Trade Dress

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

• Nestle Cannot Trademark the Shape of the Kit Kat Bar

Britain’s High Court did not give Nestle a break. The court ruled that Nestle cannot trademark the “shape of a four finger chocolate coated wafer” that is reflected in the company’s Kit Kat bar. Nestle filed for a United Kingdom trademark protecting the shape in 2010. In a battle between Nestle and Cadbury that has been raging since then, the court determined last week that Nestle’s trademark cannot be registered.

Nestle’s attempt to trademark the shape of the Kit Kat bar has faced issues surrounding the acquired distinctiveness of the shape. The shape of the Kit Kat bar does not inherently distinguish it from another product. In order to obtain trademark rights to the shape, Nestle must show that the shape has acquired distinctive character.

The High Court found that to demonstrate that a trademark has acquired distinctiveness, the applicant must prove that a significant portion of the relevant consumers perceives the relevant goods as originating from a particular entity because of that trademark on its own, and not because of any other trademark which may also be present. Here, the shape of the Kit Kat bar, while it may be generally well-known and recognizable, is not used by consumers to identify the product in the store before they purchase it.

Instead, consumers rely on the Kit Kat name and logo when making purchases. The shape of the candy bar is only visible to consumers after they take the treat home and open the wrapper. Additionally, Nestle did not provide evidence to the High Court that the shape of the chocolate bar has been featured in Nestle’s advertising for a long period of time or that the shape was featured on product packaging. Thus, the evidence Nestle presented to demonstrate acquired distinctiveness was not enough to prove distinctiveness in the shape itself.

Nestle intends to appeal the decision of Britain’s High Court.

The company will likely present new consumer surveys specifically tailored to address the evidentiary issues that the High Court highlighted in its determination. However, Nestle may still face hurdles as it is unclear whether other products on the market have featured the same shape and whether consumers have thought that such products are Kit Kat products, which will likely factor into the acquired distinctiveness determination.

U.S. trademark law has similar acquired distinctiveness requirements for product design. Hershey, the company that makes Kit Kat for the U.S. market, has secured federal registration of trademarks in the shapes of both the Hershey’s chocolate bar squares and Hershey’s Kisses. While Kit Kat’s advertising in the U.S. may emphasize the breakable pieces of the candy bar, the same may not be true for the brand’s U.K. advertising.

This is not the first time rivals Nestle and Cadbury have come to blows over trademark issues. Previously, the parties were embroiled in litigation that ultimately blocked Cadbury from trademarking its signature shade of purple. Cadbury now intends to break off a piece of the market by producing a candy bar similar to the Kit Kat. — Rina Van Orden