Tips for Companies Saying Goodbye to Racial Stereotypes in Branding

Companies and organizations announcing new changes to their brands span the consumer, sports, and music industries. Quaker Foods and Conagra announced changes to the Aunt Jemima (now Pearl Milling Company) and Mrs. Butterworth's brands to deemphasize their mascots, with Quaker Foods acknowledging that "Aunt Jemima's origins are based on a racial stereotype." Land O'Lakes  announced a rebrand that removed the image of a Native American woman from its packaging, citing a shift to focus on farmers. Musicians have also been rethinking their image – the Dixie Chicks renamed themselves "The Chicks" amidst a new album release, and Lady Antebellum changed its name to "Lady A," stirring controversy as the group promptly filed suit for declaratory judgment of non-infringement against another, lesser known musician named Lady A.

Somewhat ironically, this societal reckoning over culturally insensitive trademarks comes on the heels of recent trademark decisions from the Supreme Court – Matal v. Tam in 2017 and Iancu v. Brunetti in 2019 – that held that the USPTO could not refuse trademark registration based solely on a mark's disparaging, immoral, or scandalous nature as the provision of the Lanham Act authorizing such refusals is unconstitutional under the free speech clause of the First Amendment. Despite this, consumer-driven outcry and social media campaigns, however, have pressured companies to avoid these types of marks altogether, even if the marks are technically registrable.

When rebranding, particularly rebranding away from a well-known or recognized mark, trademark owners should pay attention to (1) squatters claiming rights in prospective new marks, (2) opportunists eager to register abandoned marks for their own goods and services, and (3) transitioning existing brand recognition and consumer goodwill over to a new mark.

Finding a New Mark

When searching for a new mark, start early and keep your search strategy confined to employees on a "need to know" basis to prevent leaks. Entrepreneurial consumers (or even employees) may anticipate a rebrand, especially if controversies have percolated for numerous years, and "squat" on potential new names. While applications and registrations can be challenged on a lack of "bona fide intent to use" a mark or fraudulent use of a mark in U.S. commerce, these legal challenges can be time and cost consuming. Registering domain names and obtaining complementary social media handles can similarly be affected.

Even if you ultimately maintain an existing mark or change creative directions entirely, advanced planning – and early trademark searching and filing – can prevent a rush of squatters filing applications on prospective options. Consider also using a "ghost" filing strategy – trademark filings in the name of an unknown, wholly-owned subsidiary company to avoid tipping off trademark register watchers that your prominent brand is undertaking a slew of new filings – and/or filing outside the United States first in jurisdictions where filings may not be so closely monitored and later seek extensions of protection into the United States.

Navigating Abandonment and Opportunists

Marks usually fade away gradually through continued disuse and failure to maintain any corresponding registrations at the USPTO, but brand owners can also affirmatively abandon registrations. The former happens by way of necessity, as marks evolve over time and change so much that the USPTO no longer considers them to impart the same commercial impression. If this happens, brands may no longer be able to provide sufficient specimens of use to maintain the registrations. If retaining the rights to a former mark is of concern, brand owners should aim to maintain some residual use, such as selling vintage apparel or collateral goods, to try to keep the trademarks active and prevent a loss of rights. However, in some instances trademark owners may elect to affirmatively abandon an existing registration.

Whether a registration expires through gradual misuse or express abandonment, keep a close eye on applications for marks your company has phased out, as new users of your old marks may still use the marks in ways that are confusing or deceptive to consumers and that may be actionable under the Lanham Act.

Building on Legacy Goodwill

Acknowledging a legacy brand and the consumer goodwill accumulated with it is a necessary part of any rebrand, but accompanying a rebrand with corporate social responsibility initiatives aimed at supporting communities affected by legacy marks may help ease the transition. Introduce new marks with an interactive social media campaign, and consider using similar colors and fonts to your prior branding to assist with a seamless transition, as seen in the Aunt Jemima/Pearl Milling Company rebrand for example:

Pre-Rebrand Aunt Jemima Packaging	Pearl Milling Company Rebrand Packaging

Continuity of overall visual appearance, even if more controversial elements are removed, will allow consumers to recall your brand in a similar manner and may subtly evoke the goodwill of the original marks.

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Rebrands require significant buy-in from numerous stakeholders including decision-makers, employees, and consumers to pull off effectively and seamlessly. All the challenges of rebranding are only heightened when a rebrand is prompted by consumer backlash over perceived cultural insensitivity. Nevertheless, approaching a rebrand calmly and methodically, with the above principles in mind, will help ensure that consumers will follow along towards the next chapter of your company's trademarks.

If you have questions regarding a potential rebrand, please contact Anna Kurian Shaw and Brendan C. Quinn.

Authored by Anna Kurian Shaw and Brendan Quinn with significant contribution by Hadley Dreibelbis