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Nasir and Matt cap off the week by discussing rebranding strategies (pizza related). They then answer the question, "At what point can I file an intent to use trademark?"

Full Podcast Transcript

NASIR: All right, welcome to our business podcast where we cover business in the news and answer some of your business legal questions that you, the listener, can send in to
My name is Nasir Pasha.

MATT: And I’m Matt Staub.

NASIR: And we are talking about the best topic in the entire world.

MATT: Yeah, pizza.

NASIR: Pizza. If this is your first time joining us on the podcast, this is a popular topic of ours.

MATT: Yeah, it’s definitely tapered off some. I feel like, the beginning, it was every other episode.

NASIR: Yeah. I mean, well, the main issue started with the concept of whether sauce or crust is better, or what makes the pizza right, and you were in the crust camp and I was in the sauce camp.

MATT: I still am.

NASIR: And the reason it tapered down is it just became well-established that it was the sauce so it became a non-issue, right?

MATT: I wouldn’t go that far. My wife agrees with me and she loves marinara sauce more than pretty much anyone. So, she’s a very huge sauce person, but knows that crust is more important than the sauce.

NASIR: Actually, I spoke to my wife and she also agrees with me which is, I guess, not unusual. So, I guess it’s a tie. So, two versus two so far and that’s about as far as we’ve got.

MATT: So, we’re going to talk about the rebranding with Pizza Hut and, I guess, the legal aspects of rebranding. But I think we were just looking for a reason to talk about pizza again because it’s been a while and I’ve actually seen some commercials, they’re doing a whole new re-launch; new logo, of course, which isn’t too different than the old one, I guess. But there’s an old logo of a guy holding the words “Pizza” and “Hut.” That must have been, like, an original. It’s a pretty weird one.

NASIR: This new logo is just this flat design that has been pretty well-established in the last – I don’t know – I would say at least five years, even more. And they’re a little late to the game. I mean, flat design is, like, pretty well-established.

MATT: Well, I think it’s supposed to look like a pizza because it’s a circle.

NASIR: Yeah, it is round.

MATT: And then, like, the crust.

NASIR: It looks like the sauce actually.

MATT: Yeah.

NASIR: Doesn’t it? No, I’m serious. It’s like red sauce.

MATT: Yeah, it’s either that or, like, the white lines, like, along the edge on the inside could be where the crust and sauce divide. I don’t know.

NASIR: I think it’s the sauce. I mean, that’s what they’re focusing on because it’s more important.

MATT: Well, we’ll see.

NASIR: Actually, look, they actually promoted; they’ve rebranded with a logo inspired by a swirl of pizza sauce.

MATT: Oh, okay. Well, I guess that’s why they’re doing their new pizzas as well as all the sauces that were, like, anything else had a regular marinara or spiraled around the pizza. The classic example, BBQ Chicken is barbecue sauce base but now it’s just nothing – just cheese and the toppings.

NASIR: And then, they put the sauce on top?

MATT: Yeah, swirled around.

NASIR: Wait. They do that where?

MATT: San Diego, I’ve seen it a bunch of times.

NASIR: Oh, really?

MATT: Yeah.

NASIR: I’ve never seen that actually.

MATT: The spot that I lived when we first moved here and I lived right by had it and I’ve seen it at a bunch of locations. It’s very popular. I don’t know why and I’m trying to think, they might do the same thing in some places in New York.

NASIR: They were showing pictures of their pizzas with the spiral sauce, I thought that might be something that they can trademark. But it looks like other pizza places do that all the time.

MATT: Oh, yeah, they’re definitely not the first ones. Again, Pizza Hut is way, way behind the game in terms of coming up with something new. But I will give them this, they come up with a lot of new things that a lot of places don’t have.

NASIR: Oh, all their new sauces, right?

MATT: Yeah.

NASIR: Well, here’s the big thing with rebranding – it’s not too complicated unless you’re changing your actual name that you’re operating under and that’s not the most common way to rebrand but it does happen. Usually, you just start out with your trademarks, right? Making sure that your new logo, your new designs have done that. And, of course, Pizza Hut, being a large company, knows about all this and so you can take a look at the USPTO website and see some of the trademarks that they’ve filed in response to this rebranding and you notice they’re all new. They’re all, like, in the last couple of months which shows you that, when you file a trademark, there’s two types of basic files – the intent to use and the actual regular filing – and, in order to do the regular filing, you actually have to use the mark in the marketplace. As soon as they started marketing this and made the announcement, they actually filed. So, they have stuff like “Skinny with a Kick” – these are all skinny brands – “Skinny Beach, Skinny Club, Skinny Luau,” and then others like, “Buffalo State of Mind” – that’s a good one.

MATT: So, yeah, they have six new sauces and ten new crusts. So, basically, pointing out that the crust is far more important because people want the options.

NASIR: That doesn’t mean more important. Just because there’s more variety of it doesn’t mean that it’s more important.

MATT: Even though some of them are pretty questionable, I bet. Like, Ginger Boom Boom – what toppings would work with a ginger-based crust? Or Get Curried Away? So, a curry-based?

NASIR: I don’t think I want my crust flavored that much, you know?

MATT: Yeah. I’d rather just have it be…

NASIR: Nice and plain, right? Because you don’t want it to be overshadowed by the sauce, right?

MATT: The pretzel one’s a little bit intriguing because I like soft pretzels a lot so I could see that work.

NASIR: Yeah, and I think they’ve had pretzel crusts other places, I think, too.

MATT: Yeah, Little Caesar’s I know has one. That one looks pretty awful because its base is nacho cheese. That just seems excessive.

NASIR: I have to mention this one Pizza Hut trademark that they filed earlier this year in January. It says, it’s a word mark, “It’s about to get real kitchen-fried, not oven-dried.” What does that mean? I don’t know.

MATT: Well, Pizza Hut has always done stuff to their crust though because they had the stuffed crust.

NASIR: Were they the first?

MATT: I think so.

NASIR: Or the only one?

MATT: They probably weren’t the only ones but I think they were the first because I remember it was a huge deal – well, it was a huge deal to me when it first came out.

NASIR: Actually, you’re right. It says this was filed on December 2, 2013 – “Original Stuffed Crust.”

MATT: Yeah.

NASIR: I mean, I think they had the stuffed crust before then but, as far as claiming to be the original… If you go back, you can see how – I’m sure every company is like this but – you can see their timeline of trademarks. It’s funny. “Ultimate Cheese Lovers” – okay, that’s fine. “Socialocus” – I’m not sure how to pronounce that one. “Seriously Savory Supreme” – alliteration. “Score Big with Sides, Get More Flavor with Every Dip Dive and Score” – okay,

MATT: Interesting.

NASIR: Anyway, it goes on.

MATT: Because they used to have three kinds – it was thin and crispy, which I wonder if they had a trademark on that; and then, their personal regular hand-tossed, I think; and then, their deep-dish.

NASIR: Yeah, that makes sense for having different types of crust as far as the variations of thickness.

MATT: I remember they had a huge one at one point like the New Yorker because I used to get that a lot.

NASIR: Oh, really?

MATT: Yeah, it was pretty good.

NASIR: Well, one of my friends, their family owns – you should try it out – New York Giant Pizza. Like, basically, you can barely fit it within the doorway.

MATT: In San Diego?

NASIR: Yeah, in San Diego. There’s, like, three or four locations.

MATT: Pretty big.

NASIR: You see it?

MATT: Yeah. I’ll have to bring it up again. When I worked at that one place, the biggest we made was 20-inch. But, the box, the biggest box we had was 18-inch. 20 was for the pizza slices out front and 18 was for, like, the biggest we could…

NASIR: Oh, okay. So, you couldn’t deliver it then.

MATT: But 18 is huge.

NASIR: Yeah, it is huge.

MATT: Like, the normal large is, like, a 14-inch at a normal place, and 14 was our small, I think.

NASIR: So, yeah, Pizza Hut’s rebranding – good for them. Makes me want to try them out and check them out. But, yeah, it just shows you, when any company goes through something like that, most of the time, the focus is going to be on trademark, I would say – again, unless you’re changing your name, which can be more of a hassle because everything from refilling your entity to assumed business names to contracts and things like that will become an issue.

MATT: Yeah, it’s going to be the intellectual property that’s going to be the big one and none of your agreements should be voided.

NASIR: Yeah, exactly.

MATT: 28-inch pizza, wow!

NASIR: Is that New York Giants?

MATT: That’s their biggest one – 14, 16, 20, and 28. So, even then, BBQ Chicken, their picture has the swirl.

NASIR: Does it? Really?

MATT: Yeah. All right, well, I know where I’m going after this.

NASIR: We should have a pizza contest.

MATT: Should have a pizza-eating contest.

NASIR: I think that’s a good idea.

MATT: Speaking of pizza-eating contests… Oh, I screwed that up. The question of the day does relate to what we’re talking about.
“At what point can I file an intent to use trademarks?”
This is interesting because it sounded like some of the ones you looked up for Pizza Hut might have been an intent to use because it sounded like they were things that weren’t even, like, some of the names you were saying, I’d never even heard of so maybe they were ones they just had filed thinking they might go that route and, well, they didn’t.

NASIR: And, I think, it’s good practice for a brand owner who wants to establish a filing date that’s earlier than when they want to actually start using it and it documents their intention to do so. I know a lot of trademark attorneys are big proponents of it. but, for some reason, it’s kind of confusing to me because, unless it’s a trademark that is likely to be taken, then you should definitely, if it is likely to be taken, then you should definitely file, as soon as possible, an intent to use. Sometimes, it takes a little bit of time to start actually using the brand and so, like, let’s say you start a business, you make up the website and so forth, it’s going to take you some time and you start marketing it then people might take your brand name and steal it. But then, even that’s unlikely. So, often, what we end up doing is just filing when you start using it, but it’s definitely better practice to do otherwise.

MATT: Yeah, and I would agree with that. I mean, there was a recent case, stealing with an issue with an intent to use and, from this example, basically, I think it was an email with an attached proposal of whatever name and that was sufficient enough to show an intent to use. So, the bar is pretty low.

NASIR: Yeah, it’s pretty low.

MATT: Unless you just came up with something randomly right now and filed an intent to use, like, you would have had the intent to use it at some point.

NASIR: Believe it or not, you can actually have this intent to use application for quite a while. When you file, you have six months to file an actual statement of use and so forth. But then, you can also extend that six months, I think, at least three times or so. You’re effectively talking about a couple of years, I believe – two years to start using the trademark. I’m just wondering how valuable that is. It’s just not as common for most. I mean, there are definitely circumstances necessary for it and, again, best practice is to file as soon as possible whether it’s an intent to use or the actual regular filing. But you also have to weigh the practicality and the cost of doing so as well.

MATT: Right. I think that anyone who would ask this question, it would be when you are serious with moving forward, I guess, if that even makes sense. I’m still thinking about that large, that gigantic pizza. There’s a place in Saint Louis – my friend and I were going to do this once, we never did – I don’t know how big it is but it’s, I think, ten-pound pizza. So, it’s you and a friend get to try to eat it within a specified period of time and, if you do it, you get it for free.

NASIR: That’s five pounds each.

MATT: Yeah. Back in the day, I’ve had some big eating, like, I’ve eaten five pounds of food at once because I’ve done a few amateur eating contests.

NASIR: Okay. It looks like we have our first candidate for an eating contest.

MATT: I’m not allowed; my wife won’t let me anymore.

NASIR: I’m serious. I think we should do that. It’s going to be fun.

MATT: Tell us what you think. Oh, it’s only 28 inches…

NASIR: For two people?

MATT: The pizza weighs ten to twelve pounds.

NASIR: Yikes.

MATT: Oh, okay. That’s what it is. So, it has all these toppings on it. Oh, $500 to any two-member team that does it.

NASIR: Man, we should enter in.

MATT: The crust, yeah, the crust looks pretty thick.

NASIR: Where is that at?

MATT: Saint Louis.

NASIR: Yeah, we just have to fly there.

MATT: I have a good friend that lives in the area so…

NASIR: Okay.

MATT: Place to stay.

NASIR: Oh, okay. I was going to say, “Should we send him to do it or what?”

MATT: No, he couldn’t do it.

NASIR: Okay. Well, I think that’s our episode – our final pizza episode of the week. Tune in next week when we just talk about pizza every day.

MATT: Yeah. Keep it sound and keep it smart.

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Legally Sound | Smart Business covers the top business stories with a legal twist. Hosted by attorneys Nasir N. Pasha and Matt Staub of Pasha Law, Legally Sound | Smart Business is a podcast geared towards small business owners.

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