What’s In A Name?: Non-Profit Branding And Trademarks
“What’s in a name? A rose by any other name would smell as sweet….” (Romeo and Juliet, Act II, Scene II). Although I cannot disagree with Shakespeare’s words when it comes to affairs of the heart, a name means everything concerning the favor and reputation of a church or non-profit. Protect your “rose” by taking a few steps to preserve its name and public goodwill.
First, this article will discuss the similarities and differences between a “brand” and a “trademark,” demonstrating why both are important in achieving organizational goals. Last, it will present steps your organization should consider taking to protect its goodwill and reputation.
I. BRANDING AND TRADEMARKS
A “brand” is the public identity of a business, an identifier, which connects the business to the goods and services it provides to the public. The brand can be represented by a name, logo, acronym, or something else that the consumer associates with the business. On the other hand, a “trademark” is the legal term of art given to the intellectual property which the brand represents.
To illustrate a “brand”: You are driving to work one morning and realize you forgot to grab your coffee on the way out the door. You don’t panic, because you know that soon you will pass either those familiar golden arches or a coffee shop adorned with a green and black Siren. Those descriptions, alone, likely inform you of the exact companies to which I am referring. That is because the McDonalds and Starbucks logos are nearly synonymous with their respective companies.
Those logos, along with the names of the two businesses, are also trademarks which have been registered with the U.S. Patent & Trademark Office. However, trademarks include more than business names and logos; they can include slogans, educational materials, internal programs, and many other ways for an organization to identify the products and/or services it provides to the public. Trademarks are also registered in distinct classes which help identify the type of goods and services provided under the trademark. A trademark may be in multiple classes depending on the number of goods and services provided.
There are two types of trademarks: word marks and design marks. Briefly, word marks are simply that – the word or words of the brand without any restrictions on size, font, color, etc. This type of mark provides the greatest protection of a brand because the organization can change the style of how the word(s) are used without fear of losing the trademark protection. Likewise, a design mark limits the mark to a specific size, font, color, etc. of the word or words used. Logos either with or without the word(s) are considered design marks. Design marks provide organizations the ability to register a word or phrase which it may not be able to register as a word mark due to a variety of reasons. However, if the organization were ever to change the style of its mark or its logo, it would lose trademark protection.
II. WHY TRADEMARK YOUR BRANDS?
Particularly for churches, the thought of registering its name, logo, or ministries for trademark protection is a novel concept; something only very large churches or ministries considered. Due to the advent of the internet, the ability for all churches and non-profits to expand their ability to reach new individuals and resources continues to grow daily, if not hourly. Any church or nonprofit that uses the internet to promote itself is operating on a global scale since anyone in the world with a computer, tablet or smartphone and a Wi-Fi connection can access your site.
However with such rapid expansion, the ability of others to disparage the goodwill of these organizations or divert potential resources for their own personal gain increases at an equally rapid rate. Without a federally registered trademark, a church would have very little ability to stop a former employee from purchasing a domain name and creating a website using the church’s name. Another example is a third party sets up a website using a nonprofit or ministry’s name and logo requesting donations. However, those funds never reach the organization and are used for that third party’s personal gain. What recourse would the organization have to stop that third party from using its brand for nefarious purposes?
III. STEPS FOR REGISTERING YOUR TRADEMARK WITH THE U.S. PATENT & TRADEMARK OFFICE
Because federal trademark registration is a costly in both time and money for a church or non-profit, great care should be taken in making sure that it is the best option for your organization. Currently, the U.S. Patent & Trademark Office (hereinafter the “PTO”) charges a non-refundable filing fee of $325 for an electronic trademark application for one mark in one class. Word marks and design marks are considered separate marks. Classes are the types of goods and services provided under your brand in which your organization wants trademark protection. Thus, if your organization uses its brand in connection with charitable fundraising through the sale of clothing and accessories, an application for federal trademark registration will, on average, take between six to nine (6 – 9) months from submission of the application to receipt of the certificate of registration. This average timeframe does not take into account any third party opposition to an application, which would add additional delay.
1. Identify your areas of influence and resources
The first preliminary step a church or nonprofit must take is to determine if the program or ministry providing the goods and services will be a long-term or short-term program. Due to the above time and finance commitment outlined above, a program that will only be in existence for a few months or a year may not be worth the effort and expense to seek federal registration as the certificate may not arrive until the program is near completion or already ceased activities.
The second step a church or nonprofit should take in determining if it should file for trademark registration with the PTO is to confirm it is engaging in interstate commerce. An organization engages in interstate commerce with its goods and services are being provided in at least two states. As discussed at the beginning of this article, a presence on the internet is a very easy way for an organization to evidence interstate commerce. Another way to evidence interstate commerce for a church or non-profit is evidence of charitable donations from one or more individuals residing in another state.
Once your organization has determined that your program or ministry is one that will continue for the foreseeable future and that you are or will be engaging in interstate commerce, then I would recommend that your organization devote some initial resources into researching whether you can trademark the name.
2. Identify potential names for branding and trademarking purposes
Now that your organization has completed the above preliminary steps and determined that seeking federal registration is possible and desirable, the next step is narrowing down the best brand name or phrase for your program.
When choosing a brand name or phrase for trademark purposes, the name should be something that provides some connection between the organization and the goods and services being provided. However, your organization should avoid names that simply tell the consumer the goods and services it provides. For example, a program that collects cans of food to distribute to the needy would likely not be able to register the phrase Cans for the Holidays. However, this same ministry may be able to register the phrase Beyond the 5000 in connection with its services. In the first example, the phrase merely describes the services provided – providing food to those in need; the second connects the Bible story of Jesus feeding the 5000 with 5 loaves and 2 fishes to the program’s purpose of ending hunger in its community.
If your organization has the available resources to hire an outside marketing firm or has an internal marketing department, now would be the time to bring them on to help evaluate what names would test best with the public in connection to the goods, services, and programs you would be providing through your program. We strongly encourage any organization to decide on a primary potential brand name for trademark registration but also choose at least two to three alternative names and rank them in order of preference.
3. Perform a preliminary internet research
Once the potential brand name has been narrowed down to the top three or four, the organization should perform some initial internet due diligence on these names.
The organization should enter each name into an internet search engine (Google, Bing, etc.) to determine if your potential brand names are already in use. By enclosing each name in quotation marks, it will focus your search on those third parties who may potentially be using your exact brand name. The greater the number of exact matches found, the weaker your claim of uniqueness before the PTO becomes.
Next, the organization should research and purchase all available domain names containing the potential brand names. Depending on your organization, we generally recommend purchasing all four of the big domains – .com, .org, .net, and .biz. We also recommend purchasing domain names in both singular, plural, extended phrases, and common misspellings of the brand names. Purchasing these additional domain names will reduce the ability for third parties to misuse your name for their own purposes or to negatively impact your ministry.
4. Consult with a knowledgeable Trademark attorney
After conducting your initial research on your potential brand names, your organization should contact and retain a knowledgeable trademark attorney to assist you through these final steps in the trademark registration process.
An experienced trademark attorney will recommend and assist you in conducting a comprehensive trademark search through, typically, a qualified IP company. The search report provides a detailed listing of all registered, pending, and cancelled marks with the USPTO related to your potential marks in those classes you are considering. Once available, the report should be reviewed by your trademark attorney to determine the likelihood of your potential marks being registered with the USPTO. Although there is some additional cost with obtaining one of the comprehensive searches and having your trademark attorney review the findings, those costs would be much less than losing your filing fees for a mark that will be rejected by the USPTO or having to defend your mark from trademark infringement claims by third parties.
5. File an application for trademark registration
If your trademark attorney, based on the trademark search report, determines that your potential marks would be able to be registered with the USPTO, the final step is to prepare your application for registration.
Your trademark attorney will work with you on further refining the classes of goods and services to be protected under your mark in preparing your application. Additionally, if your organization is already using the mark in connection with those identified goods and services, you will need to submit examples of your organization actually using your mark (i.e. flyers, clothing with the brand imprinted on it, etc.).
Once the application is submitted, your trademark attorney should update you throughout the process. If the USPTO has any questions, comments, or concerns with your application, they will notify you of these issues through an Office Action. Office Actions must be responded to within six months of their submission by the USPTO. Your trademark attorney will help you in responding to these Office Actions with the goal of moving your application onto publication.
At publication, the USPTO will allow third parties to submit objections to the potential registration of your marks. The grounds for such objections may be prior registration of a similar mark, first use in commerce, or other reason. If no third party objections are filed with the USPTO after the designated publication period, the USPTO will register your trademark and provide you a certificate of registration evidencing that your trademark is now protected under federal trademark law.
6. Maintain your registration
Once federally registered, your organization may want to contract with a reputable trademark monitoring company. This company will monitor the USPTO’s database and provide regular reports of pending marks which may be considered similar to your mark(s). This will provide your organization ample opportunity to determine if these potential marks infringe on your trademark and, if so, file an objection with the USPTO. If a trademark owner files to enforce their trademark rights against infringing third parties, they could potentially lose that protection. Ask your trademark attorney for his or her recommendations and estimates for monitoring companies.
Additionally, your organization will need to file renewal applications with the USPTO at regular intervals. The first renewal application must be filed between the fifth and sixth anniversary of the mark’s registration. The second renewal application must be filed between the ninth and tenth anniversary of the mark’s registration. Trademark owners will need to file renewal applications by every tenth year thereafter to maintain their federal registration. The USPTO will also not provide you advance notice of these deadlines. These dates should be placed on your organization’s calendars as well as your trademark attorney’s calendar. As with the initial application, these renewal applications also require non-refundable filing fees so your organization will need to budget for these fees to maintain federal trademark protection for your brand.
IV. CONCLUSION
A Church or nonprofit organization’s reputation and goodwill are intertwined with its brand. Because of this, your brand is one of your organization’s biggest asset and also its biggest target by those who either want to profit from it or disparage it. By investigating and taking reasonable steps to assure that your brand is properly registered, your church or organization’s ability to grow and expand its mission will exponentially bloom and prosper.
Disclaimer: This memorandum is provided for general information purposes only and is not a substitute for legal advice particular to your situation. No recipients of this memo should act or refrain from acting solely on the basis of this memorandum without seeking professional legal counsel. Simms Showers LLP expressly disclaims all liability relating to actions taken or not taken based solely on the content of this memorandum. Please contact Robert Showers, Daniel Hebda at djh@simmsshowerslaw.com or Justin Coleman at jrc@simmsshowerslaw.com for legal advice that will meet your specific needs.
