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Nonprofit, Protect Thyself! to Trademark or Not to Trademark
Linda Beeman, Aurora Grants

February, 2013

 

When it comes to trademark protection, the law treats nonprofit and for-profit organizations just the same. The same rules apply and the same protections exist. However, the implications of infringement may be even more devastating for a nonprofit. What if money that donors thought they were sending to your organization was going somewhere else instead? With the growing trend toward online giving, it’s easy to imagine how this could occur; but unless you have registered your trademark, your chances for recourse are slim.

 

The word “trademark” can be used in two ways: first, in the generic sense by referring to all marks used to protect goods and services; or secondly, in reference to marks specifically on goods (TM), as opposed to marks on services, i.e. ‘service marks’ (SM). Trademarks can include words, letters, numbers, phrases, designs, scents, colors, sounds – or any combination thereof. The United Way logo is an example of a trademark that combines designs, words and colors.

 

One example of a nonprofit that uses service marks is Boys Town of Omaha, Nebraska. Founded in 1917 by Father Flanagan (made famous in the 1938 movie starring Spencer Tracy), Boys Town has developed a model that is used in foster homes around the world, such as Boys and Girls Country in Hockley, Texas which has been home to over 1,300 children in the last 40 years. Boys Town Foster Family Services(SM) is registered as a service mark to protect this service model from being copied or duplicated.

 

After deciding whether a trademark or service mark is needed, the first step is to make a preliminary online search by using “Google” or “Yahoo” to determine if another entity is using the same mark for similar goods or services. If the answer is no, the next step is to search the US Patent and Trademark Office (USPTO) website to see if similar or identical trademarks have either been filed for registration, or have already been registered. By performing these two steps on your own, you will minimize your chances of paying for an unsuccessful trademark registration, or for damages due as a result of infringing upon the prior rights of another trademark owner.

 

Once these initial searches are complete and it appears that no duplication exists, it is time to hire a professional. An intellectual property attorney can further check registrations at the state level, and trademarks that are in use but have never been filed at both the state and federal levels. With your ability to register ensured, the attorney will be able to file a trademark application. Application fees vary but generally run from $300 to $400; an attorney’s fees for preparing and filing a trademark application with the USPTO typically run in the hundreds as well. The registration process can take anywhere from 10 to 24 months from filing date.

 

To expedite the process, here is some of the information you will need when hiring an intellectual property attorney:

 

• Is the trademark application based upon actual use of the mark (if so, be prepared to supply the date of first use) or an intent to use it?
• If it is already being used in interstate commerce, be prepared to supply an example of how the mark is used regarding specific goods or services.
• Where the trademark application is based upon a true intent to use the trademark, be able to specifically state how and when it will be used, and the goods or services that will be designated with the mark.

 

Once registration is complete, there are rules on how the trademark or service mark should be properly used so that you do not lose your rights to it. For example: do not insert capital letters, highlight, bold, or otherwise change the style of lettering; do not attach other terms with hyphens, add numbers, or otherwise embellish the trademark; trademarks should not be made plural, used in the possessive form, or made into a verb in a sentence.

One last word of caution: even when your trademark or service mark is registered, it is up to you to police it. Infractions that go on for too long unchecked, may render your right to the trademark unenforceable. For more information, refer to this article published online by the Public Counsel Law Center. SPECIAL NOTE: The lengthy canonization process to have Father Flanagan declared a saint was initiated in 2012.



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