Whether it be the name, logo, or both, brand recognition can be a major contributor to a company’s overall value. Sometimes companies invest significant money and time to develop their brands, while other times it may be an afterthought. Either way, sufficient legal due diligence for a given brand is critical to the longevity of a business, allowing the company to feel confident enough to stand behind its brand and to build for expansion.
There are many factors to consider for companies going through the rebranding process. Of course, companies will want to use a name and logo that will connect with their customer base, but there are also important legal considerations, namely whether another company has a similar brand that may give rise to claims of trademark infringement.
The first step should always be an extensive search of existing brands to ensure the name and/or logo doesn’t potentially conflict with other brands. The best place to start is a Google search, as that often provides good context of brand name availability. Generally speaking, if there are no similar search results and there is domain name availability, that’s a good sign. Of course, that’s not sufficient from a legal standpoint. Three legal searches that need to be performed are on the United States Patent and Trademark Office (USPTO), the World Intellectual Property Organization (WIPO), and applicable state trademark registration searches, depending on the geographic scope a company wants to cover. While there are different considerations for searches on the WIPO, the remainder of this post concerns only those searches on the USPTO.
When seeking registration with the USPTO, there a many reasons a trademark application could be rejected, but the most notable is a refusal for ‘likelihood of confusion.’ This essentially means the examining attorney made a determination that the applied-for mark was too similar to a mark that has already been registered. There are multiple factors that come into play, but it mostly comes down to how similar the marks themselves are and how similar the goods and/or services represented by the two marks are to each other. One common misconception is that the names of two given brands need to be identical for there to be a likelihood of confusion. That is certainly not the case, as brands with similar names, even when there are wholly different words, can give rise to a likelihood of confusion. This becomes more of an issue the more similar the corresponding goods/services are between the two brands. All of this applies to both names and logos, as well as when comparing a name and a logo.
There are plenty of other reasons a trademark application could be refused by the examining attorney, such as whether the mark is merely descriptive, geographically descriptive, or generic. But from a rebranding perspective, the utmost concern is a ‘likelihood of confusion’ refusal as that means another company has already registered a mark that has been deemed to conflict with the rebranding company’s name or logo.
Lastly, proper planning is also paramount to a rebrand. Ideally, a company would select a new name or logo and subsequently submit an intent to use trademark application, meaning it wants to use the name or logo but isn’t actually using it yet in commerce. This is advantageous because it allows the company to lock in the name, assuming its registrable, even when it is going through the rebranding transition of creating new marketing materials and other changes. Time permitting, this can also prove valuable from a financial perspective if for whatever reason the trademark application is refused, as it allows a company to not expend funds until it’s sure the new brand is available.
Again, there are many considerations when rebranding, both legal and non-legal, but the last thing a company will want is to discover they didn’t do adequate due diligence in developing a name or long and have to start over again, wasting valuable time and money.
