Trademarks: Protecting Your Nonprofit’s Brand

December 9, 2013       Karen Wu      

With the daily barrage of information competing for your donors’ attention, how does your fundraising campaign stand out and get noticed? Many nonprofit managers don’t realize that “brand” is one of the organization’s most valuable assets.

Donors are consumers, and consumers use brand recognition to help facilitate decisions about which products or services to buy. Strong brand recognition can play a vital part in the ability to bring in new donors while retaining existing supporters.

Every nonprofit manager should consider brand protection as a critical part of fundraising strategy, and that includes protecting trademarks, including registration and monitoring of third party use of them.

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. For example, the Make-A-Wish Foundation of America logo is one that has wide public recognition, and is a registered trademark in multiple classes of goods and services, ranging from charitable services to stuffed animals. Nonprofit managers should consider obtaining trademark protection for their organizational name and logo, as well as for the names of major charitable programs, and any unique taglines or logos used within major, multi-year fundraising campaigns.

Nonprofit trademarks are frequently licensed to others for fundraising purposes, most notably in the context of cause marketing promotions. When a company wants to advertise that a portion of the purchase price from the sale of certain products or services will benefit a named charity, the charity must grant the company a trademark license in connection with the charitable sales promotion.

Companies seeking charitable partners will frequently look for organizations that have strong brand recognition because such an alignment generally leads to stronger sales — a win-win for both parties.

In the United States, trademark rights derive from first use of the mark. However, federal trademark registration provides additional benefits that are important when you need to enforce your trademark rights against violators.

Registration benefits include providing the public with notice of your claim of ownership of the mark, a legal presumption of nationwide ownership, and the exclusive right to use the mark on or in connection with the specified goods or services, along with the right to use the ® symbol.

Before seeking trademark registration, it is important to undertake some due diligence to make sure your organization is not infringing on someone else’s existing trademark rights. If another person or entity has prior rights to the same trademark or one that is similar to your mark, your organization could face opposition when it files a trademark application, and even potential litigation for trademark infringement.

If your organization is able to successfully register its trademark, it has a responsibility to enforce those rights. Failure to enforce your trademark rights and prevent others from using the same or confusingly similar marks can result in weakening the strength of the mark or loss of your exclusive rights to the mark. While there are many ways to protect your trademark rights, a Google alert is a simple step you can take to monitor third party uses of your marks on the Internet.

Large organizations that are highly successful at fundraising are well aware that a strong brand is a key driver of that success, and make significant efforts to protect their trademarks. As you develop your fundraising strategy, make sure you don’t leave your most valuable assets behind.

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This article is for informational purposes only and should not be considered legal advice. Karen Wu is an attorney at the law firm of Perlman & Perlman, LLP in New York City. Her email is karen@perlmanandperlman.com