When a sponsor buys a company, the rights to its name don't always come with it. Registration outcomes at the US trademark office have also become much harder to predict.

Trademark attorney John Pickerill of Fredrikson & Byron joins Phillip McMillan to walk through what buyers should understand about the protection behind a brand. John spent years at an ad agency before law school, so he knows both sides: the people who build a brand and the counsel who has to protect it.

In this episode:

• Why trademark registration has become less predictable, and why a first response can take months to arrive
• How older, broad registrations, foreign filings, and common law use can block a name that looks clear on paper
• What clearing a platform name for a roll-up involves when it will enter new markets
• Coined, descriptive, and generic names: the trade-offs for long-term brand equity
• Why adding "Solutions" or "Services" to a name rarely resolves a conflict
• What to do when registration is refused, and what TM, SM, and the registered symbol each mean
• What to request in diligence: chain of title, prosecution history, search history, and warranties
• Where copyright can add a second layer of protection, and how John uses AI in trademark work

Chapters

(00:00) Introduction

(02:09) From the ad agency world to trademark law

(05:31) Why trademark outcomes are harder to predict

(07:05) Likelihood of confusion and broad legacy registrations

(08:57) How long the trademark office takes to respond

(10:21) Foreign registrations and the US use requirement

(11:51) Common law rights

(13:08) Clearing a name for a roll-up

(14:11) Coined, descriptive, and generic names

(21:11) Does adding "Solutions" fix a conflict?

(22:37) The most common trademark mistake in deals

(24:18) What happens if registration is refused

(26:54) TM, SM, and the registered symbol

(28:20) Next steps when diligence raises a flag

(29:45) Copyright as a complementary strategy

(32:59) AI in trademark work: trust but verify

(37:26) Why 60 to 70 percent can be a good answer

John Pickerill is a partner in Fredrikson & Byron's advertising, trademark, and marketing group, where he advises on branding and on trademark and copyright issues in deals. Before law school he spent more than 5 years at a Minneapolis advertising agency.

This episode is a general discussion and is not legal advice. Talk with qualified counsel about your specific situation.

Connect with John on LinkedIn.

Fredrikson & Byron: https://www.fredlaw.com

Follow Buy. Build. Brand. on Apple Podcasts, Spotify, or wherever you listen so you don't miss the next conversation.

Show website: BuyBuildBrand.com

CS Brand Group: csbg.co

Hosted by Phillip McMillan, founder and Managing Director of CS Brand Group, the brand strategy firm for private equity sponsors and their portfolio companies.

When a carve-out starts life as Company Holdings LLC, the first town hall gets awkward fast. Employees don't know what they're part of, customers don't know who they're doing business with, and competitors are happy to fill in the blanks.

Travis Dziubla, a carve-out operator at Pacific Avenue Capital Partners, joins Phillip McMillan to explain why he treats identity as part of the carve-out plan from the start. He came up through submarine operations and plant turnarounds, and he admits he didn't fully appreciate this work early in his career. Now he pushes for a name, a story, and a website before close.

In this episode:

• What makes the first 90 to 100 days of a carve-out different from other deals, and why that window closes
• What "identity" covers in practice, from email addresses and a website to values and heritage
• Why a clear identity helps recruit executives into a newly standalone company
• What has to be ready on day one: at minimum, a name and a website customers can find
• Who belongs in the room: a core decision group of 3 to 6 people, with broader employee input
• How sponsors stay involved without taking ownership of the identity away from management
• His one piece of advice for deal teams before they sign

Chapters

(00:00) Introduction

(02:12) Travis's path: submarine officer, McKinsey, Lion Equity, Pacific Avenue

(03:48) What makes carve-outs different in the first 90 days

(05:31) What identity means for a newly carved-out company

(07:34) What happens when you get it wrong

(09:37) Identity as a recruiting tool

(14:25) Why doing it earlier creates more value

(16:17) Identity work before close

(18:24) Getting executives and stakeholders to prioritize it

(22:03) Who should be at the table

(24:10) Balancing sponsor input with management ownership

(26:16) What every deal team should understand before they sign

Travis Dziubla is a carve-out operator at Pacific Avenue Capital Partners. He began his career as a submarine officer, led power plant and chemical plant turnarounds at McKinsey, and worked on lower middle market carve-outs at Lion Equity Capital Partners before joining Pacific Avenue.

Connect with Travis on LinkedIn.

Follow Buy. Build. Brand. on Apple Podcasts, Spotify, or wherever you listen so you don't miss the next conversation.

Show website: BuyBuildBrand.com

CS Brand Group: csbg.co

Hosted by Phillip McMillan, founder and Managing Director of CS Brand Group, the brand strategy firm for private equity sponsors and their portfolio companies.

A sponsor buys a business because they believe something about it the market hasn't figured out yet. If that thesis lives only in the deal memo and the board deck, the company goes to exit looking a lot like the business they bought.

In this solo episode, Phillip McMillan lays out the frame for Buy. Build. Brand. He defines brand the way a deal team can use it: what the market believes about your business before anyone from that business is in the room. That belief is pricing in your favor or against you, and it rarely shows up as a line on the P&L, which is why nobody budgets for it.

In this episode:

• A working definition of brand for sponsors, operating partners, and portfolio company CEOs
• The 3 ways the gap between the investment thesis and the market's story shows up: the story falls behind the thesis, the company outgrows its brand, and the company needs a brand from day one
• A real example: a business whose high-margin testing and maintenance services were invisible to a market that still saw it as a parts and break-fix provider
• Where AI fits, in Phillip's words: "AI makes the expert faster, but the expert makes the answer right."
• 3 questions to ask about any portfolio company, and when each one is cheapest to answer: in the first 100 days, before close, and 12 to 24 months before exit

Pull up your homepage, give it 30 seconds with no banker in the room, and ask whether it tells the story you're selling.

Follow Buy. Build. Brand. on Apple Podcasts, Spotify, or wherever you listen so you don't miss the next conversation.

Show website: BuyBuildBrand.com

CS Brand Group: csbg.co

Hosted by Phillip McMillan, founder and Managing Director of CS Brand Group, the brand strategy firm for private equity sponsors and their portfolio companies.