Rebranding Trademarks: Challenges of Walking Away and Choosing a New Mark

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, January 12, 2021

Recorded event now available

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Course Materials

This CLE course will guide trademark counsel and companies facing the decision to rebrand trademarks. The panel will address the legal and business issues that arise when companies consider dropping or changing a mark, including when dropping a potentially offensive or insensitive trademark. The panel will also discuss considerations companies face in selecting new marks.

Description

Aunt Jemima pancake mix, Uncle Ben's rice, and Eskimo Pie ice cream sandwiches are some of the brand names that companies are reconsidering or abandoning to avoid cultural insensitivity. After a long fight to keep its federally registered trademarks, the Washington Redskins are now the Washington Football Team, a temporary name while they rebrand.

When a brand owner stops using its mark in commerce, it can lose its trademark rights. Nonuse for three consecutive years is evidence of abandonment. But to maintain the mark, the use of it must be bona fide. Abandoning a mark is not without its challenges. Among those are logistics and the cost of removing any use in the marketplace, which can be daunting. Additionally, when a company abandons a brand, it allows another company to claim it, but with any residual negative connotations sticking with the original brand owner.

In Iancu v. Brunetti the Supreme Court held the Lanham Act's prohibition on registering immoral or scandalous trademarks violates the First Amendment. That decision came two years after it ruled in Matal v. Tam that the Lanham Act’s disparaging trademark ban was unconstitutional. Despite these rulings, there has been a wave of companies contemplating or ceasing use of certain trademarks.

Companies dropping a trademark due to offensiveness or cultural insensitivity should ensure the new brand meets legal requirements and does not infringe. For example, the music group Lady Antebellum is in litigation after it chose to shorten its name to Lady A, which was already in use by another musical artist.

Listen as our authoritative panel addresses the legal and business issues that arise when companies consider dropping a culturally insensitive mark or simply changing a mark. The panel will also discuss considerations companies face in selecting new marks.

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Outline

  1. Considerations when determining whether to rebrand a trademark
  2. Legal issues with dropping a mark
    1. Abandoning the mark
    2. Use in commerce
    3. What happens to the mark once abandoned
  3. Best practices for rebranding

Benefits

The panel will review these and other noteworthy issues:

  • What is the current state of Section 2(a) of the Lanham Act?
  • What considerations should companies and counsel keep in mind when determining whether to drop a certain type of trademark?
  • What are the downfalls of simply abandoning the mark in question?
  • What strategies should companies and counsel employ when working to rebrand or select new marks for products?

Faculty

Kahn, Michael
Michael A. Kahn

Senior Counsel
Capes Sokol Goodman & Sarachan

Mr. Kahn concentrates his practice in copyright, trademark, First Amendment and media law, including libel and privacy...  |  Read More

Patton, Elizabeth
Elizabeth A. Patton

Partner
Fox Rothschild

Ms. Patton represents clients in all stages of litigation, from pre-suit advice through trial and appeal. She devotes a...  |  Read More

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