I recently looked at the BUILD-A-BEAR trademark portfolio and would like to share my thoughts on some good trademark strategies that they use. One trademark filing owned by BUILD-A-BEAR WORKSHOP, LLC, that I found was from 1996. It was for “IT’S A BEAR’S WORLD”. This trademark application was filed as an intent-to-use application, meaning that they had not used the trademark, but were planning to use the trademark and wanted to reserve the name while they prepared to use it. The trademark office initially rejected the application, but then allowed it with some changes. When an intent-to-use application is allowed, the trademark office requires that before they will issue the registered trademark, the applicant must submit proof of use of the trademark in their business. There is a deadline for filing the proof of use, and BUILD-A-BEAR obtained an extension, but when the extension ran out they did not file the proof and the trademark application went abandoned. While this may seem like a waste, it can be a good strategy to file a trademark for a new brand or product line that you want to explore. Once the trademark office has approved the trademark, then a business can more seriously study the brand name and how the market will react to the name. If they decide that the market likes the name, then they can begin using it and obtain a registered trademark, with the trademark rights already waiting for them. If they decide that the don’t want the name or take the business in a different direction, they can let the trademark application go abandoned. This trademark strategy can save a company money as they do not spend time and resources on investigating a name that will not be granted a trademark. If the name gets rejected by the trademark office or opposed by someone who does not want them to have the trademark, then they can easily change directions as they have not invested the marketing budget into studies and advertising.
I found 531 trademark applications owned by BUILD-A-BEAR, with 92 of them being active trademarks that are currently pending or registered, including “BUILD-A-BEAR”; “BUILD-A-BOOK”; “BUILD-A-PARTY” “MAKING FRIENDS THAT MAKE A DIFFERENCE”; “STITCHED WITH LOVE”; logos, and many others.
TRADEMARK STRATEGY: File a trademark 1st, then after it is approved, decide if it fits your business needs
(This section only contains information available to the public, and does not share any client confidential information. The cases discussed are not client cases.)