Should You Wait to Trademark a Name Before Rebranding?

by Angela Floyd

Rebranding is expensive and risky. When you change your name or your logo, you change your product labels, advertising and promotional materials, domain name and social media accounts, so you must consider the trademark implications. This includes making sure that your new name does not infringe on someone else’s trademark and securing your new trademark rights. With planning, you can minimize trademark risks, increase the value of your trademark portfolio and expand your brand successfully.

Rebranding

Rebranding happens when you change a significant element of your brand. You may want to rebrand to distance your company from negative media exposure. You may be expanding into a new line of business, and your previous brand is too limiting, as in Apple Computer’s name change to just Apple. Or, you might want to revitalize your brand to attract a new demographic. Your new brand identity may be a change in graphics, a new logo, a new phrase or even a new name. Even the slightest change to your old trademark means that you have a new trademark and new trademark concerns.

Trademark Availability

You don’t want to go through the trouble of rebranding only to discover that your new trademark infringes on someone else’s trademark. Any prior commercial use of your trademark by another can have severe legal and financial consequences. Even if the marks are not identical, you may still be prevented from using it if it is confusingly similar to another. So, before using your new trademark, find out if it is available. Search the United States Patent and Trademark Office (USPTO) registered trademark database. Also, conduct a “use” search through a trademark search company. If someone else has used the mark before you, they may have a claim of ownership even if they never applied to register the trademark.

Trademark Rights

After you’ve determined that your mark is available, you can use your new trademark. Your trademark rights exist as soon as you use your new mark in commerce and the public associates the mark with you, but registration has several legal advantages, including the right to sue for statutory damages. If you don't register your trademark, your rights still exist but defending your mark may be more difficult and damages may be significantly less.

Registration

You can either register your intent to use the mark with the USPTO or you can use the mark in commerce and then register. Registration gets you the right to use the well-recognized registered trademark symbol, “®”, which provides registration notice to others and can increase the amount of damages you obtain from infringement. The “®” symbol may only be used if the trademark is registered. Registration will also place your mark in the USPTO registered trademark database where others will see your mark when searching for similar marks, and the USPTO will not register any identical or similar marks.