Managing Intellectual Property Through Your Rebrand

Alesha Dominique is a partner at Mitchell Silberberg & Knupp LLP where she provides strategic advice to brand owners in numerous industries—including the food and beverage, apparel, luxury, and consumer products—on trademark clearance, prosecution and enforcement matters.

• CODO: If a brewery updates its logo in a subtle way (minor stylistic changes with the core concept and composition remaining intact), do they need to trademark the updated logo? 
• ALESHA: Typically, a brewery will be allowed to make minor stylistic changes to a logo and still maintain its priority rights established by the original logo. In general, if the new, slightly revised logo and original logo “create the same, continuing commercial impression” a brewery will continue to have trademark rights based on the priority date established by the original logo. However, if the changes to the original logo are arguably more robust, a brewery risks losing the priority rights established by the original logo, abandoning the original trademark, and potentially infringing the trademark rights of another trademark owner.  Accordingly, a brewery should seek the advice of legal counsel before making stylistic changes to its logo, even if it believes the changes are minor.

• CODO: When a brewery rebrands, should they maintain trademark protection on their previous logo? 
• ALESHA: For a variety of business reasons, a brewery may need to maintain trademark rights in a previous name and/or logo even if it rebrands. For example, a brewery may decide against immediately ceasing use of the previous logo and instead decide to phase out the previous logo over an extended period of time. It may also decide to license the use of the previous logo to another brewery. Typically, breweries should maintain the use and registration of the previous logo to protect against its abandonment at least until they have a clear rebranding strategy in place that is aligned with their business goals.

• CODO: Are there any other IP protection considerations for a brewery to be aware of as they rebrand? 
• ALESHA: As your brewery completely rebrands, you need to do the following:
  1. Conduct a trademark clearance search to determine whether the new name and/or logo is available for use and/or registration. Rebranding is a major investment, and it is important to conduct a trademark clearance search in an effort to determine whether the new brand potentially infringes another brewery’s existing trademark. The cost of a trademark clearance search is minimal when compared to the cost to rebrand or to defend against a trademark infringement claim.
  2. File for federal trademark protection early. Even if the new brand has not launched, a brewery should consider filing an application for federal trademark registration on an intent-to-use basis to obtain the earliest possible date of first use for the new brand.
  3. Police the new brand against unauthorized and confusingly similar uses. Policing the new brand is critical to preserving the brewery’s trademark rights and ensuring that competitors do not create marketplace confusion which could be harmful to the new brand.
  4. Explore other forms of IP protection, such as nontraditional trademarks (e.g., scents, sounds, and product shapes), copyright, and/or patent protection for the new brand. It is important to consider whether a rebranding strategy does (or should) incorporate additional IP that is or should be protected.

Please do not neglect the legal side of this process. As Alesha said, it’s always a good idea to keep your lawyer in the loop on major business decisions, and that definitely includes your rebrand.