Trademark Tacking: The Legal Implications of Brand Evolution

24 Wake Forest J. Bus. & Intell. Prop. L. 125.

Just as consumers embrace the latest fashion trends, businesses refresh their trademarks to stay relevant, keep pace with consumer expectations, and satisfy consumer preferences.  From the fast-food conglomerate McDonald’s to world energy leader General Electric, many companies have undergone brand changes.  For example, Amazon began as an online bookstore.  Eventually, as the online bookstore became the online retail giant it is today, selling consumer goods including books, plants, gadgets, and groceries, its branding changed to its now globally recognized trademark logo.  Additionally, the logo for web browser Mozilla Firefox has gone through several iterations, as seen in Figure 1.  

As brands evolve, whether by changing product or service offerings or the look of their logo, questions regarding continuous use and trademark priority arise.  Should the later version of a trademark (or “mark”) be able to claim the same priority as the earlier version of the mark despite changes in the appearance of the mark?  Should that same later version of the mark be able to claim priority against its earlier version when the goods and services offered under it have changed?  When is a brand refresh actually a wholesale rebrand and/or an abandonment of the prior mark?  

…..