademark depends on consistent use. Use of the same mark, repeatedly depicted in the same way until it is seared into the consuming public’s mind as the source of a given good or service, has long been the gospel of trademark practice. Fluid marks defy this fundamental principle. A fluid trademark is one whose appearance changes frequently. Classic examples include the Google Doodle which often adorns Google’s homepage, Perrier’s 2006 campaign incorporating variant ‘…ier’ word marks on its iconic bottle and labels, and (Product) RED and Gap’s (RED) transformation/empowerment campaign.

Brands often undergo periodic revamping, usually to update and modernise their image. This usually involves a permanent change to a trademark’s appearance, with the previous version being permanently retired, except for nostalgia marketing purposes.

Fluid trademarks differ in that changes to the mark’s appearance are generally temporary. A specific iteration typically exists for a limited time before the mark returns to the underlying mark or transforms into another variation. If rebranding is the facelift of a trademark, use of fluid trademarks is like Botox – a temporary treatment which gives a brand the appearance of youthfulness and vigour without permanently changing the underlying trademark.

August 30 1998 – first Doodle (Google founders attend Burning Man festival)

August 26 2015 – start of the US Open tennis championship

Appeal of fluid marks

If one value defines millennials, it is authenticity – or at least the pursuit thereof. The hashtag #liveauthentic accompanies more than 6 million Instagram posts featuring images of scenic landscapes, latte art and pensive profile shots. These are the snapshots of the millennials’ professed genuine, uncompromised self. Insofar as a modern brand seeks to honour its consumers’ sensibilities, it also needs to express its own identity in a way that comes across as authentic.

Through modifying its trademark, a brand owner can connect with its consumers by engaging in the same topics and causes that interest them. For example, Google Doodles that celebrate holidays or current events, such as the start of the US Open Tennis Championship, message that Google is paying attention to the same things that its users are.

Though identified as a distinct group, millennials retain many of the same traditional values as Generation X and the baby boomers, according to the Pew Research Centre. Similarly, although they differ from traditional trademarks in important respects, fluid trademarks can be protected using many existing IP theories and mechanisms.

Although there is currently no method by which a brand owner can register a fluid trademark with the US Patent and Trademark Office so as to obtain protection for all variations in a single application, a trademark owner can still register underlying core marks and rely on a mixture of common law trademark rights, copyright protection or design and utility patents (Google Doodles being an example of a fluid mark protected by the latter). Given the short shelf life of most fluid trademarks, this combination of rights is usually sufficient protection in most situations.

Best practice for fluid marks

The main concern surrounding fluid trademarks is whether inconsistent use will undermine trademark rights or compromise the integrity of the brand. Will a fluid trademark confuse consumers with its shifting appearance? Will it weaken the distinctiveness acquired by a mark? Could the underlying core mark be deemed abandoned? What havoc could third parties wreak when inspired by fluid trademarks to make their own unauthorised variations of a mark? For the most part, these risks can be mitigated by following simple best practices.

Strong marks

Only a strong mark should be used as a fluid trademark. Using a weak mark as a fluid trademark creates the risk that consumers will be confused about the underlying mark or the relationship between the different variations. Like a parody, the play on a mark is effective only if consumers know and understand the reference to the original mark.

Protecting underlying marks

Because registrations for standard characters or word marks are not specific to any font, size, style or colour, a standard character mark will provide a wide scope of coverage.

Any valuable logo design should be registered as a matter of course. However, in certain situations, the underlying registration may also permit the tacking of rights to accrue to fluid mark variations.

Distinctive elements apart from a traditional word mark or logo, such as a background design or framing element which may be common to a fluid trademark and its variations, should also be registered if possible.

Continued use of underlying marks

It is critical that a brand owner continue to actively use the underlying mark to avoid a possible abandonment claim based on the later fluid marks. In addition to safeguarding the core brand, continued use of the original mark may allow a brand owner to tack priority rights in the fluid trademark variant back to the date of the underlying mark.

Variations on a theme

Brand owners should strive to maintain a degree of thematic consistency with regard to their fluid trademarks, making the same types of change to an underlying mark while preserving the original mark’s distinctive elements. For example, in the Absolut Blank campaign, while other design elements were changed, the iconic shape of the Absolut bottle was maintained in every variation.

Including the mandatory elements of a fluid trademark in a brand identity style guide is another way to help ensure that marketing and legal professionals work together. Executed systematically, a fluid trademark can serve to strengthen a brand, as consumers may come to identify the common denominator (in the case of the Absolut campaign, the bottle shape) as a separate trademark of the brand.

Protecting fluid trademark variants

As discussed, registering the separate variants of a fluid trademark is often neither practical nor necessary. The appeal of a fluid mark is that it is timely, relevant and temporary – attributes that are generally at odds with the relatively costly and lengthy trademark registration process, and the continued use required to maintain a registration. However, registration should be considered for any fluid mark variant that is highly valuable to the brand owner or will be used widely or for a length of time.

Even without registration, a variant may be protected by a combination of the following:

  • common law trademark rights;
  • tacking to an existing registered trademark;
  • copyright in the variant’s original expressive elements; and
  • utility and design patent law.
Clearance as usual

If at all possible, a fluid trademark variation should be cleared to ensure that it does not violate another party’s trademark rights. While this may be challenging, especially from a timing perspective when the variant is launched quickly or spontaneously, such clearance is important to avoid an infringement claim that could jeopardise what are often particularly important and visible branding campaigns.

Strategic enforcement

While imitation may be the sincerest form of flattery, this is not the case with trademarks. By their very nature as spontaneous, creative and interactive, fluid marks are particularly susceptible to third-party use, often by a brand’s own customers and fans. However, allowing third parties to create their own fluid mark variations, even if well intentioned, can weaken the strength of the underlying trademark or compromise a brand owner’s ability to enforce its trademark rights in the future.

Brand owners can prevent the proliferation of undesirable fan use or parody of fluid marks by creating an approved sandbox where consumers can safely interact with a mark (eg, official contests, apps or other submission avenues). The use of such authorised forums for co-creation enables a brand owner to crowdsource creative interpretations of its fluid trademark while simultaneously exercising control.

By all accounts, millennials are more cynical than previous generations and are especially sceptical of traditional advertising. Used properly, fluid trademarks can help to capture millennials’ attention, spark conversation and create the opportunity for deeper engagement by conveying a brand’s identity in a fresh, authentic and organic way.

Alexandra Nicholson
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Alexandra Nicholson is a partner at Davis Wright Tremaine LLP, where she concentrates her practice on trademark, copyright and other IP issues for many of the country’s leading media, entertainment and technology companies. Her trademark practice focuses on worldwide brand management protection and enforcement, transactions and strategic planning. Ms Nicholson has extensive experience in trademark selection, clearance, registration, maintenance, licensing, enforcement and litigation.

Christina Kim
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Christina Kim is an associate at Davis Wright Tremaine LLP, where she practises trademark prosecution and litigation. She counsels clients on trademark selection, clearance and registration, in addition to issues involving social media, advertising and publicity rights. Ms Kim also handles IP and commercial disputes and litigation, representing clients in state and federal court and before administrative tribunals.

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