Few things are more fundamental than one’s name. It lets others know who you are and how to find you. May a nonprofit trademark its corporate name, so that others are not legally allowed to use it? Should a nonprofit do so, to optimally protect its reputation, to preserve its unique identity, to avoid confusion? And what else should a nonprofit’s leaders consider in developing – and protecting – the organization’s name?
Should We – and May We – Obtain Trademark Protection?
The first step in understanding whether trademark protection is important for a nonprofit’s name is to understand what a trademark is. A trademark is as “a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods [or services (aka service mark)] of one party from those of others.” A nonprofit’s name is only a trademark to the extent the corporate name is used to distinguish and identify your organization as the exclusive provider of the specific goods and services to the public. For example, the corporate name Wizzle Youth Center is not by itself a trademark. However, if and when the organization uses its name to identify and distinguish itself as the exclusive provider of these after-school youth programs to the public, it then becomes a trademark.
The second step is to identify whether the words used by the nonprofit’s name are eligible for trademark protection. Federal and state trademark laws do not, absent special circumstances, create legal rights in an owner and user of trademark that is using words that are generic or descriptive of the services or goods provided. Thus, in the above example, trademark laws would create strong legal protection for the word WIZZLE but not for the words YOUTH or CENTER because these words are generic and descriptive, respectively, of the services the nonprofit provides. Thus, the trademark protections available for a nonprofit’s name depend both on the use of the name and the uniqueness of the words vis a vis the services or goods provided.
For the strongest trademark protection, nonprofits should select words that are fanciful or arbitrary, or at least only suggestive of goods or services provided. The word WIZZLE in the above example is not a defined word and thus an excellent trademark term to the extent others are not already using it (discussed below). Defined words that have only an arbitrary connection to the services or goods are also great for trademark purposes (the mark APPLE to identify computers or watches). These marks are inherently distinctive and thus should be immediately afforded trademark protection.
The third step, make sure no one else is already using the name. Trademark laws are intended to enable the public to consistently identify the origin or source of services or goods. Thus, when you drive down the street and see a WIZZLE YOUTH CENTER, you can readily identify the service provider. For this reason, a nonprofit will only be afforded trademark protection in its name if it is clearly distinguishable from the trademarks used by other organizations that provide similar goods or services. The evaluation of whether a mark is confusingly similar to another organization’s mark includes the mark’s words, sound, meaning, connotation, and commercial impression. A mere difference in spelling will not create distinction.
To illustrate, a for-profit children’s educational program known as the WEASEL YOUTH CARE has existed for several years, or even months before, the WIZZLE YOUTH CENTER is launched. These marks are not identical but their similar sounds and services could easily mislead or confuse the public. Trademark laws protect the first user (the Weasel!). Thus, to ensure the mark is well protected, the Weasel has a duty to guard against this infringement by the Wizzle. If the Weasel permits these infringing uses by the Wizzle, the Weasel’s trademark rights are diluted making it more difficult to prevent future infringements by others. In this way, a trademark owner must police the marketplace and stop infringements to protect their legal rights to the trademark.
Is It Advisable to Adopt a Name Not Afforded Strong Trademark Protection?
Trademark laws empower an organization to hold the exclusive right to use a name to identify specific services or goods, and prevent others from using confusing similarities. In some cases, founders may not have any interest in securing trademark protection.
If trademark protection is not sought for a nonprofit’s name, related questions about distinctiveness and potential confusion nevertheless remain key. Is your chosen nonprofit name readily distinguishable, or will it easily be confused with other organizations? Even if your group does not care about trademark rights, are you adopting a similar name to an organization that already exists and is committed to protecting its rights?
Remember a corporate name is only a trademark if you use it as a trademark. A nonprofit can always create and use a distinguishing logo or other branding technique as a unique identifier to promote specifics goods or services, apart from its corporate name. A good example in the US is the trademark (RED)® which is used by the nonprofit corporation One Campaign to identify and promote its charitable fundraising and services to fight the AIDS epidemic.
Do Your Homework Before Committing
In addition to trademark rights, nonprofit leaders should have other items on their radar in selecting a new name. They should review the Secretary of State’s records to ensure that the proposed name is available in the states where the nonprofit intends to operate. Remember the website domains and other social media too. An organization should think through not only .org but also other common top level domains.
Whether trademark protection is desired or not for a nonprofit’s name, a corporate name’s descriptive qualities and relative uniqueness or distinctiveness are critical considerations. Think creatively, and make sure to carry out your due diligence on the organization’s name. Promote and protect your nonprofit’s name, programs, and reputation – and consider trademark protection too!