June 4, 2019

Does Your Trademark Have a 401(k)?

By Bryan K. Wheelock, Principal

Well perhaps not a 401(k), but a trademark does need a retirement plan. When a business replaces a legacy mark with a new mark, the legacy mark may be deemed abandoned and available for anyone to adopt. To the extent that the legacy mark has residual good will, it could be lost to the owner while it may benefit the cunning usurper.

This unsatisfactory result can be avoided with a little retirement planning.

First, the owner should avoid any external (or internal) statements that the legacy mark is being dropped, eliminated or abandoned. Instead, simply direct trademark usage toward the new mark.

Second, the owner should use both the legacy mark and the new mark on products and in advertising, gradually decreasing the prominence of the legacy mark until the customers’ loyalty is transferred to the new mark.

Third, the owner should find a version or model of the product on which to continue to use the mark. Ideally, this use would be continuous, but anniversary, special or limited editions can be enough to maintain rights. It may even be possible to introduce the new mark as a premium brand over the legacy brand.

Fourth, the business should step up its use of the legacy mark in connection with warranty and repair services as well as replacement parts. Registering the legacy mark for these services and parts will help maintain rights in the legacy mark as these services extend into the future.

Fifth, feature the legacy mark in company/product line histories in printed materials and on the company’s website.

Make no mistake, the only reason that a usurper would adopt another company’s legacy mark is to take the residual good will and divert business from the legacy brand owner. A few simple steps during re-branding can insure that your legacy mark enjoys a happy retirement.