Yahoo's rebranding and trademark registration strategy

Market and company dynamics are fluid.  So, businesses often need to tweak logos or rebrand product lines.  This is happening right now at Yahoo.  Yahoo has made the rebranding a marketing event in and of itself by showcasing a different Yahoo logo each day for thirty days until it finally unveils a new logo in September.  This approach is generating media buzz and ensuring that consumer consciousness is keyed in on the change.  Click here to check it out. 

Rebranding and trademark protection overlap.  Typically, a logo tweak or rebrand will also involve one or more new trademark applications to protect the new trademark.  This is so because an existing trademark logo registration only covers the particular design that is the subject of that trademark registration.  Unveiling a new, unprotected design that is loosely based on an old trademark is, rather graphically, called “mutilation” of the old trademark.  The new logo will require a new trademark application and registration to achieve protection. 

One caveat to this need may exist when the logo is mainly comprised of literal elements (such as letters or words) and when those elements are locked up extensively through prior trademark registrations.  Yahoo seems to fall in this camp, as, in the United States alone, it owns over twenty trademark registrations for the word “Yahoo” with an exclamation point at the end.  With that much “alphabet real estate”, Yahoo probably doesn’t need a duplicative logo registration.  Case in point, when I search the United States Patent & Trademark and international intellectual property databases, I can’t find an application for Yahoo’s new, yet to be publicly disclosed, logo.  But, for any number of reasons, Yahoo may yet get one or more trademark applications on file before the public unveiling as part of its rebranding and trademark registration strategy. 
 
If you are considering rebranding, you should talk to a trademark attorney to find a protection strategy that best addresses the risks in your industry and best meets your objectives.