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

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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.