Developing new brands and trade marks – how to keep them secret pre-launch?

By David Stewart

18 September 2018

Internationally famous athlete David Beckham is launching a new Miami-based team for the US National Soccer League in 2020. The name is as yet a secret. But some sharp eyes have spotted the new logo (above) on the United States Patent and Trade Mark Office’s website. The conclusion is that this logo is an important aspect of the brand for the new club.

There is some tension between the desire to keep a new brand a secret prior to its launch, balanced against locking down ownership rights with the benefit of a trade mark registration.

Registering a trade mark in an incorrect name so as to cloud the issue raises separate problems around proper ownership and invalidity. A decision last year of the Australian Full Federal Court, called Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (26 May 2017), notes that there are “two requirements must be satisfied by an applicant who seeks to register a trade mark:

1. s 27(1)(a) requires that an applicant ‘claims to be the owner of the trade mark’, and
2. s 27(1)(b) requires that an applicant is either using or intends to use (or authorises or intends to authorise another to use) the mark in relation to the goods or services concerned.”

When introducing a new team into its competition, the clever people at the Australian Football League have the solution of filing multiple applications so as to both obscure the ultimate choice and provide options until that ultimate choice is made. Here are some examples of trade marks which were filed by the AFL and not pursued:

• Alternative brands for the Fremantle Dockers AFL team:

Left – (Australian trade mark 634696) Middle – (Australian trade mark 634687) Right – (Australian trade mark 634679)

• For the Port Adelaide Power, “PORT PIRATES” (Australian trade mark 667202), “PORT MARINERS” (Australian trade mark 667205), and the “PORT SHARKS” (Australian trade mark 667216);
• For the Gold Coast Suns – the “GOLD COAST RAYS” (Australian trade mark 1251199), the “GOLD COAST MARLINS” (Australian trade mark 1251000), the “GOLD COAST IRONMEN” (Australian trade mark 1251201), and the “GOLD COAST GUARDS” (Australian trade mark 1251202);
• For the Greater Western Sydney Giants (we assume given the timing), the “RANGERS” (Australian trade mark 1346727), the “STALLIONS” (1346728), the “PRIDE” (Australian trade mark 1346729), the “WOLVES” (Australian trade mark 1349766), the “STARS” (Australian trade mark 1362697), the “STINGRAYS (Australian trade mark 1362698), and the “SURF” (Australian trade mark 1322700).

Disclaimer: The information published in this article is of a general nature and should not be construed as legal advice. Whilst we aim to provide timely, relevant and accurate information, the law may change and circumstances may differ. You should not therefore act in reliance on it without first obtaining specific legal advice.