Peace of Mind for Trademark RebrandingMay 11, 2022

Whether you are a start-up or a Fortune 500 company, rebranding a business or product can seem like an overwhelming and daunting task. However, it doesn’t have to be. While there is always going to be risk involved when undertaking a rebranding or choosing a name, there are some small steps that you can take to mitigate that risk and avoid issues moving forward.

One recent rebranding that has gained national attention (for the wrong reasons) is the Cleveland Indians baseball team’s adoption of the Cleveland Guardians, potentially creating a trademark issue with Cleveland’s roller derby team of the same name. Another recent example is musical group Lady Antebellum’s adoption of Lady A, which has resulted in a lawsuit by blues singer Anita White, who had been performing under the Lady A name for more than 20 years. While these situations are still playing out, much of the uncertainty and issues associated with a rebranding can be eliminated by taking some small steps prior to undertaking the rebrand.

As an initial point, there are marketing concerns for a rebranding and there are legal concerns for a rebranding, but this article will focus solely on the legal concerns. Whenever feasible, we recommend you work with an advertising or marketing firm to develop and implement a new brand. However, marketing firms approach a rebrand from a very different perspective. Often, they want the name to communicate the relevant goods or services. And although this may be helpful from a customer acquisition standpoint, the downside to this approach is that those types of names often do not function very well as trademarks, at least initially, and it may take significant time, effort, and resources to develop those names into a strong brand that is capable of obtaining trademark protection.

This may seem obvious, but perhaps the most critical part of any rebranding is brainstorming potential ideas. We often discover that this important step has been overlooked and whether you’re working with a marketing firm, or simply brainstorming with your friends and family, there are a lot of resources out there to help you get more creative and become better at brainstorming.

Strength of a Trademark

Not all trademarks are created equally. Rather, trademarks fall on a spectrum of strength as shown below.

Fanciful marks are at the strongest end of the spectrum. They are words that are invented or made-up and never existed before or had any meaning before they were adopted.  Fanciful marks are inherently distinctive, as they have no meaning. Well known examples of fanciful trademarks include VERIZON, EXXON, and PEPSI.

Arbitrary marks are the second strongest. Arbitrary marks typically have a commonly known meaning, but they are completely unrelated to the goods or services. Well known examples of arbitrary trademarks include Amazon for an online marketplace, APPLE for computers, VIRGIN for airline services and wireless communications.

Suggestive marks, which are not as strong as fanciful or arbitrary marks, suggest some quality or characteristic of the associated goods or services but do not directly describe them, rather, a mental leap is required to make the connection. Well known examples of suggestive trademarks include AIRBUS for airplanes, CARMAX for used car dealerships, and SWEETARTS for candy.

Descriptive marks are weak. Descriptive marks are descriptive of the relevant goods or services. These marks are only capable of receiving trademark protection on the Principal Register of the USPTO if they have acquired distinctiveness through use. In other words, you must show that consumers identify the mark as an indicator of source due to the use by the owner. Only after a showing of distinctiveness are they registerable. Well known examples of descriptive trademarks include BRITISH AIRWAYS for an airline from Britain, AMERICAN AIRLINES for airline services in America, PARK ‘N FLY for a parking lot that is by an airport,

Generic marks are not capable of registration or protection. A generic term is a word or phrase that is a common term associated with a particular category of goods or services. It cannot function as a trademark and is thus at the weak end of the distinctiveness spectrum. These are the actual terms by which something is referred, and everyone should be able to use the term for the same goods. Well known examples of generic trademarks include TRAMPOLINE, ASPIRIN, ZIPPER, AND YO-YO.

As you might imagine, the line between Suggestive marks and Descriptive marks is often quite blurry. This analysis is rather subjective, and while trademark rights are acquired through use, it’s important to start with as strong of a foundation as you can. As you work through the process of a rebranding, it’s important to select a mark that is strong, highly distinctive, and able to stand out in the marketplace. Typically, the stronger a mark is, the easier it is to register the mark with the USPTO and the easier it is to protect and enforce the mark against other entities.

After you’ve brainstormed (and brainstormed again), and you have your list narrowed down to 3-5 potential names, then it’s time to undertake a trademark search and discover what other uses are in the marketplace.

Trademark Searching
There are a variety of trademark search options available to you and that will fit any budget. Whenever feasible, we recommend you work with an attorney experienced with conducting trademark searches. The most comprehensive searches include searching on the USPTO database, state trademark databases, state business name databases, and other online resources including website and domain name searches. The search provides you with valuable insight into the competitive landscape and in the event the USPTO issues any refusals of registration it can be a great asset and source of defense in the event the trademark owner receives a cease-and-desist letter. While this option is going to provide you with the most comprehensive results, it is also the most expensive. Additionally, there are knock-out or screening searches. As the name implies, these searches are used to conduct quick searches to identify any immediate red flags or obstacles. The benefit here is that these searches are cost-effective and will give you general idea of obstacles, if any. We often recommend this as the starting point with your top 3-5 choices, and then depending on the results, proceeding to a more comprehensive search.

Please keep in mind that no search is foolproof. Even the most comprehensive searches conducted by the leading trademark attorneys are conducted by humans who specialize in doing this type of work on a regular basis, but they are human nonetheless.  However, it is the best indicator we have to assess risk and provide you with peace of mind.

Additionally, you may believe that trademark searching is an unnecessary expense, or you may simply not have the budget to undertake a search. Even though comprehensive searches are usually considered one of the least expensive measures a business can take, and are far less expensive than defending a trademark lawsuit, or being forced to rebrand again, there are simple, free, solutions you can conduct on your own. You should always perform a Google or other online search of the name(s) as well as a domain name search. While domain name searches aren’t determinative, they are a great indicator of whether or not other people or entities are using the mark in some way.

Keep in mind that trademarks are evaluated on their sight, sound, and meaning, so even if you change the spelling of a term or alter the cadence, if the sight, sound, or meaning is the same, it will likely raise issues from a trademark perspective. Further, the test for trademark infringement is whether or not there is a likelihood of confusion so as you review your results, it’s important to analyze those results from the perspective of whether or not potential consumers may be confused by two or more marks.

Rebranding a company or product can seem like a stressful or overwhelming task, but through using the resources available to you and working through the above processes, you should gain valuable insight, peace of mind, and a successful rebranding.

Brandon W. Clark is the Chair of the Copyright, Entertainment, and Media Law Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Brandon directly via email at brandon.clark@ipmvs.com