The Washington Football Team announced last week that it would unveil its new team name on February 2, 2022. The team buckled under pressure from its corporate sponsors in the summer of 2020 and announced on July 13, 2020, that it would rebrand, effectively dropping the controversial Redskins name. It temporarily adopted The Washington Football Team name for the 2020-2021 season. In the wake of the George Floyd murder, we saw other companies decide to rebrand and remove racial stereotypes, including the Cleveland Indians, who announced last summer they would rebrand to the Cleveland Guardians. The name was met with challenges, as a roller derby team was already using the Guardians name. It was reported that Cleveland made a splashy announcement before locking down their rights and the roller derby team sued. Eventually, the parties were able to settle, but with a much higher payout, I’m sure, than if the rights had been secured before the big, splashy, public announcement. This is reminiscent of the Facebook-Meta rebrand where many companies have publicly denounced Facebook (now Meta) for stepping on their earlier rights. In fact, to secure the Meta name, Facebook had to purchase prior filed trademarks. While the world waits to see what The Washington Football Team’s new name will be and whether it will be met with any controversy, how can your company (or client) rebrand without all the drama?
Reasons why companies rebrand
There are many reasons why a company (or product) may wish to rebrand, among them: there could be a requirement to do so because of litigation, or the company (or business division) could be acquired or spun off. Sometimes, the name is no longer relevant, especially if the name contains a geographic reference and the company expands beyond that territory. Does anyone remember the St. Louis Bread Company, which rebranded to Panera, when California Pizza Kitchen chose to keep its name as it expanded? As we saw in the Summer of 2020, sometimes names have negative connotations or have cultural translation issues as brands expand globally. Whatever the reason, rebranding is not a quick or simple process, especially in the digital age. Here are some things to keep in mind if you are undergoing a rebrand.
Steps in the rebranding process
The first step for most brand owners is to choose whether you want to work with an agency to assist with the naming process or whether you will go it alone. There are many agencies who specialize in naming and ideation, and they can be a huge help during this process. You can choose to proceed on your own, but you’ll want to have many brainstorming sessions and be sure to generate many possible contenders. With either approach, you could choose to involve your consumers in the renaming process or have them vote on possible contenders later in the process. Which brings me to step number two: make sure you involve your trademark counsel early in the process. Finding an available name is no easy feat. Many availability searches can be required to knock out unsuitable choices and narrow down your long list of brainstormed names to a manageable list of contenders. More detailed searches to discover unregistered users can help you land on a final name(s).
If you involve your consumers, you’ll want to be sure any submissions they make are owned by your company, so legal will play a very important role in making that a reality. Lastly, if your brand has an international presence, your trademark counsel can work with its network of international colleagues to be sure they are providing the best advice on the availability of the mark in your key jurisdictions around the world. Remember that trademarks are territorial in nature. Depending on when you will launch your new brand, your trademark counsel may have recommendations on how best to keep the new name under wraps until you are ready to unveil it publicly.
Consider the bigger strategy before you announce the rebrand
Most importantly, you must have patience. Choosing a brand name or selecting a trademark, regardless of whether you are just starting out or undergoing a rebrand, does not happen overnight. Make sure you set aside plenty of time for the trademark clearance process. There is a lot to do to search for the new name for your company or brand (especially if you are changing because of a conflict with the original name). For instance, trademark counsel should ask their clients how they thought up the name and whether the name has any meaning in other languages. Before making the announcement regarding the new name, you’ll want to work closely with your trademark counsel on the best strategy and timing for the unveiling. If you will have a global brand, for instance, you may want to lock up your foreign filing rights before making any announcement, to prevent squatters from securing those rights, or you might consider filing in a country that does not immediately publicly publish their applications. The point is, everything you say and do will be scrutinized and your trademark counsel will be the key to your new name’s success. Let your trademark counsel do their job before you begin to develop live websites and other marketing collateral pieces and be realistic regarding your timeline expectations. If you need help with a rebrand or any other aspect of the trademark process, please contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.