Trademark Aspects of Launching a Brand or Rebranding

Mistakes made in picking a new brand (which is a trademark) or rebranding can have major consequences for that business for its entire lifecycle. Making a bad choice can lead to having a brand that is effectively unprotectable against infringement or other use by others. Making a bad choice also can make defending that trademark from infringement and other misuse (which is called watching and policing) extraordinarily expensive and sometimes difficult or impossible to achieve.

This program teaches best practices for picking a strong new brand and rebranding. It also examines commonplace mistakes.

Topics to be covered include:

• Quick review of relevant trademark concepts
• The pecking order of trademark strength
• Sizing up proximity of your trademark candidate to other trademarks already in use—how close is too close?
• Clearance of new trademark candidates, and what clearance should accomplish
• Mark registration strategy tips and tricks for new branding or rebranding
• Best practices in picking a new trademark—what works and what doesn’t
• Best practices in rebranding
• Commonplace trademark selection and rebranding mistakes, and the cost and other downsides of making them
• Dealing with ad agencies and branding firms, including privilege issues
• How to keep your old brand from getting taken by someone else
• Launching a major brand—preparing to be sued
• Preserving the value of what you build: overview of trademark infringement watching and policing, and how it dovetails with clearance
• Tales of woe and lessons taught thereby

ABOUT THE SPEAKER

John B. Farmer, Leading-Edge Law Group, PLC / Richmond
John B. Farmer is a member of the Leading-Edge Law Group, PLC, an intellectual property (“IP”) boutique law firm in Richmond, Virginia. He served as chairman of the Trademark Public Advisory Committee of the United States Patent and Trademark Office. He writes a monthly IP and technology law column for the Richmond Times-Dispatch. Mr. Farmer is listed in the top rank of Virginia IP attorneys by Chambers USA and listed for IP in Best Lawyers in America. He is a past chair of the IP Section of the Virginia State Bar. He is a past president of the Greater Richmond Intellectual Property Law Association. He graduated from the University of Virginia and its law school. After graduation from law school, he clerked for the Honorable Donald S. Russell, Judge of the U.S. Fourth Circuit Court of Appeals, and for the Honorable James C. Cacheris, Judge of the U.S. District Court for the Eastern District of Virginia, Richmond Division.