Trademark search, infringement, due research, etc.: are often heard in the context of a large number of trademark disputes between companies. The disputes occur because the brands do not shy away from the promotion and protection of their trademarks in their commercial businesses. The primary intent of a company behind possessing a trademark is to accord a distinctive identity to its products and/or services. Now, it is a well-known fact that customers rely more on the quality of a product or service before spending money on them. The distinctive identity of a brand (due to a trademark) allows people to make their preference order amidst many brands which are present. In short, a trademark represents the owner of the particular product, hence the owners are usually vigilant about trademark infringement, as it poses a threat to the goodwill of that particular brand/product, and can potentially lead to a state of confusion between the customers.
Due to the same reason, two of the biggest names in their respective industries: The Toronto Raptors and Monster Energy got into a dispute on trademark infringement. The dispute between ‘Toronto Raptors’ and ‘Monster Energy’, which began in the year 2015 has finally come to an end in May 2021. The Trademark Trial and Appeal Board (TTAB) has decided in favor of the Toronto Raptors, although the trademark on the 3 jagged vertical lashes (seemingly claws) would be retained by Monster Energy.
About the case
In the year 2014, the Toronto Raptors (one of the most renowned teams of the NBA) came to the court with a slightly different logo. Since its inception, the Raptors have been using a logo that had independent claws beside a basketball. However, it modified the logo which now had claws within the basketball. To this, Monster Energy (one of the most recognised companies for sports drinks) filed a trademark opposition suit in the year 2015: the primary contention of their suit is that the new logo of the Raptors will give room for the likelihood of confusion between the marks of these two giants. As per Monster Energy’s claim, the new logo of Raptors had clawed-up basketball, and the claws were almost identical to the M-Claw mark used by Monster Energy. Monster Energy filed for the likelihood of confusion under the same section, where it alleged that the similar appearance of Raptor’s new logo is bound to create confusion among the customers. However, the board held that even when the mark of Monster Energy is commercially strong and recognised enough in the market for confusion, the marks, in this case, were significantly different in appearance, meaning, and commercial impression. The rationale used to determine this has been used earlier in the case of, Kellogg v. Pack’em, where the board decided that even if the word ‘FROOT’ was common, it was not capable of creating confusion in the market. Monster Energy, in this case, also claimed that the confusion between the marks will lead to the dilution of its M-Claw mark. One such important point which was required to be proved was the M-Claw mark’s recognition by the general consuming public, in short, the mark being famous, or commercially strong. In this case, although the commercial strength of Monster Energy was recognised, it was held, at the same time that its mark possesses niche fame. Therefore, the contention of dilution is precluded, as it did not satisfy the point of ‘general consuming public’.
This case, apart from the usual discourse of Intellectual Property Rights (IPR), has provided room to discuss an important topic: The concept of a fluid trademark.
The concept of Fluid Trademark
At the end of this case, the board decided in favour of the Raptors, although the trademark was retained by Monster Energy. The judgment involved modifications in the prior claw’s mark, and had the Raptors proved the continuing commercial identity, they could have claimed broader protection under something, which is known as ‘fluid trademark’.
Be it Halloween day or World Environment Day, Google will modify its logo (known as Google Doodles) as per the theme to make its page more interactive, with a subtle message in place. This is a recent trend, which emerged as an effect of this digital era where companies are constantly evolving their marketing strategies in order to draw the attention of people. This grew even more rapidly with the advent of COVID-19, where several brands have modified their respective logos to spread the message of taking precautions and staying safe during this crisis. However, these companies are not required to file for new trademarks for their modified logo(s). The term used to describe such an instance is ‘fluid trademark’. Fluid trademark has been a relatively newer development in the field of IPR, with a void in the regulatory sphere concerning its filing. For definition: Fluid Trademarks are marks that change over time (with respect to the original or registered mark), to increase customer engagement across the market. This concept came into existence post the discussions on Morehouse defence (along with Section 43(a) of Lanham Act). It is an equitable doctrine that applies when an applicant owns a prior registration “for essentially the same (or substantially similar) mark and goods or services, and for which registration has not been challenged”. Although this doctrine doesn’t particularly talk about fluid marks, the base of this concept is formed by terms like prior registration, substantially similar, and unregistered marks.
Protection of fluid marks
There is no straightforward provision for getting a trademark registered with all the possible variations. With that being said, registering each of the variations separately makes no sense as well, after considering the huge number of applications that will be required, and efforts to determine all the possible changes. Therefore, a lot of attention has been given to the enforcement of unregistered trademarks, which are protected due to the existing commercial identity (and recognition) of the initial mark. The concept of an unregistered trademark is laid down in Section 43(a) of the Lanham Act and a fluid trademark also enjoys its protection under the same provision.
But, the sphere of fluid marks is filled with a certain number of challenges, owing to the lack of proper guiding principles. One of the major challenges in dealing with the fluid marks has been the extent of protection to the marks, that is to decide if the protection would be given to a mark entirely (along with the derivates), or just a particular variant. This has been dealt with in the case of Louis Vuitton Malletier v. Dooney & Burke, Inc., where the second circuit agreed for protection to the unregistered mark of Louis Vuitton, considering the below-mentioned points:
- Continuing commercial identity of the prior mark, and its recognition across the market; and
- The unregistered mark was inherently distinctive and has acquired a secondary meaning of its own.
Another important case to be noted here is Proctor and Gamble v. Joy Creators, where the High Court of Delhi held that the exact resemblance of a mark is not necessary to constitute an infringement of the trademark. Infringement may be considered if the plaintiff can show that there was a substantial resemblance, with respect to the main features of that trademark. This case can be used to establish the point, that the protection should be offered to the derivatives of a mark as well, and not only to the original mark itself.
Though the case in hand (Raptors v. Monster Energy) doesn’t deal with the concept of fluid trademarks directly, it discusses the continuing commercial identity of a prior mark. There would have been more clarity while delivering the verdict if fluid marks were more streamlined. Hence, a proper set of guiding principles could have made the case simpler.
Having analysed several provisions and case laws that were, directly and indirectly, related to fluid marks, we can deduce a couple of points that are essential to be considered by any company or the owner of a registered mark while endeavoring on the idea of fluid trademarks. Some of them are:
- The extent of change- The variations in the originally registered mark should be in such a way that it retains the source-identifying features, which will help the brand to not only retain its distinctiveness but also allows the fluid marks to acquire a secondary meaning as well.
- Confusion among customers- In a scenario where a company has been making several modifications in a mark, there is a chance that the customers might not be able to recognise the brand distinctively. Hence, a mark should not undergo multiple substantial changes, which will, in turn, take away the ‘distinctive’ and ‘secondary meaning’ components.
- Reduced commercial strength of the original mark- There can be an instance where the confusion created due to the multiple fluid marks can reduce the commercial strength or recognition in the market. This will defeat the purpose of using fluid marks (that is to increase customer engagement), and also reduce the scope of protection to both prior mark and their variants.
- Continuing commercial use and identity- As noted in the case of Raptors v. Monster Energy, the intent of continuing the prior mark is important, along with the evidence that consumers can still recognise the originally registered mark. In other words, there shall be no demonstration of abandonment of the prior mark, and the owner should continue using it along with the fluid marks.
Unnat Akhouri, Raptors v. Monster Energy: Bringing back the limelight on Fluid Marks, Metacept- Communicating the Law, accessible at https://metacept.com/raptors-v-monster-energy:-bringing-back-the-limelight-on-fluid-marks
 Monster Energy Company v. Maple Leaf Sports & Entertainment Ltd. and NBA Properties, Inc. Opposition Nos. 91222422 (Parent) 91222445, 91226092 and 91228458.
 Kellogg v. Pack’em, 21 USPQ2d at 1145.
 15 U.S. Code § 1125 (c)(2)(a).
 Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969).
 Section 43(a), Lanham Act.
 Louis Vuitton Malletier v. Dooney & Burke, Inc, 454 F.3d 108 (2d Cir. 2006).
 Proctor and Gamble v. Joy Creators, CS(OS) No. 2085/2008.