Rebranding and Protecting Your Trademarks

By Shannon Nolley

A company’s brand encompasses both tangible and intangible elements that represent how a company is perceived by its customers. It is how it sets itself apart from its competitors.

Effective branding can result in strong customer recognition of a company’s trademark. However, from time-to-time companies may decide to change their “brand identity” for strategic marketing reasons. This could include corporate expansion or diversification, merger or acquisition, market repositioning, crisis management, globalization, or new leadership. Of course, the company could also simply have evolved or outgrown its original brand.

Rebranding includes changing or updating specific elements in a marketing plan, which often includes the company’s primary trademark name or logo. The goal of rebranding is to create a new and improved brand image that better aligns with the company’s current goals, target audience, or market conditions.

While rebranding can prove strategically beneficial, it also carries risks if not executed carefully. Protection of the new brand throughout this process is critical for success. This includes clearance of the new brand, federal registration, maintenance and use, as well as monitoring. If these steps are not considered, companies could incur huge costs later.

Trademark Clearance

Prior to any rebranding efforts it is essential to ensure that the proposed trademark is not already in use by a competitor or someone in a related field. This could be considered an infringement of their trademark rights. A thorough search must be done to identify these risks and potential conflicts. Conducting these searches early on will reduce the need to pivot or make expensive changes later. The last thing a company wants is to invest time and capital in a new brand that it can’t protect or even must abandon to avoid the threat of a costly legal battle.

Trademark Registration

If the brand involves new elements such as a new name or logo, registration with the United States Patent and Trademark Office (USPTO) is recommended. Trademark registration provides owners with federal legal protection and exclusive rights to use the mark in connection with its related goods or services and prevents others from registering confusingly similar marks with the USPTO. This protection can also serve to deter infringers from using similar marks as registered trademark owners have stronger legal standing in disputes. If the company conducts business internationally or plans to expand, registration with foreign trademark offices is also recommended.

Maintaining Use of Trademarks

During rebranding it’s important to use the new brand elements clearly and consistently with the related goods or services. Trademark rights are maintained through proper and continuous use. If protection with the USPTO is sought, examples of use are required for an application to proceed to registration. Failing to use a trademark properly and consistently could result in the abandonment of legal protection.

Monitoring and Enforcement

After rebranding, it is important to regularly monitor the marketplace for potential infringements of the new mark. This can be done through trademark watch services that will regularly scan for any unauthorized use of your trademarks. If a potential infringement is found, legal counsel should be consulted to determine the best path forward.

Creating a new brand identity is an enormous undertaking for any company. Clearance, legal protection, proper use, and regular enforcement will ensure a smooth process. Contact one of Gesmer’s trademark partners to discuss how we can help.

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Shannon M. Nolley

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