This blog post was written by INTA's 2015 Non-Profit Committee.
Even if your nonprofit organization has taken steps to register its trademarks, there is a risk that those trademark rights could be lost. Therefore, it is important to take affirmative steps to avoid abandonment of the trademark and the valuable associated rights and privileges.
Trademark abandonment can happen in a number of intentional and unintentional ways.
1. Non-Use. In many jurisdictions, rights can be abandoned through non-use of the marks with no intent to resume. If your nonprofit organization does not use a trademark for several consecutive years, local trademark law may consider that mark to be prima facie abandoned. At that point, in any attack on the mark, the burden would fall on your organization to prove that the mark was not abandoned. Therefore, it is important to verify that your organization is using its registered trademarks regularly, on or in connection with all of the goods and/or services designated in the registration. The marks also should be consistently and properly used in associated marketing or advertising materials.
2. Improper Use. Trademark rights also can be abandoned through improper use of the mark by your organization itself or by others—including, and perhaps especially, your members, donors, local chapters, and affiliates. Commonly, improper use includes misspellings or generic use of the mark, such as using it as a noun and not as an adjective. To help avoid these traps: (1) draft trademark use guidelines for your organization; (2) carefully follow those guidelines; and (3) enforce proper use of your marks by members, affiliates, etc.
3. Failure to License. In some jurisdictions, trademark rights can be inadvertently abandoned by failure to require anyone using the marks to enter into an appropriate license with the mark owner. It is prudent to require a license from affiliates, chapters, branches, members, and anyone who wants to use your organization’s marks. In the United States, licenses must also include the goodwill of the mark and adequate quality control over the licensed use of the mark. If a written license is not feasible, there should be at a minimum a documented acknowledgment specifying the proper uses of the trademarks, and a clause terminating the use when the affiliation, membership, or similar relationship ends.
4. Failure to Enforce. Trademark rights can be abandoned as a result of failure to monitor and enforce against infringements and dilutions of the marks. It is important to have a trademark watch system in place, at least for your principal marks, to advise you of unauthorized use of the marks and applications filed by third parties for marks similar or identical to yours.
Your organization also should monitor the Internet, including social media sites, for any unauthorized uses of its trademarks, or confusingly similar marks, by unaffiliated persons. If infringement or dilution is found, it is important to correct the situation by sending a cease and desist letter promptly.
Trademarks represent the hard-earned goodwill and reputation of your nonprofit organization. Losing the mark means your organization may no longer have exclusive rights in the mark and a third party could capitalize on that goodwill and reputation. Abandonment should occur only through a strategic decision-making process, known as retirement.