IP Tech Knowledgy

When rebranding with a new logo or font, consider also using the legacy brand in some manner as a means to preserve trademark rights. Keeping the existing registered trademark active will maintain the owner’s priority in the brand with an earlier filing date, making it useful to combat new, possibly infringing, uses in the marketplace.  

If an owner moves on to a new logo or font, it would not be able to renew the registration for the legacy brand at the US Patent and Trademark Office at the next deadline, and that mark’s registration, and the benefits it provides, would be cancelled. So long as marketing considerations do not outweigh usage of the legacy brand as a secondary mark on a website, in materials, or on hangtags or point of sale displays, keeping that legacy brand is beneficial.  

A caveat is that one cannot use a trademark merely for the temporary purpose of satisfying a trademark application or renewal. So long as the owner uses the legacy brand as a true trademark, and continues the usage even beyond the renewal date, there should be no question about maintaining priority.

Another option is to make only a minor change to the logo and keep the new mark similar to the old one. 

A good way to alleviate this problem from the start is to be sure the first trademark a company registers is the word only, not tied to any particular logo.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com