This blog post was written by INTA's 2015 Non-Profit Committee.
Trademark registration is important (see “Protecting Your Nonprofit Organization’s Trademarks: Registration”), but registration alone does not stop third parties from using marks similar to those held by your organization. It is up to your organization to monitor use of similar marks by others and to enforce its rights against those third parties. The distinctiveness or strength of your marks can be reduced if they are used by third parties without your organization’s authorization, because use of similar names and marks by others can lead to confusion among potential donors, or even fraud or abandonment.
- Monitoring. It is important to be aware of your competitors in the marketplace and to monitor the names and marks they are using. A straightforward way to manage this is through periodic online searches of your marks. Such searches can include business name searches, online review of telephone directories, and review of news sources. A sophisticated approach to trademark monitoring could include a formal watching service that searches for third-party applications for similar marks that have been advertised for opposition purposes; such services are offered by commercial trademark search firms. Monitoring also may include keeping track of the use of your marks on the Internet, in particular on blogs and social media sites. Some of these tasks can be assigned informally to volunteers or employees and set out in your brand guidelines.
- License Agreements. Any third parties that are using your marks should be required to enter into a license agreement with your organization and to abide by your brand guidelines. (See “Protecting Your Nonprofit Organization’s Trademarks: Regulating Use Through License Agreements.”) A less formal agreement may be sufficient if actual trademark use is not occurring—that is, if the mark is being used in some way other than as a trademark—and the user is willing to acknowledge your organization’s rights in the mark and to abide by your conditions for use.
- Opposition Proceedings. From time to time it may be necessary to commence trademark opposition proceedings against third parties to prevent the registration of marks similar to yours. Even if your organization is using outside counsel for these matters, it is important to be aware of the trademark opposition process in your country and all relevant deadlines.
- Cease and Desist Letters. It also is useful for your organization to have available a boilerplate cease and desist letter to send to third parties to persuade them to stop using similar marks. Such a letter should be customized and completed to fit the circumstances in order to address the issue of concern. If successful from the outset, a cease and desist letter can help avoid litigation. It can also be used to initiate settlement. It is also useful to have a precedent of an undertaking to be signed by the third party to bind it to its commitment to cease use of the mark, and perhaps as well a model settlement agreement, to be used in resolving disputes.
Before sending a cease and desist letter or initiating an opposition, it is important to assess your organization’s position, including the strength of your case, the importance of the mark, the cost of proceeding, the potential negative consequences (e.g., to your reputation, if your organization is challenging another nonprofit), and the consequences of not proceeding. An investigator can be invaluable in determining information about the third party to aid in this analysis, to ensure that you have full knowledge of all relevant facts before proceeding.
- Cancellation Proceedings. It is also useful to be aware of competing marks that can be cancelled for non-use, in order to keep your local trademark office register clear of marks similar to those held by your organization. Finally, from time to time, court proceedings may be necessary to enforce your organization’s rights; in most cases, however, matters can be resolved before you have to resort to such action.