Nonprofit names and acronyms may be trademarks protected under federal law or at common law. But what happens when your nonprofit's name or acronym is used by another nonprofit? Can you prevent the other nonprofit from using your mark or will your nonprofit have to give up its mark after all the time and money expended on building recognition in the mark? The answer is: it depends.
It is important for every nonprofit to understand the basics of trademark law in order to secure its trademark rights, to recognize infringement of its marks, and to avoid possible infringement of someone else’s trademark.
A trademark is any word, phrase, symbol, or design (or combination thereof) used by a company, individual, or nonprofit to identify the source of a product. A service mark is the same as a trademark except that it identifies the source of a service. A certification mark is a mark used by an authorized third party to indicate that their products or services meet the standards set by the owner of the mark.
Choose your mark carefully, because not all trademarks are entitled to protection under either common law or federal law. Generic marks (those that are the common name of the product or services offered, for example, CARS for cars), or descriptive marks (those describing a feature, function, quality, characteristic, use or user of the product or service offered, for example, USED CAR DEALER for a magazine in the field of automobiles), marks that are primarily surnames, geographically descriptive marks, national symbols or scandalous marks are generally not protected. However, descriptive marks and surname marks can acquire trademark significance through extensive use of the mark over time. It may also be possible to get around these problems by combining a generic, descriptive or surname mark with a distinctive logo design; the words together with the design may be protected.
Ideally before a trademark is chosen, the mark should be “searched” and cleared for availability. Searching can answer two questions: will the use or registration of the mark infringe someone else’s mark, and will you be able to stop or prevent someone else from using the same or a similar mark to identify the source of the same or similar products or services? It is worth noting that infringement of a trademark does not have to be intentional; innocent infringement still forms the basis for a cause of action against the later user. Therefore, searching and clearing trademarks can be a critical part of managing and protecting your nonprofit’s intellectual property.
Trademark rights are established either by use of the mark in commerce, or by federal registration with the U.S. Patent and Trademark Office (“USPTO”). For state or local nonprofits, state registration also is available. Generally, the first party to use the mark in commerce or the first to file an application for registration has the right to use or register the mark. For example, if the Americans for Hiking Safety filed a federal trademark application for the mark AHS with the USPTO on March 1, 2020 covering nonprofit services, namely, promoting hiking safety, and the American Hiking Society begins using AHS on May 1, 2020 in connection with nonprofit services, namely, promoting the interests of hikers, the safety group would have superior rights (once the application matures to a registration) and likely could prevent the latter group from using the AHS mark.
Trademark rights extend to the same or similar marks when used to identify the same or related products or services. There may be a likelihood of confusion between two parties’ use of the same or similar mark on the same or similar products or services in the same industries, such as in the AHS example above. On the other hand, two different users of the same mark may be able to co-exist if the marks are used on different products or services in different industries. For example, Americans for Hiking Safety and the American Helicopter Society could both use the mark AHS.
One exception to this rule is if one of the marks is a “famous” mark. The owner of a famous mark may be able to prevent others from using the same mark on any product or service if such use causes dilution of the distinctive quality of the mark. However, a recent Supreme Court ruling has made proving dilution of famous marks much more difficult, especially when the marks are not identical.
Understanding the basics of trademark law will help strengthen the value of your nonprofit’s trademarks as well as prevent your nonprofit from infringing the trademark rights of others, with the sometimes devastating consequences that can follow.
For more information, contact the author at jtenenbaum@TenenbaumLegal.com.