Monthly Archives: April 2013

Like Water For Trademarks: “Fluid” Marks Take Shape


“So, if you’re tired of the same old story, oh, turn some pages.
I will be here when you are ready to roll with the changes.”  Roll With The Changes,” REO Speedwagon.

A few weeks ago, a colleague asked me if I could take her place speaking on a panel about “Fluid Trademarks.”  My first reaction, expressed  silently to myself–“What in the world is a “fluid trademark?”  My second reaction, expressed out loud and with utmost confidence–“Fluid Trademarks? Sure, I’d be happy to fill in for you.”   I figured, “I’m an experienced trademark guy.  I’ve  been an adjunct professor of trademarks at two Washington DC law schools. How hard could it be?”  And, my colleague and I, along with three other trademark lawyers, were about to start our own boutique law firm specializing in trademark law.  So accepting a speaking gig would be good exposure for the new firm–Kelly IP, LLP–which we launched on April 29.  [Check us out at

I began to tap into my brain’s logic center, hoping that I could solve the “fluid trademark” conundrum through sheer force of mental exertion.  I knew that trademark law protected far more than just names like “Amazon,” logos like Ford’s “Blue Oval,”  and symbols like McDonald’s  “Golden Arches.”  Protectible marks include color, like Owens Corning’s  pink for fiberglass insulation, sounds, like the roar of MGM’s lion, product shapes, like that of the iPod, and even the decor of restaurants, such as Fuddrucker’s.  Did “fluid trademark” refer to protection for clear, viscous substances, like motor oil or the irradiated, pulsating  ectoplasm of a lava lamp?

Fortunately, before my mental gymnastics led to a brain sprain, I summoned a Google web browser.  And the answer was staring me in the face.  The conventional multi-colored GOOGLE logo had morphed into a whimsical design, like the one above commemorating Valentine’s Day and the birthday of George Ferris, inventor of the Ferris Wheel.  A quick web search on Google itself confirmed what quickly had become self-evident.  GOOGLE is the quintessential  “fluid trademark.”  Without abandoning its primary mark and logo, from time to time–and for one day only– Google swaps its conventional, static mark for a colorful, whimsical, and often dynamic alter-ego.  As described on Google’s website, these  “Doodles are the fun, surprising, and sometimes spontaneous changes that are made to the Google logo to celebrate holidays, anniversaries, and the lives of famous artists, pioneers, and scientists.”

 Google began tinkering with its logo in 1998, even before the company incorporated.  According to Google lore, “founders Larry [Page] and Sergey [Brin] played with the corporate logo to indicate their attendance at the Burning Man festival in the Nevada desert. They placed a stick figure drawing behind the 2nd “o” in the word, Google, and the revised logo was intended as a comical message to Google users that the founders were “out of office.” While the first doodle was relatively simple, the idea of decorating the company logo to celebrate notable events was born.” 

The public’s appetite for and delight in Doodles grew, leading Google to assign a team of designers to come up with events and achievements to commemorate by adapting Google’s trademark in what has now become a “trademark” style of innovative variation.  So far, over 1,000 Doodles have graced Google’s homepage since Larry and Sergey created their first “out-of-office” graphic message.

From that somewhat random origin, the so-called “fluid” trademark has become not merely a fad; they are the wave of the future.  As one commentator, Lisa Pearson of Kilpatrick Stockton LLP,  puts it, “the most innovative companies are adopting fluid trademarks.”  That’s no doubt because fluid trademarks are eye-catching, flashy, fresh, and interactive.  They clearly are a marketers delight–building consumer interest and brand loyalty.

But is “fluid” necessarily good from a trademark law perspective?  Fluid marks certainly buck conventional wisdom, which holds that trademarks should remain the same, consistent, and dependable.  Although they may evolve to fit the times, as did Betty Crocker and Colonel Sanders, those evolutionary changes unfold gradually, and stay in place for decades.  But a mark that can change overnight on a designers whim?  Ask a trademark lawyer 20 years ago whether fluid trademarks make a brand stronger or weaker and she’d almost certainly blanche at even the thought of tinkering with a brand’s image as bravely and brazenly as Google and other companies have been doing.  (Other notable fluid marks include, well, a couple of fluids–Absolut Vodka, whose variations on its bottle theme helped define a new era in liquor branding; and Perrier, which temporarily replaced its name with provocative words “Sexier, Crazier, Flirtier, and Sassier,” all in Perrier’s signature script:

But the trend towards “fluid” trademarks has been inexorable, even as it might give trademark purists heartburn.

So what are brand managers and the trademark lawyers who love them supposed to do?  Work together.  Make sure that fluid marks conjure up the original mark–that they are, as Lisa Pearson puts it, “recognizable riffs” on the underlying mark.  Make sure the original mark also remains in use, and is not discontinued for any appreciable amount of time. (Dropping a mark for an extended period can give rise to claims that it has been abandoned). 

Reserve “fluidity” for strong brands with strong recognition–brands that, like Timex, can take a lickin’ and keep on tickin’. ( It does little good to tinker with lesser known brands if consumers might not recognize their “fluid” cousins) 

Don’t throw out the baby with the bath water–keep what works, and make sure the variation play off the mark’s basic characteristics. 

Consider protecting the variation through copyright registration, when appropriate. Besides serving as trademarks du jour, Google’s Doodles are works of art and subject to copyright.  Google, in fact, has an online store where it sells posters and other articles featuring its various Doodle designs. 

And last, be gentle with the public if, as may be inevitable, fluid marks inspire imitation and parody as sincere forms of flattery.  Nothing can tarnish a brand faster than a heavy- handed enforcement campaign directed against loyal customers.  If there is no alternative to litigation, be sensitive to the public relations angles, and choose the defendant carefully. 

My education on fluid trademarks is hardly complete.  There are nuances and subtleties to rolling out and protecting a succesful “fluid” trademark campaign that remain to be discovered.  But so far, innovative brands like Google, Absolut, Perrier, and others who have dared to defy conventional wisdom, have energized their trademarks while captivating the public’s imagination.  Any guess about what Google’s next Doodle wil be?

QUOTE OF THE DAY: “If we don’t change, we don’t grow.  If we don’t grow, we aren’t really living.”  Gail Sheehy

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Seeing Red: When It Comes To Ketchup There’s No Contest

Ketchup bottle“Anticipation. Anticipation. You’re making me wait. Keeping me waiting.” Anticipation by Carly Simon.

Back in the day–before plastic squeeze bottles with wide plastic tops let gravity do its work–coaxing ketchup from the bottle took patience, elbow grease, and courage. You never knew whether your insistent slapping of the bottom would propel the rich tomato red condiment–not quite a paste but hardly a sauce–strategically on the burger and fries as intended, or wildly on shirt and pants (the likelihood of misfiring being directly proportional to the amount of white being worn). And there was only one brand of ketchup worth risking that humiliation–Heinz Tomato Ketchup.

Recently, I heard about a new, hip restaurant boasting about its house-made ketchup. My reaction? Why bother? It can only lead to heightened expectations that are sure to be dashed when the homemade stuff just doesn’t measure up.

How could it?

To quote Carly Simon again: “Nobody does it better.” Heck, for years Heinz was really the only “ketchup.” Its main competitor in the tomato wars, Hunt’s, didn’t dare call its rival product ketchup, settling instead for the woefully weaker term “catsup.”

And let’s face it, if forced to choose between something with the sturdy, no-nonsense name “ketchup,” and the something else that made you sound like you spoke with a lisp, there really wasn’t much of choice at all. Not even Fred MacMurray and his three sons welcoming us to his home for Huntz could make buying catsup palatable

Last Sunday night, on “Mad Men,” the AMC drama about 1960s mores, morals, or lack thereof set in an advertising agency, leading man Don Draper and his team vie against his former protege, Peggy Olsen, for the lucrative Heinz ketchup account. It's a heavy weight bout waged in secret, because the Heinz guys are shopping for a new firm on the sly. Both Draper and Olsen create inventive presentations centered on the singularity of Heinz, the one true ketchup. A generic term so synonymous with its brand name that there is really no substitute, only disappointing also-rans. Today, salsa has supplanted ketchup as the best-selling condiment. But no watery tomato dip, whether spicy, medium, or mild, can ever replace Heinz ketchup as an iconic American condiment brand. Because Heinz=ketchup, and ketchup=Heinz. Everyone is else, from Hunt’s to Del Monte, has always been playing, well, catch-up.

QUOTE OF THE DAY: “The fashion industry isn’t merely content to encase my meaty flanks in skintight denim. Oh, no! That denim also has to be white, a color that attracts ketchup, wine, garlic aioli, and any other foodstuffs I might otherwise be able to enjoy if I wasn’t wearing ridiculously tight pants.”
Diablo Cody

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Reselling MP3s? RiDigi-lous, Judge Rules

“They took the credit for your second symphony. Rewritten by machine on new technology.” “Video Killed The Radio Star” by The Buggles.

I’ve spent many happy hours browsing through the bins of second-hand record stores. Used LPs and CDs–some rare, some foreign, some familiar, all at bargain prices–what’s not to like? And all made possible by a provision of U.S. Copyright law called the “First Sale Doctrine.” That’s the same First Sale Doctrine that the Supreme Court recently interpreted in Kirtsaeng v. John Wiley & Sons, which was the subject of a post on this very blog. In that case, the High Court applied the First Sale Doctrine to textbooks purchased abroad and shipped to the States for resale here. The First Sale Doctrine also applies to recorded music, or what the Copyright law calls “phonorecords.” Under the doctrine, when you pay for a record, a cassette, or a cd, you have the right to do what you wish with it–play it endlessly, use it as a coaster or doorstop, and sell it to others. And you can do all that without getting permission from the copyright owner. The first sale “exhausts” the copyright, leaving the purchaser free of copyright restrictions if he or she tires of it and wants to sell it. But making more copies is another story– the First Sale Doctrine does not permit that. If it did, we could all go into the record business, copying our Beatles and Mumford and Sons CDs for fun and profit.

But the music business has changed–as we all know from the explosion of iPods, iPhones, Androids, and The Cloud. Today, many, if not most, music consumers get their music digitally, in the form of MP3s. So does the First Sale Doctrine apply in the new digital frontier?

That’s the issue that a Federal Court grappled with in the case of Capitol Records v. ReDigi Inc. As NPR reported today “ReDigi is basically a digital version of a used-record store. You can sell the company your old MP3s, and you can buy “used” MP3s that other people have sold. ReDigi says its technology ensures that the person selling a used MP3 can only sell it once and can’t keep listening it after it’s been sold.” In ReDigi’s view, the First Sale Doctrine should be an equal opportunity provision that protects ReDigi as much as it protects the Record Annex in you local strip mall.

Capitol Records wasn’t buying ReDigi’s tune. In the lawsuit, it argues that MP3’s aren’t the same as records and cds. According to the record company, you can’t transfer an MP3 without making a new copy–and doing that is no different from copying a CD or LP and reselling it–it’s copyright infringement, the label contends.

According to NPR, the case raises such existential questions as:
“Do you really own something if it’s just a bunch of ones and zeroes on your computer? If you take a digital song and you move someplace else, did you actually move it or did you just make a copy and destroy the original?”

To answer these vexing questions, the court boldly went where few courts have gone before, to Star Trek:

THE COURT: I kept thinking about this, but — I’m not a Trekkie, but I kept thinking it’s the difference from Captain Kirk going from the Enterprise to the planet through that transporter thing, where he’s not duplicated, to the cloning where there’s a good and a bad Captain Kirk where they’re both running around. I think one is a copy and the other is — the other was transported and it’s only one Captain Kirk.

MR. MANDEL: Right. And, you know, that’s part of the problem we have at a basic level because it’s not Star Trek here, and I don’t think they’re really saying —

THE COURT: Wouldn’t it be cool if it were?

Ultimately, the Court sided with Capitol Records, ruling the First Sale Doctrine doesn’t apply to ReDigi because the digital music files it handles don’t just change hands like a CD, but are copied.

The judge did not categorically rule out the First Sale Doctrine for digital works; he concluded however, that
the doctrine only protects the sale of that ” ‘particular’ phonorecord, be it a computer hard disk, iPod, or other memory device onto which the file was originally downloaded.” As NPR put it “in other words . . . you can sell your old MP3s — as long as you sell them along with whatever device you used to download the MP3s in the first place.”

ReDigi plans to appeal the ruling. They also say they’ve got the new technology that solves their First Sale problem.

So stay tuned–perhaps there will be a secondary market for MP3s after all. Then, someone will have to invent a way to replicate the joy of browsing through dog-eared LPs while inhaling the musty air of a brick and mortar second-hand record store. That challenge might stump even Mr. Spock.

QUOTE OF THE DAY: “Now Mr. Spock, there’s really something about all this that I don’t understand, so maybe you could explain it to me, logically of course…” James T. Kirk, Star Trek.


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Facebook Crosses the Timeline–Must Stand Trial For TM Infringement

“I was glad to come, I’ll be sad to go, so while I’m here I’ll have me a real good time.” “Had Me a Real Good Time” by Faces.

In 2011, Facebook, the social network site that changed the way an entire generation communicates and socializes, introduced “Timeline,” a feature that Facebook said would let users “tell your life story.” It’s been described as “a radical new profile page design that . . . changes the default profile from a list of your most recent updates to a complete summary of your entire life since birth.”

From the start, Facebook’s Timeline faced controversy, mostly from Internetizens worried that it was just another way for Facebook to sell their personal data to advertisers. Others feared that Timeline could encourage identity theft.

Now, however, Facebook finds itself accused of identity theft of a different sort–trademark infringement.

Facebook is no stranger to litigation, as dramatized in The Social Network, the film recounting Facebook founder Mark Zuckerberg’s legal skirmish with Connect U and its founders, the Winklevoss twins.

This time, the plaintiff is not the Winklevii, but a company named Timelines, Inc. Timelines claims that Facebook’s use of the similar name “Timeline” infringes Timelines’s prior trademark rights.

In The Social Network, Zuckerberg fought against the Harvard elite. Now his company is fighting against the notion of anyone owning exclusive rights in the word Timeline. Attempting to avoid a trial, Facebook asked the court to rule that “Timeline” is generic for a service that displays events about a person or history in chronological order. Generic terms can never be trademarks and must remain free for everyone to use.

Timelines countered that its name is not generic at all, but rather, is a distinctive trademark for its business, which it describes as “the first web site that enables people . . . to collaboratively record, discover and share history.” Today, for example, the Timelines website mentions that “The Great Gatsby” was published on this date in 1925.

On April 1, a federal judge sided with Timelines, at least for the time being:
“At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, ‘timeline(s)’ has acquired a specific meaning associated with plaintiff.”

The case now heads to a trial, where a jury will decide whether Facebook has crossed the line–Timeline that is.

The case is Timelines Inc. v. Facebook Inc., 11-cv-06867, U.S. District Court, Northern District of Illinois (Chicago).

QUOTE OF THE DAY: “So we beat on, boats against the current, borne back ceaselessly into the past.”
― F. Scott Fitzgerald, The Great Gatsby

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Life Imitates Life? Two New Books–Same Title

“Old Friends, Old Friends, Sat on their park bench like bookends.” Paul Simon, “Bookends.”

It’s always a welcome event when a gifted writer releases a new work of fiction. Recently, two highly regarded authors–Jill McKorkle and Kate Atkinson– did just that. Atkinson’s book grapples with such themes as birth, death, and reincarnation in a narrative that Entertainment Weekly calls “audacious.” McKorkle’s novel, set in a North Carolina retirement home, focuses on the intersection of life’s end and memories of the past. EW praises it as “vividly voiced.”

Both books share more in common than glowing reviews. They are both titled “LIFE AFTER LIFE.”

Leaving aside the author’s achievements, the coincidence of two new books being released by established publishers under the exact same name raises an obvious question. Surely, two consumer products companies would not simultaneously release a new soap, toothpaste, or cell phone under the same name. So “Wha’ Happened?” (apologies to Fred Willard’s character in Christopher Guest’s folk music parody “A Mighty Wind.)

Companies that make products or offer services can protect their names as trademarks. They can reserve those names by applying for a federal trademark registration. They can search records at the U.S. Patent and Trademark Office and the Internet to see what names have already been taken. And, if they are the first to reserve and use a name, they can block others from copying it.

Book titles, however, are treated differently. Generally speaking, they are not trademarks, but rather, they’re, er, just book titles. Trademarks identify the source of a product, while book titles, er, are just the name given to a book. (The source of the book is the publisher and author.) And while copyright protects the contents of a literary work, copyright protection doesn’t cover the title on the book’s cover.

Sure, if a book has been around for years, sells lots of copies, and becomes well known, its title can earn trademark-esque status. Hard to imagine anyone calling a novel about a hurricane “Gone With The Wind” and getting away with it. Also, the title of a series of books (e.g., The Hunger Games, Goosebumps, Harry Potter, Chicken Soup, For Dummies, etc.) can be registered as a trademark.

But new book titles are pretty defenseless, like, er, the newborn and geriatrics in this tandem of “Life After Life” novels!

QUOTE OF THE DAY: “Of course you don’t die. Nobody dies. Death does not exist. you only reach a new level of vision, a new realm of consciousness, a new unknown world.” Henry Miller

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All That Glitters . . . German Court Says No to Golden Easter Bunny TM

“Gone too far, I’m gonna wake, Gone too far.”  Gone Too Far, Eddie Rabbit

In a ruling reported by NPR Friday,, a German court rebuffed an attempt by Swiss chocolate giant Lindt  to corner the market on chocolate Easter Bunnies wrapped in gold foil.  Claiming exclusice trademark rights in this popular Springtime treat, Lindt began targeting smaller confectioners.  Many capitulated. 

But one company, Confiserie Riegelein, would not retreat to its rabbit hole; it battled Lindt all the way to a German court of appeals. Riegelein’s main argument was quite simple–Lindt couldn’t trademark Golden Easter Bunnies because, for over 50 years, the number of companies putting out these seasonal treats had multiplied like, well, rabbits. 

As reported by NPR, Riegelein is pleased with the outcome:  “The sitting gold-wrapped bunny has been a firm part of our offering for at least a half century,” Peter Riegelein said, according to The Guardian. “Now it is finally clear that it can stay as it is.”

Lindt, however, signalled that the fight would go on long after rabbit season ends.  In a statement issued on the tail of the German court’s ruling, Lindt said: “We will continue to defend our Lindt gold bunny in the future whenever necessary,”

But even before its next at bat, Lindt now has at least one strike against its trademark claim. 


 Elmer Fudd: [to Bugs as a game warden] Oh, Mr. Game Warden. I hope you can help me. I’ve been told I could shoot wabbits and goats and pigeons and mongooses and dirty skunks and ducks. Could you tell me what season it weawwy is?
Bugs Bunny:   Why, coitenly, me boy. It’s baseball season!


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