As a nonprofit lawyer, understanding trademark protection is essential for effectively representing any mission-based organization in today’s marketplace. Every business is becoming more aware of the benefits of branding on its business, and the nonprofit and tax-exempt organization is no exception.
Trademark protection is an area of intellectual property law that enables nonprofits to protect their names, logos, and slogans and distinguish them from others in the market. This blog post aims to provide a brief overview of the key aspects of trademark law that every nonprofit lawyer needs to know.
The Benefits of Registering a Trademark for Your Nonprofit
Trademark protection is vital for nonprofits because it helps them to establish and maintain a unique identity in a crowded marketplace. Nonprofits that have a strong brand identity tend to attract more volunteer and donor support because of their valuable branding. When there is confusion among consumers in the nonprofit space, it can have devastating consequences. The organization might lose donations and volunteer support or suffer reputational damage if potential donors or volunteers are confused between two similarly named organizations. Moreover, being forced to change an entity’s name or logo can waste a lot of time and money (including large legal costs) better spent on the entity’s mission.
Like any other company, nonprofits can be found liable of trademark infringement with severe legal consequences. Infringing on another organization’s trademark can result in the nonprofit being enjoined from using its name or logo and ordered to pay damages, which can be a significant amount of money. Additionally, a nonprofit may lose its ability to fundraise if it is found to be infringing on another organization’s trademark. This can have a significant impact on the nonprofit’s ability to operate. Given their mission-based focus, most nonprofits neither have the funding nor the resources to weather a lengthy legal proceeding.
How Should Nonprofit Lawyers Advise Their Clients?
First, nonprofit lawyers should not dabble in trademark law. They should ensure they are already well-versed in trademark law or secure the proper training. Registering trademarks provides nonprofits with numerous benefits. A registered trademark provides legal protection that helps prevent others from using a nonprofit’s name, logo, or slogan. Nonprofits can also earn revenue through licensing arrangements with other organizations. This additional revenue can support the mission of the nonprofit. Trademark registration also adds significant value to a nonprofit’s brand identity.
Second, nonprofit lawyers must understand the importance of trademark protection for nonprofits. Trademarks provide valuable legal protection for nonprofit organizations and help prevent the legal consequences of infringing on other organizations’ rights. Registering trademarks also provides benefits such as additional revenue and brand identity. Nonprofits that invest in trademark protection benefit both the organization and the communities they serve.
Should your Nonprofit Client Register Their Trademarks?
Any nonprofit that raises funds in more than one state should apply for federal trademark protection. For local nonprofits, they should similarly consider seeking state trademark registrations for their distinctive names, logos, and slogans to secure their intellectual property rights and differentiate themselves from competitors. Because so many nonprofits are small and local, a proper clearance search will need to be conducted before applying for a registration.
Lessons for Nonprofit Lawyers
There are so many lessons here for nonprofit attorneys: (1) counsel nonprofit organizations about their trademark rights early when the entity is being formed; (2) ensure the legal advice you are providing is relevant the nonprofit’s intellectual property assets; (3) and above all else conduct the proper trademark searches to ensure the nonprofit’s trademarks are available to use and not infringing on other’s common law rights. In the Trademarkabilities® Masterclass, we teach all of this and more! The Trademarkabilities Masterclass is a comprehensive course designed to teach attorneys and paralegals how to confidently practice trademark law at the USPTO. To learn more, check out our website here.
Stacey C. Kalamaras is the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. Stacey started Trademarkabilities to share her passion teaching the law with the next generation of lawyers and help them become practice ready lawyers. Contact us at: hello@trademarkabilities.com.
Stacey is also a seasoned trademark attorney and currently works in-house as Senior Counsel for a multi-national candy company. She previously owned her own solo trademark practice, which she scaled and sold. She has been recognized by her peers for her outstanding knowledge and service in intellectual property law.