Agreement Reached in Nonprofit Trademark Dispute

January 12, 2016       Mark Hrywna      

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The Detroit Riverfront Conservancy averted a potential legal snafu after a probate judge filed trademark applications for versions of the organization’s namesake. Leaders of the nonprofit met with Judge Terrance Keith and he expressed “tremendous support for our work and for our stewardship of the Detroit RiverWalk,” according to Marc Pasco, a spokesman for the conservancy. “Judge Keith has been a friend of the conservancy and has a strong relationship with the Detroit Riverfront and with the people of Detroit,” he said. Keith, who published a book of photographs titled “Sunrise on the Detroit River: A Love Letter to Detroit,” filed trademark applications on Dec. 13 for “Detroit Riverwalk” and “RiverWalk Detroit.” The conservancy in 2008 had only trademarked “Detroit International Riverfront.” The conservancy issued a statement Jan. 6 after meeting with Keith, just days after a Crain’s Detroit Business story revealed that trademark applications had been filed. The judge decided he does not plan on pursuing the trademark request, according to the conservancy. “Judge Keith indicated his intent that the conservancy be the beneficiary of the trademarks Detroit RiverWalk and RiverWalk Detroit and has relinquished his rights in those trademarks to the conservancy,” Pasco said. Keith initially told Crain’s Detroit Business that he’d like to give a portion of proceeds – but not all –from the sale of merchandise and such to the conservancy. He did not return phone messages seeking comment. Formed in 2002, the conservancy reported total assets of $118 million in 2013 and total revenue of $12.9 million. Its mission is to maintain the Detroit Riverwalk, plaza and pavilions and help develop the second phase of Tri-Centennial State Park, and construction of additional plazas, pavilions and sections of the Riverwalk. The conservancy had left the door open and exposed rights that they do own by not registering properly with the trademark office, according to Andrew Price, a partner in the Washington, D.C., office of Venable, LLP. Filing a trademark application is not like filing to register a website domain name, Price said. If a domain name is available and you register for it, you simply get it. Entities don’t have to file different permutations of the trademark because the law is based on the likelihood of confusion between names, a test of trademark infringement, he said. “The proximity of these parties would help the conservancy in this case. If you had, San Antonio Riverwalk, it may be fine to co-exist with Detroit Riverfront Conservancy. But if you have Detroit Riverfront or Riverwalk, in the same area, that’s confusing. Context is all driven by proximity,” Price said. The process for obtaining a trademark includes evaluation by the U.S. Patent and Trademark Office to determine the likelihood of any confusion with other names. Even if an application survived this test, Price said the conservancy still would have an opportunity to opposite it or send a cease-and-desist letter asserting its rights to the name. While the conservancy’s case seems to have ended amicably, had it continued legally, the organization still had some recourse against the applications. What tends to happen when a trademark application has been made, an organization might wait for trademark procedures to work out, such as the opposition process, to resolve it more inexpensively, outside of the courts, Price said. It could take months for an application to get reviewed and published but an organization then could file its opposition and try to work it out in that stage, Price said. It would be a lot easier if the conservancy had filed applications and was able to present all of its registrations to stop any other trademark applications. “It’s easier to explain and cheaper,” Price said. “To establish acquired distinctiveness in this day and age is expensive,” he said. “Had they filed an application even a few years before they acquired distinctiveness, their rights actually will go back to that filing date nationwide. If they never filed an application, their rights start the date of acquired distinctiveness,” he said. “In my 20 years, there’s been a dramatic shift – especially in the last 10 years – of nonprofits, generally speaking, now on board with the need to protect trademarks and register them appropriately,” Price said. “Early and often is the rule for trademark filing because it’s so relatively inexpensive,” Price said. “As soon as you have the intention to use a brand, you should file. Even for one that could be descriptive like this. Most nonprofits are not like conglomerates that have all kinds of brands. In this case, there’s a couple brands,” he said. The trademark office fee is $275 plus any legal costs. “You’re not required to use a lawyer but doing it on your own is almost as bad as not doing it,” Price said. A nonprofit that has not properly registered its brands is then potentially dealing with bad press, he said, and “more expense in putting paste back in the tube.”