INTA 2013: lessons on protecting fluid trademarks

05-05-2013

Protecting fluid trademarks, variants of original marks with a different appearance, was the topic of an interactive panel discussion at the INTA annual meeting in Dallas.

Google doodles are perhaps the best-known example of fluid marks, an increasingly popular and engaging phenomenon.

Branding around fluid marks is becoming more unconventional, according to trademark attorneys in Dallas, while their sophistication is increasing.

“This is largely unchartered territory,” said Lisa Pearson, partner at Kilpatrick, Townsend & Stockton LLP. “There are many, many new examples of fluid marks over the past five or six years.”

UK broadcasters Channel 4 and the BBC have both used fluid marks over many years, according to Flip Petillion, partner at Crowell & Moring LLP.

Pearson, who along with Petillion provided visual examples of various fluid marks, said they can enhance interaction between brand and consumer, “letting consumers bring meaning to the brand”.

She added: “We are seeing an evolution of what a trademark is. Trademarks are becoming conversation and like characters of a brand.”

But a lack of case law and rules along with regulations covering fluid marks means there are certain best practices for IP owners to follow, according to the attorneys.

Terri Chen, chief trademark counsel at Google, advised trademark owners to “start with a strong brand as your underlining mark, to ensure that the public will understand the variant. Have a foundation”.

“Register the underlying mark, as it may not be practical to register every single variant, especially as they have a very short shelf life,” she said. “Definitely register the underlying marks, and maybe the variants.”

Chen added that brands should avoid “random of acts of fluidity”.

Trademark owners should think carefully about which jurisdictions matter to them, Petillion said, as they might only be active in a few countries. “The fluid mark is meant to be temporary, and registering several variables may be very expensive.”

He added: “There may be alternatives to registering variants – such as common law rights. We must have the guts to move from trademark protection and protect the variant using copyright (if possible).”

Going further, Pearson said fluid marks may be protected by design and patent laws, and that brand owners should “be creative and think across different IP fields”.

Petillion warned to “be prepared for fan use and parody”, adding that reacting immediately is ill-advised because the trademark user may be a customer and may not have used it for a significant period of time.

As the final piece of advice, Chen said companies should think about providing an authorised forum for suggestions about new fluid marks, noting that Google is running a competition for students asking them to create their own doodle. “The voting is still open,” she said.

This article was first published on 06 May 2013 in World IP Review

fluid trademarks, lisa pearson, terri chen, flip petillion, google doodles

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