April 28, 2021

Introduction to Trademarks

Nonprofits, just like commercial corporations, have names, symbols and designs that identify the nonprofit as the source of a good or service.[1] These identifying words, phrases, logos, and designs are trademarks.[2]  

Simply put, a trademark identifies to the public that the goods or services come from you and not from another organization. Famous examples of trademarks include the white script Coca-Cola logo, the bullseye logo of Target, and the golden arches of McDonalds. Famous nonprofit trademarks include the Red Cross, the Boy Scouts of America fleur-de-lis, and the World Wildlife Fund panda.  

The Purpose of Trademark Law

The trademark laws are intended to prevent confusion about the source of a good or service and, accordingly, a person’s rights in a trademark are ordinarily limited to particular markets, known as “classes of goods,” and markets into which the person may be expected to reasonably expand. For instance, both Delta Faucets and Delta Airlines use the term “Delta” in their names; however, since one’s market is goods for home and commercial water supply while the other’s market is services related to travel and shipping, there is a limited likelihood of confusion in both companies’ use of the word “Delta.”  

Even for nonprofits, failing to understand and follow best practices with respect to trademarks can lead to confusion and litigation. The unfortunate and telling dispute between Alzheimer’s Foundation of America and Alzheimer’s Association is a sobering example.

Trade Names vs. Trademarks

Trademark law can be confusing, partly because of some overlap in terms that nonprofit leaders may encounter when operating their organizations. For example, there is an important difference between a trade name, sometimes called a “business name,” and a trademark.  

A business name is the name under which a particular state or jurisdiction has granted you a right to do business. Registration of your business name with the state does not automatically also grant you trademark rights. Instead, separate registration of your business name, or other mark you utilize in your business, with the United States Patent and Trademark Office (“USPTO”) is required to protect your trademark rights. The USPTO does not require that an attorney file for a trademark; however, you should consider consulting with an attorney to discuss these issues, even if you ultimately determine to file without an attorney’s assistance.  

How to See if a Trademark is Available

Prior to starting a nonprofit or launching a new activity or program, you should conduct a search to determine whether the name you have chosen may be registered. The USPTO’s website includes its Trademark Electronic Search System (“TESS”), which allows you to search for federally-registered trademarks. Again, you should consult an attorney to determine whether any search results may limit your ability to use a particular mark.  

Learning More

For more information about trademarks, you should review the Trademarks section of http://www.uspto.gov. This section includes discussions regarding additional basic information regarding trademarks, FAQs, plus explanations regarding how to apply for a registration, including a series of Trademark Information Network broadcasts that provide a step-by-step explanation of the application process.

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[1] At one time a distinction existed between trademarks, which identified goods, and service marks, which identified services. This distinction has largely ceased to exist with the terms “mark” or “trademark” being used regardless of whether a good or service is being referenced.      

[2] At one time a distinction existed between trademarks, which identified goods, and service marks, which identified services. This distinction has largely ceased to exist with the terms “mark” or “trademark” being used regardless of whether a good or service is being referenced.