The conventional wisdom in the branding world is to maintain a brand name without change. However, because of changes in the way a company does business, mergers and acquisitions or because of negative associations with an existing brand name, it may become necessary to change that name. Significant time, effort and money will be required to make a change so it should not be done unless there are compelling reasons to do so.
In April, we discussed some of the issues relating to choosing a new brand name. Those considerations will apply in this context, but longer-term business objectives will also be important.
The starting point is to determine whether the new name is legally available for use and can be registered in the countries in which it will be used. Once this hurdle has been overcome any necessary domain names must be secured.
A well planned and well-executed communications campaign should be put together to implement the change and make the new brand name distinctive of the source of the goods or service. Be careful to not issue overly broad press releases. Similar considerations apply to employees and others associated with the brand owner’s business. They must be won over so they can become supporters for the new brand name.
The potential market responses to a change of a brand name must be considered. Clearly, the brand owner does not want a competitor to obtain the discontinued brand name. A conscious plan to maintain the use of the brand name to a degree sufficient to support the registration should be developed. Token use may not withstand scrutiny so there should be real use although the amount of use need not satisfy any specific volume just be more than token use. If the use is merely token the registration of the brand name can be potentially expunged.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.