Episode 03 | Guest conversation
The Trademark Reality PE Buyers Need to Understand
With John Pickerill, Chair, Advertising, Marketing & Trademark Law Group, Fredrikson & Byron · Hosted by Phillip McMillan · 40:52
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
- 00:00Introduction
- 02:09From the ad agency world to trademark law
- 05:31Why trademark outcomes are harder to predict
- 07:05Likelihood of confusion and broad legacy registrations
- 08:57How long the trademark office takes to respond
- 10:21Foreign registrations and the US use requirement
- 11:51Common law rights
- 13:08Clearing a name for a roll-up
- 14:11Coined, descriptive, and generic names
- 21:11Does adding “Solutions” fix a conflict?
- 22:37The most common trademark mistake in deals
- 24:18What happens if registration is refused
- 26:54TM, SM, and the registered symbol
- 28:20Next steps when diligence raises a flag
- 29:45Copyright as a complementary strategy
- 32:59AI in trademark work: trust but verify
- 37:26Why 60 to 70 percent can be a good answer
This episode is a general discussion and is not legal advice. Talk with qualified counsel about your specific situation.
About the guest
John Pickerill
Chair, Advertising, Marketing & Trademark Law Group, Fredrikson & Byron
John Pickerill chairs the Advertising, Marketing & Trademark Law Group at Fredrikson & Byron, 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.
More conversations
Keep listening.
Episode 01 | Solo
Phillip McMillan
Founder and Managing Director, CS Brand Group
Phillip McMillan introduces the show and explores why brand belongs in the value creation conversation, from making an investment thesis clear to customers and employees to helping the next buyer understand the business.
Episode 02 | Guest conversation
Travis Dziubla
Managing Director, Pacific Avenue Capital Partners
Travis Dziubla discusses when identity work should begin, who needs a voice, and what a business risks when it postpones those decisions.
Keep the conversation going.
Follow Buy. Build. Brand. on your preferred podcast app for future episodes.