November 06, 2020

Managing Intellectual Property Quotes Rebecca Liebowitz on Avoiding Risk When Discontinuing Brands

2 min

On November 6, 2020, Rebecca Liebowitz was quoted in Managing Intellectual Property on how companies can avoid risk when discontinuing brands.

According to the article, companies must decide whether to hold on to a trademark for a brand that they want to discontinue or to let the mark go. They may not always be able to keep their marks, as countries such as the United States require parties to prove use when they renew trademarks. And although not all jurisdictions have this requirement, there is still a risk that third parties could initiate and win cancellation proceedings if the mark is no longer in use.

Liebowitz says that when companies use similar names for discontinued products, there can still be legacy goodwill attached to the brand. “Consumers are still going to associate it with the prior brand owner, and that could lead to confusion as to the source of that product,” she says.

A company may want to find some way to continue using its trademark to avoid being accused of abandonment. A brand could consider licensing the mark, or whether there is some creative way to continue using the brand, even if not to the same extent as before.

Businesses could consider tying the production of goods to special occasions, even if they do not sell these products all the time. Liebowitz says some companies have special releases of products or logos attached to anniversaries. Businesses that have a plan to regularly remind consumers that they still use their marks could maintain their trademark rights, she says.