The beginning of a new year is often the impetus for change. For companies, this may mean a rebranding initiative involving an update to a company's house mark or logo. In 2015 several companies, including Google, Facebook, and IHOP redesigned their well-known logos to appeal to modern consumers. (For a list of other companies that underwent re-branding in 2015, see:http://www.pastemagazine.com/articles/2015/12/the-10-biggest-rebrands-of-2015.html).
Although rebranding can provide a boost to a company’s image, it is not without potential for legal risk. One risk of updating a logo or a trademark is the potential loss of trademark rights in a prior recognized and beloved logo. Another risk arises from having to establish rights from scratch in a new logo – including ensuring that it does not infringe any prior marks.
Companies wishing to refresh their brand but still take advantage of the goodwill surrounding a prior mark, should consider modifications that update, but do not completely change, the commercial impression of the brand. Under this scenario, a brand owner may be able to rely on the doctrine of “tacking” in a later procurement or infringement matter, which allows a trademark user to “clothe a new mark with the priority position of an older mark.” Hana Financial, Inc. v. Hana Bank, 135 U.S. Ct. 907 (2015).
The doctrine sounds simple in theory; it requires only that the old and new marks be “legal equivalents.” Applying it, however, is more challenging because the determination of legal equivalency depends on whether the two marks “create the same, continuing commercial impression such that the consumer would consider them both the same mark.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001).
While there are no hard-and-fast rules, the following chart, which summarizes some prior court and Trademark Trial and Appeal Board decisions determining legal equivalency of word marks, may provide some guidance to companies wishing to take advantage of the tacking doctrine.
(Click here to view table on original document.)
For those brand owners who are considering a brand refresh in 2016, following are four recommendations to help ensure a seamless transition:
- Conduct pre-launch market research to ensure that the new mark is well-received by its consumers (and avoid the 2010 GAP rebranding fiasco (http://www.bbc.com/news/business-11520930)!).
- Conduct surveys or other marketplace research to determine whether consumers will appreciate the new mark as a mere extension of the old mark.
- Plan an education/public relations campaign that will educate consumers on how the old mark fluidly transitions to the new, to reinforce the continuity of the brand.
- Consider strategy for amending current trademark registrations, or for filing new applications claiming the first use dates of the prior marks, to preserve priority dates for enforcement purposes.
With this in mind, happy brand-new year!