Rebranding enables the name, visual identity, positioning or message of a trademark to be redefined in order to maintain consumer interest and loyalty, gain an edge over competitors or reach new markets. However, whether temporary or definitive, these strategies can create legal risks that should be addressed in order to safeguard a company’s rights in its registered trademarks and trademark portfolio.
Although rebranding tends to be viewed from a business or marketing perspective, it can also create significant risks for a company’s industrial property rights. A change of name, logo, or visual identity can affect the continued protection of prior trademark registrations if these changes are not implemented as part of a coordinated trademark protection strategy.
A trademark registration is, by definition, an industrial property right that enables its owner to exclusively use a distinctive sign, such as a name, design or other elements, to identify and distinguish goods or services in the marketplace.
This exclusive right is a valuable asset for any business, as it facilitates its identification in the marketplace and subsequent market recognition, which is why it is essential to ensure that the right is adequately protected.
Protecting a trademark legally is a process that takes time. In Mexico, a trademark application takes approximately 6 months if everything runs smoothly and in other countries it can take even longer.
Once a trademark registration has been granted, article 233 of the Federal Law for the Protection of Industrial Property requires trademark owners to use it as registered or with modifications that do not alter its distinctive character.
This is particularly important, as maintaining a trademark registration requires constant monitoring of how the mark is used in the marketplace. Consequently, a rebranding strategy should bear in mind its possible impact on the existing trademark rights, in order to prevent the loss, cancellation or dilution of the trademark protection that has already been secured.
Some famous rebranding cases in recent years that invite reflection include the following:
Aunt Jemima / Pearl Milling Company
At the beginning of 2021, the pancake mix and syrup brand Aunt Jemima announced that it was changing its name to Pearl Milling Company following controversy surrounding the original brand. As a result, the company decided to change both the brand name and the message it conveyed to consumers.
That decision led the company to file an application that same year at the Mexican Trademark Office for the trademark Pearl Milling Company, which it secured by the middle of the year and which will be in force until 2031.
In principle, it could be considered that a public rebranding announcement involved abandoning the trademark Aunt Jemima. However, records from the Trademark Office database show that the registration will remain in force until October 30 of this year and that the owner has already started the process to renew it for an additional ten-year term. This would appear to indicate that the owner wants to continue to hold exclusive rights in the mark and prevent third parties from trying to register it.
It is worth noting that in Mexico, when applying to renew a trademark, it is necessary to declare that the mark has been used in accordance with market practices and customs. This declaration is made in good faith, since evidence does not have to be provided.
This case therefore raises the following questions:
- Should the original trademark be considered abandoned since 2021?
- Is a press release or announcement sufficient to establish that the mark is no longer in use?
- If so, what decision are the examiners likely to reach on the renewal application?
- Was it appropriate for the company to apply for the renewal of the mark or were there any other alternatives to maintain protection of Aunt Jemima?
Twitter / X
In a similar case, in mid-2023, Twitter officially changed its name to X as part of an effort to transform the social media platform and give it a new identity. This change of identity included more than a simple name change, since several elements that had been protected on the platform ceased to be used, such as its color scheme, the bird logo, and the term tweet.
In this case, the risk did give rise to a dispute, since several months ago a startup in the US filed a petition for cancellation of Twitter’s trademark registrations at the United States Patent and Trademark Office in order to launch a competing social media platform.
The arguments used by the startup included that the owner of the registrations had publicly renounced the trademark when it carried out the rebranding and stopped using it commercially, which amounted to trademark abandonment and should therefore enable third parties to acquire rights in the mark through the applicable legal procedures.
In a recent decision, a US court found that the Twitter mark still enjoyed legal protection due to the residual use that continued to be made of the trademark despite the platform’s change of name. However, it reached a different conclusion with respect to the bird logo and the term tweet, since it held that those signs had lost their trademark protection.
This case is an example of the risks that exist when rebranding, not to mention the impact on the business’s trademark portfolio.
HBO Max
The rebranding of the streaming platform HBO offers a very different case study.
For several different reasons, this company is known as HBO Go, HBO Now, HBO Max, Max and has currently reverted to the name HBO Max.
This case differs from the other two examples we have looked at, because the HBO name has nearly always been present (with the exception of Max), making it easier to preserve the trademark rights of the main brand associated with additional words or designs.
Nevertheless, this case highlights the need to monitor how a trademark is used in the marketplace and to extend protection to any modifications made to it.
Anyone consulting the Trademark Office database in Mexico can verify that the company secured protection for each of the abovementioned name variations, which is a good example of how a trademark portfolio should be managed and expanded when rebranding.
Little Caesars / Liru Sisa (or Liru Cisa)
This case involves a temporary rebranding strategy that came about due to the way in which consumers in Mexico refer to the brand.
This pronunciation led to a marketing campaign that involved a temporary name change on the company’s social media platforms and pizza boxes, as well as the registration of these variations as part of its trademark portfolio.
This example shows us the importance of companies monitoring how consumers perceive their brands in the market and of updating their trademark portfolios to ensure their rights are adequately protected.
Conclusion
In conclusion, the cases analyzed demonstrate that successful rebranding depends not only on an effective business strategy, but also on the proper management of a trademark portfolio. Before implementing a rebranding initiative, it is advisable to assess which trademark registrations will continue to be used, which should be renewed, what new applications should be filed and what evidence of use should be retained. This will allow businesses to ensure that their marks evolve without jeopardizing intangible assets that have often taken years to build and protect.
