In early 2021, the street artist known as Futura filed a lawsuit against the North Face Apparel Corp. (“NFA”) for unfair competition, alleging that NFA illegally adopted Futura’s iconic circular atom for its outerwear line called “FUTURELIGHT.”   Recently, NFA issued a public statement regarding the lawsuit, and NFA has committed to discontinuing the use of their FUTURELIGHT logo out of deference to Futura.  However, the lawsuit remains unresolved and involves novel legal issues that could affect the landscape of trademark law. 
 
History of the Litigation
 
Futura (a/k/a Leonard McGurr) is a street artist who has been active since the 1980s.  Many of his works include a stylized atom icon, which has been incorporated throughout his paintings and has been used in collaborations between the artist and merchandise companies.  In 2019, NFA launched a line of outerwear called FUTURELIGHT, which is accompanied by a circular icon resembling an atom.  
 
In January 2021, Futura filed a federal lawsuit in California against NFA claiming unfair competition under multiple statutes based on NFA’s use of a circular atom logo in conjunction with the name “FUTURELIGHT.”  Futura claims that his use of the atom design functions as a common-law trademark and that NFA’s FUTURELIGHT logo confuses and deceives customers by creating the misimpression that FUTURELIGHT is associated with Futura. 
 
NFA moved to dismiss Futura’s first amended complaint, arguing that the purported trademark does not function as a “source identifier” and that Futura does not use the atom design in a consistent fashion.  Futura contended that the various iterations of the atom design constitute a “fluid” trademark, which protects variations on a design.  The court noted that inquiries into whether the mark is valid is generally not appropriate at the pleading stage, but was unpersuaded by Futura’s arguments, noting that while Futura cites certain secondary sources describing the idea, it was not “aware of any judicial or USPTO finding of trademark protection based on a collection of similar but different designs.”   
 
Futura’s position represented a broad interpretation of trademark law, contending “there are no formal limitations on what can function as a trademark.”  But the court found that this “assertion is extraordinary in its seemingly boundless application” and recognized that “Plaintiff’s novel theory of fluid trademarks, if permitted as proposed here, would give new meaning to federal trademark law with far-reaching consequences.”  The court ultimately dismissed the first amended complaint, but granted Futura leave to re-amend his complaint “to specify a distinctive mark, composed of a symbol next to his commercially famous name.”
 
Futura filed its second amended complaint on June 14, and NFA moved again to dismiss.  That motion has now been fully briefed.  However, most recently, NFA issued a public statement entitled “Our Deep Respect for Artists”; in the statement, NFA maintains it is “confident there has been no infringement in this case,” and any similarity between Futura’s art and the FUTURELIGHT logo “coincidental,” but nevertheless, as “a sincere gesture of goodwill,” NFA has committed to “begin to phase out and discontinue the use of the FUTURELIGHT™ circular nanospinning logo design out of deep respect for Futura and his work.”  Despite this commitment, the lawsuit has not yet been dismissed and a decision on the motion to dismiss could be forthcoming. 
 
Concept of “Fluid” Trademarks 
 
As the California court noted in its decision, the concept of “fluid” trademarks has not been adopted by any court or the USPTO.  However, there is secondary source literature on the subject, some of which was cited by Futura in his complaint.  The concept of a fluid trademark represents an expansive interpretation of trademark protection, associated with new approaches to branding and marketing that are evolving alongside advancing information technology.  Fluid trademarks involve a creation of multiple iterations or design variations on an established trademark that exist alongside the original mark and are all associated with the same source.  The most well-known example of a “fluid” trademark is Google’s use of variations of its classic logo on its homepage to commemorate holidays and other important events.  
 
While trademarks need not be registered in order to be afforded legal protection, registration is generally a useful step in trademark protection.  But there is no current mechanism for registering a fluid trademark.  For instance, an application involving two or more “materially different” marks will be rejected.  While an applicant could file separate applications for each variation on the original mark, there are obvious practical downsides to this approach, including the burdensome application process and multiple registration fees.  At the very least, those using what might be considered a fluid trademark should focus on creating and registering a strong underlying mark, and continuing the use of the underlying mark in addition to any variants; these steps may help mitigate the risk of customer confusion or weakening of the underlying mark.
 
Potential Impact of the Futura Litigation on Fluid Trademark Protection
 
The federal judge presiding over the Futura litigation recognized that Futura presented a “novel theory” of trademark protection which, if adopted, would have vast consequences for the landscape of trademark law.  But as noted above, whether the court accepts or rejects Futura’s argument that he has successfully created a fluid mark, a decision in this case would be the first judicial treatment of the fluid trademark concept, creating a new wrinkle in trademark jurisprudence that would undoubtedly result in additional litigation.  It can be risky to present a novel legal question to a court, especially where the parties are likely to continue to face similar issues in the future, such as the continuing enforcement of a trademark.  This type of risk can influence settlement prospects, and we will continue to monitor the progress of this case for a potential resolution.  But for now, despite NFA’s promise to discontinue its FUTURELIGHT logo, the case is still pending and the court may be forced to wade into the development of fluid trademark jurisprudence.