When a multibillion-dollar brand becomes so toxic that comedians joke that “The Botulism Company” or “International Body Odor” would be more appropriate names, serious work needs to be done to rehabilitate that brand.
Leydig was charged with that task when a global financial services company needed to rebrand a business unit. When the client faced a trademark infringement suit over its new name – threatening to cost the client $25-30 million in lost revenue – Leydig’s meticulous clearance work positioned the company for an ultimately successful outcome.
The client’s name change efforts included spending $570,000 over a three-month period on a branding expert who helped select the new name, filing an application with the Financial Industry Regulatory Authority, filing a trademark application with the U.S. Patent and Trademark Office, and registering its new name in all 50 states.
Leydig was retained during this endeavor to provide its opinion on a plethora of proposed names. After advising on the adoption of many of those names, Leydig offered its opinion on the name the client ultimately chose.
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That opinion followed Leydig’s extensive research and clearance work, which extended far beyond the confines of trademark registrations and usage, to include industry analysis, searches of industry periodicals, and a host of other investigative efforts to ensure the strength and safety of the new name.
Nevertheless, upon adopting the new name, the client faced the prospect of a preliminary injunction sought by another financial services company for alleged trademark infringement. In fighting the motion, Leydig relied heavily on the copious amount of research and evidence the firm assembled during the clearance process.
The firm’s litigators also took an approach that focused squarely on those elements of the court’s analysis that offered the most persuasive arguments against an injunction, while eschewing those that offered little prospect for success.
In rejecting the motion for a preliminary injunction, the court noted the extensive clearance work before the new name’s adoption. Leydig’s efforts and its strategic decisions while fighting the motion resulted in a quick conclusion of the lawsuit in district court, and led to a favorable settlement. Today, over 1,900 financial advisors work under the umbrella of the new name, managing over $37 billion in client assets.
