From Aunt Jemima to Pearl Milling Company: Navigating Roadblocks in Trademark Registration

Selecting and protecting a new brand name is a daunting task for a company of any size.

Even for a company as large as Quaker Oats.

In recent years, Quaker Oats announced that it would rebrand its “Aunt Jemima” pancake and syrup brand to “Pearl Milling Company.” Nearly 3 years later, the company would finally receive a trademark registration for its new brand.

Why did it take so long?

Today, there are more trademarks filed with the United States Patent and Trademark Office than ever before in US history. One of the consequences of this volume is a higher probability of a conflict with another trademark.

The trademark filing for “PEARL MILLING COMPANY” was delayed for over a year because of a similar, prior-filed trademark.

This article will take a look at the lengthy rebrand timeline for “Pearl Milling Company,” as well as offer tips for any company looking to protect a new brand with a trademark registration.

How to Navigate the Trademark Registration Process

  1. Invest in a high-quality trademark clearance search. It currently takes approximately 10 months for a USPTO examining attorney to begin reviewing a new trademark application.

    By investing in a thorough trademark clearance search before filing a trademark application, you can determine if there will be any issues with any prior-filed trademarks. You don’t want to wait 10 months just to find an issue that could have been discovered prior to filing.
  2. If a problem is found during the clearance search, pivot to a different name. Your name (while important to you) is likely not going to sell your product/service for you. If you execute a strong marketing strategy over time, you will build the value into whatever name you pick.
  3. Work with an experienced trademark attorney. Trademark attorneys are your guide through the difficult trademark registration process. They will help you navigate the complicated process and greatly increase your trademark’s chance of registration.
  4. Have patience. The trademark registration process currently takes 15-18 months, if there are no issues with the trademark application. If you’ve followed the previous steps, your trademark will proceed through the lengthy process as quickly as possible.

    If not you may find yourself waiting nearly 3 years for a trademark registration, like Quaker Oats.

The Pearl Milling Company Rebrand Timeline

The Quaker Oats Company files a trademark for “Pearl Milling Company” with the USPTO.

“Pearl Milling Company” is a name with long ties to the brand’s history. It was the name of the Missouri mill that produced the original products for the brand.

Upon review of the application, the USPTO issues an Office Action to Quaker Oats. The Office Action was issued due to:

  1. A previously-filed pending application that is similar to “Pearl Milling Company.”
  2. The trademark being considered “merely descriptive.”

Quaker Oats submits its Office Action response to the USPTO, claiming that “Pearl” is not descriptive of their product or the process of creating it.

Quaker Oats’ response results in a suspension of the application, pending the outcome of the previously-filed, similar trademark application.

The prior-filed application is abandoned by the owner, clearing the way for Quaker Oats’ trademark to proceed.

The USPTO approves the “Pearl Milling Company” trademark for publication in the Trademark Official Gazette.

When a trademark is published, third parties have 30 days to file a “Notice of Opposition” if they believe a trademark they own will be damaged by the registration of the proposed mark.

The USPTO issues a Notice of Allowance. This means that once Quaker Oats proves it is using the “Pearl Milling Company” trademark, a registration will be issued.

In the United States, trademark law states that a mark must be used in commerce to obtain a federal registration.

Quaker Oats files the necessary Proof of Use with the USPTO.

In this case, the specimen it provided were screenshots of its products on Amazon.

The USPTO issues a trademark registration for “Pearl Milling Company” to Quaker Oats.

This trademark registration will last indefinitely as long as the mark is in use and properly maintained (i.e. filing for renewals.)

The trademark registration process is lengthy and can be complicated to navigate. Even large companies, can run into speed bumps along the way. By completing a thorough clearance search and working with an experienced trademark attorney, you have the best chance of successfully registering your trademark with the USPTO.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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