Are you contemplating dressing up your trademarks for the holidays? Adding a jaunty Santa hat and garlands to your company name on your website and shopping bags? Animating your logo to spin like a dreidel or fly like Rudolph? Maybe adorning your word marks with candy cane stripes? Using your trademarks to embrace the holiday spirit can freshen your brand image, infuse it with energy and differentiate it from your competitors. 

Generally, marks are static and gain strength through consistent use in the marketplace. But this orthodoxy has recently been challenged as competition among brands for consumer attention is increasingly intense and technology permits easy variation. Several famous brands have successfully experimented with variations in their marks. These variations are dubbed “fluid marks” because they differ from periodic updates to modernize a logo or changes in a color scheme, for example.

Some examples of successful fluid marks are ornamented marks (e.g., the Google doodles), framed marks (e.g., the MTV Logo and the Chiquita banana sticker), changed backgrounds (e.g., the Nickelodeon “splat” logos), and ever-changing designs (e.g., the Saks Fifth Avenue tiles). All of these brands have successfully “riffed” on their core marks, increasing brand awareness and consumer interest.

You too can join the wave. To avoid problems and keep your holidays merry, consider the following best practices for dressing up your trademarks for the holidays:

• • Create a fluid mark from an underlying brand that already has strong consumer recognition, such as a federally registered mark or your key brand. 
  • Ensure that the variation is a recognizable “riff” on the underlying mark by retaining its basic characteristics. 
  • Also, continue to use the underlying mark (or key elements of the mark) in a consistent manner. 
  • Clear rights in the new material in your “riff” to avoid violating the rights of another party. 
  • Develop a thick skin and a consistent enforcement policy that will not alienate consumers, as fluid marks by their nature invite engagement through consumer comment, use and parody. Be prepared to take a practical view when deciding when to enforce your rights against infringing targets.
  • Consult with your IP counsel to determine whether registering the variation may be desirable or feasible and whether you can rely on the protection you already have for the underlying mark or if you need other forms of protection, including copyright.
  • Ensure that your fluid mark does not undermine the foundation of your brand.  The “riffs” should enhance rather than detract or distract from your core brand attributes.

© 2013 Perkins Coie LLP