Rebranding

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There are several reasons why a business might need to rebrand a product — to resolve a dispute over the brand; to continue after the termination or expiration of a license; or to refresh (or rehabilitate) the product’s image. Whatever the reason, rebranding requires careful planning and diligent execution.

  1. Select a new brand. Define the unique selling proposition and core brand values. Brainstorm and generate brand name ideas. Shortlist brand name candidates, focusing on those that are easy to pronounce, spell, and remember. Research meanings of the candidate brands. If you plan to sell internationally, check for any potential issues in other languages or cultures. A name that’s great in one country might have unintended meanings in another. Screen for availability as domain names (for your website), trademarks (to protect intellectual property), and social media handles. Screen the candidates for legal availability. Test the remaining candidates with the target audience. Make your selection(s).
  2. Develop the new brand. Revise the logo, color scheme, typography, and graphic elements. Create brand guidelines defining the rules for using brand elements to ensure consistency across all channels. Create a brand story with a compelling narrative that reflects the new brand identity and resonates with the target audience.
  3. Refresh the product and packaging. Consider changes in product features, packaging, or benefits. Update the design to reflect the new brand identity, attract the target audience, and ensure consistency.
  4. Protect the new brand, product, and packaging. File trademark applications on the new brand, pursue appropriate trademark, patent, and copyright applications on the product, packaging, and marketing materials.
  5. Update company documentation: Ensure that internal documents (e.g., contracts, presentations) reflect the new brand.
  6. Update Digital Presence & Online Assets. Update website and social media profiles, ensuring the new brand is reflected across digital platforms. Revise SEO and content strategy, optimizing the website and digital content to align with the new brand and improve search rankings. Ensure consistent messaging by updating content on blogs, social media, email templates, and digital ads to reflect the new brand. Update any e-commerce platforms, including product listings, descriptions, and images to match the new brand. Revise frequently asked questions and other support documents to match the new product identity.
  7. Create new advertising. Develop new ads, brochures, and promotional content reflecting the new branding. Organize product relaunch events, online webinars, or media outreach. Collaborate with influencers and media.
  8. Communicate with existing customers. Send out personalized communication (e.g., email or newsletters) informing customers about the rebrand. Ensure that brochures, product manuals, and customer support documents reflect the new brand. Address potential concerns about product quality or customer service during the transition.
  9. Address legal and compliance considerations. Revise any licensing, distribution, or partnership agreements to reflect the rebranded product. Verify that all new packaging, advertising, and product claims comply with industry regulations and guidelines.

Rebranding is a complex process that requires careful planning, collaboration, and a focus on consistency across all platforms. A well-executed rebrand can rejuvenate a product, attract new customers, and increase market share.

More for Less

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Effective January 18, 2025, the USPTO filing fees for trademark applications are going up, as illustrated  on this chart:

 Until January 17, 2025After January 17, 2025 
Use-based application in one class using standard descriptions of goods and services$250$35040% increase
Use-based application in one class, using freeform descriptions of goods and services$350$55057.1% increase
Intent-to-use application in one class using standard descriptions of goods and services + Statement of Use*$250 + $100$350 + $15042.9% increase
Intent-to-use application in one class, using freeform descriptions of goods and services + Statement of Use*$350 + $100$550 + $15055.6% increase
*This does not include the fees for one or more six-month extensions of time which are $150 per class per extension, and starting January 18th will be $200 per class per extension

 In addition, there is a new $100 surcharge per class if any of the twenty “Requirements for a base application,” as provided in 37 CFR § 2.22(1) through (20) is omitted, and an additional fee of $200 for each additional group of 1,000 characters in the free-form text box beyond the first 1,000 characters.  Thus a mistake or omission can bump the fees for a new single application to $450, and a lengthy description of goods and services adds at least another $200.

One way to minimize government filing fees are to make sure all of the requirements for a base application are met.  This may be more difficult than it sounds, because it includes providing a description of the mark, describing all colors in the mark and their locations; providing an English translation of any non-English wording, and providing a transliteration of any non-Latin characters, compliance with which is at least somewhat subjective.

Another way to minimize government filing fees is to select the descriptions of goods and services from the Trademark ID Manual (TMNG-IDM).  The ID Manual is often lacking, particularly with respect to modern goods and services. This can be managed with some advance planning – requesting that your goods or services be added to the ID Manual.  This is easily done by emailing the name of requester, the email address of the requester, and the proposed identification (no more than 25 words) to [email protected].  No more than three proposals should be submitted in a single email, the proposal(s) should be of use to other applicants (and not just the submitter), and proposal should not be for a description that has been rejected by an Examiner.

A final way to minimize government filing fees is to file separate applications for classes using descriptions from the Trademark ID Manual, and classes needed a freeform description of goods and services.

The fees for maintaining issued registrations are also increasing:

 Until January 17, 2025After January 17, 2025 
Section 8 Affidavit of Use (between the 5th and 6th Anniversary of registration) per class$225$32544.4% increase
Combined Section 8 & 15 Affidavits of Use (between the 5th and 6th Anniversary of registration) per class$225 + $200$325 + 25028.1% increase
Section 8 Affidavit and Section 9 Renewal per class$225 + $300$325 + $32523.8% increase

Avoiding Trademark Scams

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There is a surprisingly large industry that profits by scamming trademark owners by sending official-looking invoices that mention the recipient’s trademarks, and hoping that the recipient will be fooled into paying it.

How do you avoid getting scammed — often for several thousand dollars? Ask your trusted trademark counsel about any suspicious trademark invoice. What makes a trademark invoice suspicious? First and foremost, did it come from your trusted trademark counsel? Here as some other things to look for:

  • Is the return address a post office box?
  • Is the return address from a city remote from the USPTO?
  • Is the return address from a foreign country?
  • Does the document refer to an “offer” or “solicitation”?
  • Does the document refer to “listing” your in a directory or publication?
  • Is there a portion to clip and return?
  • Does the URL or email address end in .org or.biz or another unusual domain?

Be careful and only deal with your trusted trademark counsel.

The USPTO Cannot Sleep at Night Unless it Knows Where YOU Sleep at Night

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On February 13, 2024, the Federal Circuit affirmed the USPTO’s refusal to register the mark CHESTEK LEGAL for failure to comply with the domicile address requirement of 37 C.F.R. §§ 2.32(a)(2) and 2.189.

37 C.F.R. §2.32(a)(2) requires that a trademark application include “[t]he name, domicile address, and email address of each applicant.” While 37 C.F.R. § 2.189 requires that “An applicant or registrant must provide and keep current the address of its domicile, as defined in § 2.2(o) [The term domicile as used in this part means the permanent legal place of residence of a natural person or the principal place of business of a juristic entity.” The USPTO explained that that these rules we created to combat “the growing problem of foreign individuals, entities, and applicants failing to comply with U.S. law.”

Pamela Chestek, a well-known and highly regarded trademark practitioner, author and commentator, provided the address where she receives business mail: “PO BOX 2492, RALEIGH, NORTH CAROLINA UNITED STATES 27602. Her website identifies a physical address of 300 Fayetteville St, Raleigh, NC 27601, which turns out to be the Raleigh, N.C. Post Office. This was not good enough for the USPTO, which could not sleep at night until it knew where Pamela slept at night.

On appeal, Chestek argued that the domicile address requirement was improperly promulgated for two independent reasons and that the Board’s decision enforcing the domicile address requirement should therefore be vacated. First, Chestek first argued that the USPTO was required to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule. Second, Chestek argued that the domicile address requirement is arbitrary and capricious
because the final rule failed to offer a satisfactory explanation for the domicile address requirement and failed to consider important aspects of the problem it purports
to address, such as privacy.

The Federal Circuit rejected Chestek’s first argument because § 553(b)(A) does not require the formalities of notice-and-comment for “interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice.”

The Federal Circuit rejected Chestek’s second argument because the regulations were not arbitrary or capricious but were adopted the domicile address requirement as part of a larger regulatory scheme to require foreign trademark applicants, registrants, or parties to a
trademark proceeding to be represented by U.S. counsel. The Federal Circuit said that because the USPTO would need to know an applicant’s domicile address to determine if the U.S. counsel requirement applied, it reasonably required all applicants to provide their domicile address. The USPTO’s justification for all applicants to provide a domicile address is therefore at least reasonably discernable when considered in the full context of the U.S. attorney requirement and the decision to condition that requirement on domicile.

Fraudulent Section 15 Affidavit May Void Incontestability, but it Does Not Make Registration Invalid

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In Great Concepts, LLC, v. Chutter, Inc., [2022-1212] (October 18, 2023), the Federal Circuit reversed the TTAB’s cancellation of Reg. No. 2929764 on the mark DANTANNA’S due to the filing of a fraudulent declaration by a former attorney for the registrant.

Registrant’s former attorney filed combined Section 8 and 15 Declarations, Affidavits declaring, among other things, “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” This statement was false: as of March 2010, both the cancellation proceeding in the PTO and the Eleventh Circuit appeal from Mr. Tana’s district court action were still pending.

The issue for the Federal Circuit was whether Section 14 of the Lanham Act, 15 U.S.C. § 1064, permits the Board to cancel a trademark’s registration due to the owner’s filing of a fraudulent Section 15 declaration for the purpose of acquiring incontestability status for its already-registered mark. The Board has long believed it has such power, and it exercised such purported authority in the instant case.  The Federal Circuit concluded that Section 14 does not permit the Board to cancel a registration:

Section 14, which allows a third party to seek cancellation of registration when the “registration was obtained fraudulently,” does not authorize cancellation of a registration when the incontestability status of that mark is “obtained fraudulently.”

Fraud committed in connection with obtaining incontestable status is distinctly not fraud committed in connection with obtaining the registration itself.  The Federal Circuit said that the Board the Board may consider whether to declare that Great Concepts’ mark does not enjoy incontestable status and to evaluate whether to impose other sanctions on Great Concepts or its attorney.

Who’s Getting Fleeced?

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On November 22, 2022, Patagonia sued The Gap for trademark and trade dress infringement by selling a fleece pullover that Patagonia alleges infringe the design of its Snap-T design:

According to the Complaint, the design of the Snap-T pullover is constantly evolving. The one feature that does seem to be constant is a contrasting asymmetric pocket:

Given the changes in the design over time, and fact there are multiple versions of the current Snap-T design, precisely what is Pategonia’s trade dress is difficult to determine.

Some designs have a contrasting placket, some don’t; some designs have an asymmetric pocket flap, others don’t, and some don’t have pockets at all. There are even more variations when other lines of fleece pullovers are considered. Can Patagonia show that it has a protectable trade dress, and if so, what are its elements?

In its Complaint, Patagonia cited an on-line review that pointed out that Gap’s fleece was an “Obvious Patagonia ripoff,” but obvious suggests there is not a likelihood of confusion, and apparently Gap’s lablel did what it was supposed to do: identify the source of Gap’s fleece as a Gap product. However Gap did itself no favors with its label design. Sure, the Gap name is readily apparent, but the mountain background is almost provocative.

Plackets, pocket flaps, and chest labels are common features of fleece pullovers. Is Patagonia’s combination of these features unique enough that others can’t make a similar fleece pull over?

Apparently, Goodwill, like Love and like Diamonds, is Forever

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On February 28, 2022, The Real USFL, LLC sued Fox Sports in the Central District of California [2:22-cv-1350] for attempting to resurrect the United States Football League (USFL) — a football league that played for three seasons, 1983 through 1985. The league folded before its planned 1986 season, and all tolled had lost over US$163 million in its short life.

The plaintiff is not the original league, but an entity formed six days earlier, on February 22, 2022, but claims to be the holder of “all rights and interest” in the leagues’ trademarks. In its complaint, the plaintiff alleges the defendant Fox Sports has “no right to capitalize on the goodwill of the league.”

Plaintiff alleges that this goodwill was preserved, by among other things, organizing
league and team reunions, and authorizing and appearing in and ESPN 30 for 30
documentary; and entering into certain media licensing arrangements on behalf of the USFL for apparel, books, and other media.

Plaintiff raises claim of trademark infringement, false advertising, false association, unfair competition, and cancellation of trademarks, Plaintiff seems most concerned by Fox’s characterization of its efforts as a “reboot” of the defunct league, when Fox has no direct connection with the original league. However, it is not clear that a reboot excludes such a situation, and is it even more unclear that the old USFL has any rights left to complain. It should be an interesting case. If nothing else we will learn what it takes to maintain rights in a trademark, and what constitutes abandonment.

Amateur Se

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On November 8, 2021, Al McZeal filed in the Central District of California (2:21-cv-07093-SVW-RAO), a 134 page complaint in with 13 counts against Amazon, Best Buy, Orion Labs, its lawyer and his law firm, and 10,000 unnamed Does, alleging infringement of McZeal’s registered trademark on (Reg. No. 5303249) on SMART WALKIE TALKIE, for smart walkie talkies.

Orion’s lawyers’ offense is raising the descriptiveness of McZeal’s trademark, both as an attack on the validity of McZeal’s registration, and as a defense (15 USC 1115(b)(4) to the descriptive use of the term. Mr. McZeal mentions “fraud” at least 222 times throughout his filing. It does seem that the lawyers’ position (thoughtfully attached to the Complaint” is at a minimum is well-reasoned, and seems likely correct. A member of the bar should be able to assert a reasonable defenses, with fear of being sued for fraud.

Mr. McZeal is proceeding pro se, but the Complaint (Paragraph 51) states that plaintiff “intends to file a motion for substitution of counsel in order to substitute a competent law firm to protect the intellectual property rights and other rights of the plaintiff.” But after his treatment of defendant’s counsel, prospective plaintiff’s counsel should proceed with caution.

Mr. McZeal, for his own part, makes some questionable statements, not the least of which is swearing to the USPTO that his mark was in use on “INTERSTELLAR COMMUNICATIONS SERVICES” in order to get his registration. Mr. McZeal’s complaint is an interesting read, and will leave a definite feeling that we are all better off when licensed attorneys conduct litigation.

Any Third Party Use is Relevant to Whether a Claimant Made Exclusive Use of a Mark

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In Galperdi, Inc., v. Galperti S.R.L., [2021-1011] (November 12, 2021), the Federal Circuit vacated and remanded the TTAB’s finding no falsity of Galperti S.R.L.’s exclusive use from 2002 to 2007, the Board committed two legal
errors: requiring Galperti Inc. to establish its own proprietary rights to the mark and disregarding third party use of the mark.

Galperti S.r.l., to support its application to register GALPERTI, told the PTO that, in the five preceding years, its use of the mark was “substantially exclusive.” In response ,the USPTO issued Reg. No. 3411812. Galperti Inc. petitioned the PTO to cancel the registration, arguing, among other things, that the registration was obtained by fraud because Galperti S.r.l. statement of substantially exclusive use was false and, indeed, intentionally so. When the PTO dismissed the cancellation petition, the Federal Circuit affirmed as to the non-fraud issues but vacated the Board’s rejection of the fraud charge and remanded for further consideration of that charge. On remand the PTAB again dismissed the cancellation proceeding.

GALPERTI is “primarily merely a surname” and, so, without more, could not be registered. Lanham Act § 2(e)(4), 15 U.S.C. § 1052(e)(4). Galperti-S.r.l. obtained a registration of GALPERTI on the Principal Register under Section 2(f) alleging “substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” 15 U.S.C. § 1052(f).

While in the prior appeal. the Federal Circuit approved the Board’s conclusion that Galperti S.r.l.’s mere “‘knowledge of other players in the marketplace’” was insufficient to make its statement to the PTO “‘per se false,’” id., it held that the Board had erred in stopping at that point, because the absence of “per se” falsity does not imply the absence of falsity. What was needed was an inquiry, on remand, into whether the uses to which Galperti Inc. pointed as showing the falsity of Galperti S.r.l.’s representation to the PTO were significant or, instead, inconsequential.

Galperti Inc. contended on appeal that the Board’s analysis of falsity includes two legally incorrect premises. One is that
Galperti Inc. had to have trademark-protected rights in its use of the mark at issue (in 2002–2007)—specifically,
secondary meaning (i.e., acquired distinctiveness)—in order for that use to count as significant in assessing the falsity of Galperti-Italy’s assertion of “substantially exclusive use.” The other is that uses by third parties do not count
in the substantially-exclusive-use assessment unless the third parties were in privity with Galperti Inc. The Federal Circuit agreed with Galperti Inc. on both counts.

Third party use does not have to be as a trademark to impact the determination of whether a mark has become distinctive of an applicant. The Federal Circuit said that a significant amount of marketplace use of a term not as a source identifier for those users still tends to undermine an applicant’s assertion that its own use has been substantially exclusive so as to create a prima facie case that the term has come to acquire distinctiveness as a source identifier for the applicant.

Further third party use is not limited to third parties who are in privity with the petitioner or opposer. Thus, the Federal Circuit said that the Board also erred in its related requirement that Galperti Inc. had to demonstrate privity with other users of the mark to rely on those uses to show falsity of Galperti S.r.l.’s claim of substantially exclusive use. “Any” use may frustrate a claim for substantially exclusive use, without limiting that use to the party challenging registration.

Indians Acting Like Cowboys

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An interesting suit was filed on October 27 in the Norther District of Ohio by the Guardians Roller Derby team against the Cleveland Guardians Baseball Company f/k/a the Cleveland Indians. The Cleveland Indians after 105 years decided to change their name the Cleveland Guardians, and if the Complaint is to be believed, did so with full knowledge of another Cleveland sports team already using the name, the Cleveland Guardians roller derby team.

As the Complaint (Para. 20) alleges,”it is inconceivable that an organization worth more than $1B and estimated to have annual revenues of $290M+ would not at least have performed a Google search for “Cleveland Guardians” before settling on the name.”

The Complaint lays out the history of events:

While the strategy of filing in a remote jurisdiction to hide interest in a mark from prying eyes is a common one, employed by many large companies, including Apple, and not as sinister as the Complaint implies, the Indians conduct in the face of a party with superior rights seems rather cavalier — wait, no, that’s a different Cleveland team.

The Complaint alleged that “Two sports teams in the same city cannot have identical names. Major League Baseball would never permit “Chicago Cubs” lacrosse or “New York Yankees” rugby teams to operate alongside its storied baseball clubs and rightly so. Confusion would otherwise result. Imagine seeing a “New York Yankees” shirt for sale and buying it. Which team did you just support?” There are certainly problems in such a scenario, although it worked for years in St. Louis, which had both a Cardinals baseball team and a Cardinals football team. This was a special circumstance where similarly named teams, with long histories, found themselves in the same city.

No doubt this will be settled, and there will plenty of branded baseball merchandise to buy in the Forest City, and the city’s newly renamed roller derby team will be the best funded roller derby team in the country. The lesson, if there is one, is to not fall in love with a new name until after it is properly cleared.