Why Should Nonprofits Care About Trademarks? (cont'd)
By: Kenneth E. Liu

Trademark protection prevents public confusion. Historically, Big Brothers of Massachusetts Bay provided mentoring services only to boys. But after it started serving girls as well, it changed its name to Big Brothers Big Sisters of Massachusetts Bay, which resulted in two organizations with “Big Sisters” in their names in the same city. In 2008, Big Sister Association of Greater Boston, sued for infringement after public confusion over the groups' identities. Such a situation may have been avoided if the respective marks had been better protected and appropriate license agreements been used. Without adequate trademark protection, organizations may intentionally or unintentionally use similar names, leading to confusion and the potential for damaged reputations or mis-directed donations.

Although nonprofits do not like to think of themselves as “competing” in the marketplace as for-profits do, in fact they do compete for a limited pool of donations. Trademarks distinguish an organization from similar groups, as well as from groups that have divergent aims. For instance, animal welfare groups are often frustrated by the contribution power of the name of the Humane Society of the United States®, an animal rights advocacy organization which does not operate or fund local animal shelters.

Trademark protection can prevent deliberate tarnishment of an organization’s name. Trademark enforcement is crucial for protecting constituents and donors from unscrupulous impostors, as well as people who deliberately attempt to tarnish a group’s reputation. For organizations that are ideological, issue-based, or religious in nature, trademark infringement can lead to a public relations nightmare. Consider, for instance, the People for the Ethical Treatment of Animals’ (PETA®) trademark battle with a cybersquatter. Using the domain name www.peta.org, a meat lover created a website entitled "People Eating Tasty Animals," a "resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research." Fortunately for the famous animal-rights group, it had registered its PETA® trademark and successfully retrieved the domain name.

Special concerns for nonprofit trademark protection.

Nonprofits, like for-profits, clearly benefit from strong branding and trademark protection. But unlike their for-profit counterparts, nonprofits (which include a wide variety of entities, such as charities, associations, foundations, churches, ministries, advocacy groups, and educational institutions) must also account for issues particular to their sector.

Consider carefully before adopting descriptive marks. As mission-driven entities, nonprofits often like to have names that immediately convey their purposes, such as “Center for Biological Diversity” or “Lupus Research Institute.” Nonprofits need to understand that such descriptive names are weaker and more difficult to protect. This does not mean that they should necessarily avoid such names, but should know the pros and cons of using weak marks before adopting them.

Register marks for nonprofit-specific services. A well-drafted description of goods and services sets the parameters for protection of a federally registered mark. Nonprofit organizations can register certain services that are unique to their sector, such as:

• “Charitable fundraising services” (Class 36) for solicitation of donations.

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