Trademark Trolls – A Danger to Avoid with a Re-brand

Faegre Drinker Biddle & Reath LLP
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Faegre Drinker Biddle & Reath LLP

Amidst public criticism and pressure from corporate sponsors, many well-known brands are taking a hard look at their trademarks and choosing to move in a new direction.  These changes are impacting brands in various industries from sports teams, like the currently unnamed Washington NFL team, to retailers, like Trader Joe’s.  While appeasing the call for change, an unfortunate consequence with which these brand owners must deal are trademark trolls.

Under U.S. law, trademark protection is a “use it or lose it” proposition and registrations can only be maintained with use.  Therefore, as these companies look to make swift changes to new marks and abandon their existing marks, those prior marks will be ripe for the taking and trademark law may offer limited protection.  Generally, a re-branding strategy would include residual use of the original mark in order to allow the brand owner to retain some control over the mark while phasing it out of use.  In light of the current climate, brand owners may not have an appetite or the option to maintain limited use of the original marks.  Brand owners may need to look to other legal remedies such as copyright infringement or unfair competition claims to stop third parties from claiming their original marks.

Further, as speculation mounts with respect to the identity of the new brand names, some individuals appear to be taking advantage of the movement by filing intent-to-use trademark applications for “best guess” options for the new brands.  For instance, one man filed 8 different applications for Washington-themed names and is not associated with the NFL team.  Clearing and registering a new mark is a daunting task but dealing with trolls adds an additional layer of concern and potential cost.  Therefore, having a comprehensive re-branding strategy prior to making any public statements is vital, regardless of the motivation behind the initiative.

As communities begin to re-open and once sports finally resume, we will likely see many changes both on and off the field and within our stores.  The times they are a-changing . . . but are brand owners prepared?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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