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Fluid Trademarks: Will Companies Go With the Flow?

Consistency and repetition are important in building a brand.  Or are they?  The digital economy is evolving so quickly that it has pushed brand owners to challenge trademark fundamentals by adopting trademarks that evolve as well.  Proponents of such shifting trademarks, called “fluid” marks, believe that they attract the attention of potential consumers, increase brand awareness and maintain the interest of existing consumers in an accelerated marketplace.  Beyond the occasional update that a brand owner might traditionally make, say, every decade, a fluid mark changes regularly, even every day.  But fluid trademarks, although becoming more prevalent, create particular risks for the brand owner.

Fluid trademarks share the same characteristics as traditional trademarks:  they can be a word, phrase, symbol or design that identifies and distinguishes the source of a product or service.[1] Unlike conventional trademarks, however, fluid trademarks change over time to freshen the brand, and can involve recasting the colors or merging images to keep consumers engaged.  These variations typically retain certain features of the underlying mark, but include new design elements.[2]  The “Google” mark is a classic example of a successful fluid mark.  On its home page, Google uses a variant of its “Google” mark, otherwise known as a “doodle,” to commemorate holidays or celebrate other events of significance.  For example, on the 30th year anniversary of the arcade game Pac-Man, Google’s homepage depicted an interactive Pac-Man game that featured a Pac-Man maze to form the letters of the mark “Google.”[3]  Similarly, many would recognize the distinctive bottle design of the Swedish vodka brand “Absolut,” which has long been depicted to feature various designs and concepts while maintaining its overall shape and impression.[4]

Historically, periodically updating a company brand has been a typical step in keeping the brand current.  It is unusual (but not unheard of[5]) for a company to retain the original stylization of its mark over the years.  However, in the constantly evolving marketplace of the Internet, fluid trademarks give companies the opportunity to quickly modernize their brands and stay relevant.[6]  Marketing specialists believe there is a novelty associated with creating something unexpected.  Fluid trademarks, the thinking goes, can bring greater awareness of the brand, potentially leading consumers to recognize the brand as imaginative or dynamic.[7]  Reinterpreting or redesigning a mark in different formats while maintaining its original elements can actually bolster rights in the original mark, some commentators say, because presenting the mark in different formats can create an expanded commercial footprint, making the trademark stronger.

While there may be an appeal to using a fluid trademark from a marketing perspective, however, such use is not without risk.[8]  For example, to maintain protection in a trademark, an owner must make ongoing use of the mark.  If a mark is so “fluid,” if it shifts so much that the original mark is no longer recognizable, the mark owner could lose protection in the original mark.  For instance, a fluid mark that is modified too much could give rise to a petition to cancel the mark as registered in its original form, or even an abandonment claim, for failure to use the mark in its original form.  In 2009, for example, Google celebrated Jackson Pollock’s birthday with a doodle that obscured the distinctive “Google” mark with expressionist drips of paint much like Pollock’s own.[9]  If Google had not maintained ongoing use of its original mark concurrently with its Pollock doodle, it could have run the risk of losing rights in its mark since the “Google” mark was essentially unrecognizable in the doodle.[10]

Other factors make fluid trademarks an unwise choice for some companies.  Fluid trademarks are risky for companies with unfamiliar trademarks because consistency and repetition do indeed help strengthen the market awareness and recognition of the mark.  Similarly, if a mark is weak (that is, the same or a similar term is already in use by others for similar products), depicting it inconsistently renders it weaker.  The more a company strays from its already weak mark by using it fluidly, the less likely consumers will come to recognize that mark as representing the brand owner’s products.  Similarly, modifying the mark’s use in too many different formats can potentially lead to “scope creep,” meaning that the trademark is eventually stretched far beyond its original vision,[11] a version that the brand owner presumably incurred costs to build.  In short, allowing uncontrolled “evolution” of a brand could result in a loss of the financial investment incurred in building awareness of the original brand in the first place.[12]

In view of these risks, using a fluid trademark should not be random, but should be a result of a deliberate marketing strategy.[13] Companies can use several mechanisms to try to avoid running into any of the negative consequences of using fluid trademarks.  First, in modifying the mark, companies should keep the important elements from the original, “base” mark visible so the customer will associate the base and modified marks with one another.  Put another way, it is important to ensure that key concepts or design elements run through all the variations of the mark.[14]  For example, color is commonly considered an important element in creating a consumer’s impression of a mark,[15] and thus maintaining the colors of the base mark in a fluid mark is one way to maintain recognition (much as Google typically maintains its distinctive primary colors in its doodle).  Second, companies should always continue using the base mark (even when they also use that mark in a fluid format) to avoid a cancellation or abandonment of the base mark.  Third, companies should monitor their own internal use, discourage arbitrary modifications, and continue to police potential third party infringement of the mark.  If companies observe these suggestions, while following the same general best practices applicable to traditional trademarks, a fluid mark need not cause a flood of legal issues.

[1] Trademark, Patent, or Copyright?, U.S. Patent and Trademark Office (Dec. 23, 2011), https://www.uspto.gov/trademarks-getting-started/trademark-basics/tradem....

[2] Perry Viscounty, Jennifer Barry & David Hazlehurst, Fluid Trademarks: All Fun or Some Risk?, Intellectual Property Today (Feb. 2014), https://www.lw.com/thoughtLeadership/fluid-trademarks-all-fun-or-some-risk.

[3] See Doodle Archive, https://www.google.com/doodles/30th-anniversary-of-pac-man.

[4] https://www.smartinsights.com/online-brand-strategy/international-market...

[5] https://www.vanityfair.com/news/daily-news/2013/12/15-iconic-american-br...

[6] Id.

[7] Id.

[8] Fluid Trademarks: Keeping Them Watertight, Trademarks and Brands Online (Jan. 1, 2014), https://www.trademarksandbrandsonline.com/article/fluid-trademarks-keepn....

[9] Id.

[10] Id.

[11] Sylvia Moses, Scope Creep in Project Management: Definition, Causes & Solutions, workamajig (May 24, 2018), https://www.workamajig.com/blog/scope-creep.

[12] Id.

[13] Fluid Trademarks: Keeping Them Watertight, Trademarks and Brands Online (Jan. 1, 2014), https://www.trademarksandbrandsonline.com/article/fluid-trademarks-keepn....

[14] Id.

[15] Jill Morton, Why Color Matters, Colorcom (2005), https://www.colorcom.com/research/why-color-matters.

Co-Authored by Katherine Sharpless 

© Copyright 2019 Squire Patton Boggs (US) LLP

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About this Author

Caroline H. Mead, Squire Patton, trade secret lawyer, unfair competition matters attorney
Partner

Caroline Mead’s practice focuses on intellectual property, with particular expertise in technology transactions, trademark, copyright, trade secret and unfair competition matters.

Caroline has worked with clients in a wide range of industries including software, hardware, semiconductor technology, biotechnology, pharmaceuticals and information technology. She is the former chair of Squire Patton Boggs’ software practice group and was among the first lawyers to provide comprehensive legal counsel to the multimedia, online and wireless industries...

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