Patent and Trade Mark Attorneys
Case Study 9: Finding the way forward
A world-famous client sought our help to choose a new name, its first rebrand since being founded almost sixty years before. It was a high-profile name change allowing no room for error.
Understandably, our client would not launch without the comfort of a trade mark registration. This imposed a tight timescale as our client needed to know early on whether its choice of name would be registered: if not, we would have to re-run the whole search and filing process.
We developed a plan to pursue three marks in parallel: in each case searching, advising on registrability and, if clear, attempting to register them. Our client preferred one of those marks but it wanted two back-ups in case its preferred name wasn't available. We knew it would be an uphill struggle: none of the three marks was particularly distinctive.
We conducted searches and considered inherent registrability. We also looked at the commercial impact of adopting the marks in the context of existing third-party common-law rights identified by our searches.
On paper, the situation was far from promising for any of the marks. However, we concluded that we could secure registration in the face of the likely objections and that we should be able to overcome any third-party issues highlighted by our searches. So, we applied for registration of all three marks.
As we expected, all three marks were provisionally refused by the Examiner. There was no time to waste in exchanges of correspondence with an Examiner who was already leaning toward refusal. Instead, we took the objections straight to a Hearing, requesting the earliest possible date permitted by a cancellation.
At the Hearing, we overcame all objections against all goods and services for all of the marks. When subsequently published for opposition purposes, the marks avoided objection by any of the third parties we had identified in our common-law searches.
The marks are all now registered, and our client has successfully adopted its preferred new name.