Fluid trademarks are trademarks that change over a short period of time — not a careful, measured brand evolution, but a dynamic, shifting depiction of an identifiable trademark. For example, Absolut Vodka frequently utilizes its distinctive bottle shape as a platform for marketing campaigns that task artists and designers with creating unique variations on the underlying trade-dress-protected bottle shape, resulting in advertisements depicting the Absolut bottle as an Easter Island statue or an hour glass, as well as labels embellished with abstract paintings of New York City or stylized drawings of superheroes. In the digital realm, an example of successful fluid trademark use can be found in popular logo variants like Google® ‘Doodles’ — unique versions of the Google logo that commemorate holidays, anniversaries, and historical and cultural events.
Trademarks ordinarily derive strength from consumer identifiability, meaning how uniquely a word or design links a particular product to the source or producer of that product. Traditionally, trademark owners are counseled to use their marks in a consistent fashion to enable customers to automatically identify those marks with their source and the goods related to them. Abrupt and unmeasured changes to a mark can potentially weaken, dilute, or destroy the mark, narrow the scope of its protection, or subject the mark to the risk of abandonment or cancellation due to non-use.
Despite the risks posed by abruptly changing a mark, fluid trademarks are an innovative, engaging way for brand owners to connect with their consumer base. Their novelty commands attention, and their use can spur public interest and deepen consumer loyalty. In order to properly balance adequate trademark protection against the dynamic nature of fluid trademarks, the following measures are recommended when adopting a fluid trademark marketing strategy:
1. Ensure the Underlying Mark Is Suitable
The ideal candidate for fluid trademark treatment is a mark that is readily recognizable to consumers and/or a mark that is “famous.” To use Absolut as an example, consumers must be able to recognize that the bottle beneath an embellished label or within a stylized advertisement is identifiably an Absolut bottle. Similarly, Google can substitute dynamic Doodles for its conventional logo on a regular basis because the underlying mark is strong and easily identifiable to consumers. Consumers visiting Google’s homepage are generally well-aware of the services Google offers in connection with its mark, regardless of whether the day’s Doodle commemorates national women’s day or Maria Montessori’s birthday. In addition, Google’s Doodles consistently appear in the same location as the underlying Google mark, giving Google a “homepage advantage” that enables users to readily associate a given Doodle with the underlying mark, even when the visual connection is attenuated, as when Google adopts highly stylized Doodles to commemorate birthdays of modern artists like Jackson Pollock or Wassily Kandinsky.
2. Ensure the Underlying Mark Is Protected
To ensure adequate protection for a fluid trademark, the underlying mark should be protected via trademark registration whenever possible. In most scenarios, the strongest form of protection is also the simplest: trademark registrations for word marks that make no claim to design elements, stylization of letters or numbers, colors, or size will arguably give you the greatest flexibility in using variants of your mark. To return to the Absolut example, because Absolut has the right to use the underlying, unadorned vodka bottle shape, the company can generally embellish the bottle as it pleases without forfeiting its rights in the underlying trade dress.
3. Ensure the Underlying Mark Remains in Use
Although the search engine frequently substitutes its homepage logo for Doodles, Google is careful to ensure that its underlying mark is discontinued on its homepage only for a brief period of time and remains in use concurrently with the Doodles. By doing so, Google keeps the underlying mark alive, prevents claims that it has been abandoned, and preserves the right to rely on the underlying mark’s priority dates. Like Google, you can use fluid iterations of your underlying mark without forfeiting your rights in the underlying mark if you ensure the underlying mark remains consistently in use.
4. Consider the Field of Use and the Protection Available for Fluid Mark Iterations
To ensure that the material you’re thinking of adding to your underlying mark does not violate the rights of a prior user, it’s advisable to preclear the material before you adopt it in connection with your underlying mark. In addition, the fluid renditions of your mark may be protectable in their own right under trademark law or copyright law — the unique design elements of an Absolut vodka advertisement depicting the bottle as a ski jump or a robotic dog might be protectable independently of the trade-dress-protected bottle shape it incorporates. An intellectual property attorney can assist you in preclearing fluid trademark material, determining what elements of your fluid trademark are independently protectable, and helping you craft a strategy to protect those unique design elements.
5. Be Prepared to Take a Non-Traditional Approach to Trademark Protection
Fluid trademarks are increasingly a public art affair and frequently inspire public participation and third-party creativity. As a brand owner, you must be prepared to craft a careful, non-traditional approach to policing trademark use that simultaneously protects your trademark rights and guards against the risk of alienating consumers.
By ensuring the underlying mark is suitable, protected, and adequately used, and by considering the field of use, the protection available for fluid mark iterations, and the need for a non-traditional trademark protection scheme, you can retain trademark protection for the underlying mark while adopting an innovative, engaging marketing strategy through use of fluid trademarks. — Mary Witzel