So you’re thinking about changing your company name, brand, or both.  We usually like to allow at least a few months to identify the new name and initiate protection.  To help you plan, here’s a high-level overview of significant steps in the process.  Happy rebranding!

1. Develop a timeline for creating the new brand and announcing it publicly.
2. If you engage a marketing agency to assist with rebranding, make sure the written agreement reflects that you own the intellectual property the agency creates.
3. Create a list of potential new names and logos.  Rank them in order of preference.
   1. You can expedite this process by searching the Internet and eliminating names and designs used by companies in related fields.
   2. To achieve broad protection, consider adopting made-up words as opposed to dictionary words, or words from literature.
   3. Explore whether the new names have undesirable connotations in other languages.
4. Conduct trademark and company name searches to check the availability of the preferred candidates in important jurisdictions.  It’s often more efficient to check on a group of names, rather than vetting them one-by-one.
5. Identify the company that will own the trademarks.  Consider whether your ownership choice presents tax consequences.
6. Acquire domain names and social media handles corresponding to top candidate names.
7. Make sure your logo fits within a mobile app icon.
8. Assess whether the changes to your existing brand are sufficiently minor that you might be able to amend your existing trademark registrations, rather than filing new applications.
9. If needed, file new trademark applications in important jurisdictions.
10. Add new brands to your trademark watching service.
11. Consider filing new copyright applications for the logo, depending on how elaborate the design elements are.
12. Review existing contracts to determine whether formal notice provisions are triggered by a company change of name.
13. File documentation to change the company name with governmental authorities, and record that change in the Trademark Offices in relevant jurisdictions.
14. Develop branding guidelines that require use of the brands as adjectives, not as nouns, and prohibit use of logos as punctuation, for example.
15. Revise signage, marketing materials, invoices, directory listings, voice mail greetings, email addresses, and server and file names.
16. When trademark registrations issue, consider filing Trademark Clearinghouse registrations to help protect your brands against domain name squatters.

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.

About the Author: Jennifer Dean

Jennifer Dean is a leading trademark lawyer who helps companies establish, protect and promote their brands in the United States and globally. Clients entrust her with intellectual property portfolios comprising thousands of trademark applications and registrations, relying on Jennifer’s extensive experience navigating the intricacies of international brand management. Her knowledge of clients’ industries and careful monitoring of the marketplace enables her to act swiftly to avert competitors’ efforts to launch confusingly similar brands.