Many factors influence a business’s decision to undergo a rebranding initiative. Whether the process occurs intentionally in an effort to reposition the brand or move it upmarket, or unintentionally as a result of unplanned circumstances, such as a bankruptcy or corporate restructuring, it must be carefully considered and thoughtfully planned.
Presenting a differentiated identity to the marketplace is a big undertaking and with a company’s brand equity at stake, moving too quickly or haphazardly without taking pause to address the legal issues is a recipe for disaster.
For many small and mid-sized businesses, rebranding may only occur once a generation. Chances are the team that spearheaded the last effort is no longer involved in the day-to-day operations of the company, so there isn’t much institutional memory to tap into and there isn’t a huge budget to spend on the process. There are no lessons from the past to rely on, but you still have to get it right.
A Real Life Scenario
I recently received a phone call from the general counsel of a large professional association looking to update their logo and adopt a “new look.” He kept my card in his desk drawer for some time knowing that a corporate rebranding initiative was on the horizon and that his organization would need to engage specialized counsel.
His primary concern was being sure his company had a clear understanding of the attendant legal issues at the beginning of the rebranding process and to address them in a timely manner. Turns out the last time the organization rebranded, even though the new brand was well received by their stakeholders, they found themselves in some hot legal water and it was expensive and time consuming to get out of trouble. He didn’t know the details, but he did comment that history, in this case, could not repeat itself.
Shortly after my conversation with this GC, I was reminded that regardless of industry or business size, there is a “legal To-Do list” common to all businesses that must be addressed as part of a rebranding campaign.
1. Develop a brand protection strategy.
Develop a comprehensive brand protection strategy for the organization’s new trade identity package informed by prior issues and current business goals. What motivated the rebranding initiative? Was it a planned repositioning or reaction to negative publicity? What does the organization hope to achieve through rebranding?
2. Clear proposed trademarks to determine their availability.
Conduct trademark clearance searches for the top two or three proposed new marks before a final selection is made. The search results will determine whether there are preexisting federal (registered or pending) or common law (unregistered) references that may present a conflict to your new mark and cause trouble down the road. Don’t forget that trademark rights in the United States are conferred to the first to use mark, not the first to file an application with the U.S. Patent and Trademark Office.
3. File new trademark applications.
Prepare and file federal trademark applications for the new mark/s and/or design features that make the final cut. Even though the new mark/s may not be in use, a federal application can secure nationwide priority to rights in the mark while you are gearing up to deploy the new brand.
4. Pay attention to the existing brand’s needs.
Determine the level of legal protection required, if any, for continuing use of the existing brand during the wind down or phase out period. Do trademark registrations need to be maintained? Should they be removed from the organization’s IP portfolio and allowed to lapse? Should there be ongoing enforcement activity?
5. Acquire domain names.
Consider offensive and defensive domain name acquisition. Registering a domain name does not create any legal rights in the name, but it does keep a third-party from purchasing the same domain name. This is an easy and inexpensive way to start protecting your new brand identity from infringers.
6. File new copyright applications.
Identify new copyrightable content that merits the added benefit of federal protection and immediately prepare and file new copyright applications. This may include new marketing collateral and advertising materials. Although copyright rights are legally created the moment an original work is fixed in a tangible medium, e.g. pen to paper, brush to canvas, lens to digital image, they are extremely difficult to enforce absent a federal registration. Again, this is a relatively inexpensive process and can pay big dividends if enforcement action becomes necessary.
7. Develop an enforcement strategy.
Develop an overall enforcement strategy. Walk right through the 5 W’s:
- Who will be in charge of enforcement?
- What enforcement activities will we employ?
- When will we take action?
- Where will we consider enforcement, e.g. domestic and/or international?
- Why do we need to police our rights?
8. Adopt and implement use guidelines.
Adopt or update use guidelines – for online and offline use – for all new brand features and other protected content. Don’t forget to address trademark usage on social media in your guidelines!
How many resources you will allocate to each of these items will be determined on a case-by-case basis and will likely fluctuate over time as you consider (and reconsider) business goals, risk tolerance, and past experiences. Whether you start with large or small steps, addressing legal issues proactively always makes good sense and can be a great money saver when you hit bumps in the road.
- Create a brand protection strategy that makes sense for your specific business and is realistic to manage.
- Implement it.
- Stay the course throughout the entire rebranding campaign.