Brian Hall - February 6, 2017 - Conducting a Trademark Availability Search, Trademark Law
If you are a newer company, you may think about rebranding as your company’s offerings change. For example, you have now pivoted away from being focused on a particular niche good or service and your company name is now too limiting. Alternatively, the service mark or trademark you originally used does not seem to resonate with your target market, so you want to have a more suggestive brand. All too often a newly selected brand, whether by a start-up or a long-standing entity, comes under attack from a third party due to allegations of trademark infringement. Rather than fight, or perhaps because you lost the fight, you have to rebrand. Regadless, typically there is a reason that the trademark rebrand is desired or needed. While there is plenty of instructive content relative to rebranding your company, here are the top 5 legal considerations for any rebrand:
1. Perform a Trademark Availability Assessment and Trademark Clearance Search
For the avoidance of doubt, selecting a new brand is not easy. It is really, really hard. Expect to select a brand only to find out the risk of being refused registration or subjecting you to claims of trademark infringement render it a non-option. Do not make the amateur mistake of having the marketing team or VP of Brand select the new trademark without involvement of legal. A trademark attorney should be involved at the outset and work in conjunction with the creative team. Some brands may not qualify as trademarks because they are generic or too descriptive. Other hopeful brands may subject the organization to claims of trademark disputes, and thus significant legal and financial exposure. Some may, for practical reasons, such as third party usage in connection with an unwanted area (e.g. pornography), may render the desired brand a poor choice. Regardless, follow the recommended process of identifying a few options, allow the trademark lawyers to perform trademark searches and clearance opinions and then proceed with non-legal due diligence related to selection of a new mark.
2. Secure Trademark Properties
What are trademark properties? These are the things you want to own associated with your trademark. They include domain names, social media handles, etc. While some may say that you should pursue these after you have filed your trademark applications or made your first use, the issue becomes whether they are available. If not, known desired usage may lead to an increased cost to acquire. Ideally, you can can secure such things as the .com (and other gTLD) domain name, Facebook, Twitter and other items for your desired rebranded mark, but it is entirely likely that you may have to secure close alternatives or negotiate the acquisition of them from third parties who have already registered/secured them.
3. Apply to Register your Trademark
This should be in the form of an intent to use trademark application with the United States Patent and Trademark Office (USPTO) and any other governing body for geographic locations in which you will use your mark. Note that it may be in your best interest to pursue several intent to use applications related to your desired rebrand (e.g. character mark, logo, etc.). Oftentimes, entities with a bona fide intent to use more than one mark apply to register multiple rebranded marks, recognizing they may ultimately choose one and abandon the others.
4. Maintain and Protect Your Existing Trademark
Unless your rebrand is forced, such as a result of a dispute and ordered abandonment of registration and cessation of use of your existing mark, so long as your legacy mark will still have some use, you should maintain and protect against unauthorized use of it. This is especially true if it is similar to your rebranded mark. Some entities even keep their trade name as the former brand despite rebranding, making it all that much more important to not abandon the prior mark.
5. Monitor Third Party Use of Your Rebranded Mark
While commentary (perhaps even critical commentary) typically follows a rebrand, you should be most concerned with unauthorized third party usage of your new trademark or service mark. Remember, failure to protect and enforce your trademark rights can lead to abandonment of such rights. You want to make sure all the effort put into the rebrand is policed accordingly so as to maintain and increase the developing goodwill associated with your new mark.
Trademark rebranding is a difficult process, but it is one that can be effectively managed, with controlled legal and other expenses, if done correctly. Not convinced, stories abound of rebranding done well and done poorly. It is your choice, and one critical to your identify and value.
