Trademarks – How Does It Work?

If you’ve started a new nonprofit, you probably went through the branding process – building a website, designing a logo, and allllll your other communications. For a geek like me, this part of a new venture  is SO fun! But do you know what’s not fun? When you realize another organization or business is using a similar or even the exact same name, logo, or design that you created. Cue the sad trombone sounds. So, how do you make sure the nonprofit’s assets are protected?

That’s where a trademark comes in. 

What is a Trademark?

Let’s say your org is dedicated to fixing and upcycling old clothing that might otherwise end up in a landfill. Grandma had mad sewing skills and an eye for fashion, and she’s passed it on to you. You designed this amazing logo that features Earth circled by a spool of thread and needle, and you’ve been using it consistently. Now what? 

It may be time to preserve your brand reputation by creating and registering a trademark.

If you own a trademark, you can prevent others from using your design to sell goods or services. These rights also protect consumers – that way, the public knows that they’re working with YOU, not with some other business. If someone uses a logo that’s confusingly similar to your trademarked logo, even if it isn’t identical, you can stop them from using it. You don’t want others out there giving the nonprofit a reputation you don’t want!

Intrigued? Let’s now go into how trademarks work.

“Finders Keepers”- Running a Trademark Search

Before you can trademark anything, you’ve got to make sure no one else was there first. You do this by going to the Patent and Trademark Office’s database and running a search for the different words you want to use in your mark. You’ll want to get really creative here: try different word combinations so you can get a basic idea of what’s already out there. 

If you want to trademark ‘Pretty Shiny Things’ for your fashions and there’s a direct hit on it, move on. I know- it’s frustrating to give up a really catchy name because someone else was there first, but the law’s pretty clear on the matter. You should also consider moving on if another clothing nonprofit has a mark that’s strongly similar, such as ‘Pretty Little Shiny Things.’ If they do business in your geographic area, DEFINITELY give it a pass. The last thing you want is an issue with the trademark holder, OR confusion with your constituents.

There are all sorts of different factors that you’re going to be analyzing when you pull together some search results, but in most cases, this is something you can do yourself. You’re getting a general idea of what’s out there. 

The next step is to do a more thorough search, and for best results, you’ll want to use a trademark attorney or professional search service. Remember- just because your preferred trademark isn’t being used in a particular format doesn’t mean that it’s completely available. An attorney will know how to determine whether you are really clear to register the mark. 

This extra step is NOT overkill, believe me. You’d be surprised how often business owners register and use a mark in good faith, only to get a nasty cease and desist letter. Let a pro help you stay in the clear.

Search Complete? Time for a Strategy!

The second step in the process is to pick a strategy. So what are your options?

Generally speaking, it depends on the search results analysis, but there are a few common solutions.

With the first one, you decide that the field’s relatively clear and apply for a word mark, which is the broadest possible protection you can have in the trademark universe. Another option is to differentiate yourself from any marks that could potentially be a problem, even if you don’t think you are infringing. You can do that by filing a logo or design mark application. 

Depending on where you are in your starting up the nonprofit, you may decide that your chosen mark is too similar to others out there and go for something different. If you’ve invested a lot of time and money in developing your brand, you may not want to go for the total rebrand, but if you’re still in the development stage, it’s something you can consider.

Hurry Up and Wait!

And now, the ‘hurry up and wait’ stage. Once you know what you’re doing with your trademark filing, you want to get that application filed as soon as possible. You want to make sure that you get there first because it’s a first-come, first-served deal. You don’t want to wait a week and then somebody else ends up claiming it before you do.

Once you file your application, it takes three to four months for someone to be assigned to review it. We’re talking about the federal government here: things are slow! The best case scenario is that the person assigned to your claim (otherwise known as an examining attorney) will look at it, see no problems, and move it along the pipeline. However, they could also find issues and notify you or your attorney so you can resolve them through an email or phone call.

With major issues, it’s different. They need to be addressed more formally, and you generally have up to six months to respond. The ball’s in your court – if you respond more quickly, faster resolution may be possible. 

Ready for Publication!

During the publication phase, your trademark application is published in the Patent and Trademark Office Official Gazette for a period of 30 days. Everyone is put on notice that you’ve filed this trademark, giving them the opportunity to object. If they do, your application is on hold until you’ve resolved things with this other person or company but if no one comes forward, you get your trademark certificate after 30 days.

All told, you’re looking at around a year from the time you file to the day you receive your trademark certificate, so it’s not a fast process, but it’s important to do it right.

When You Have Your Trademark

Once you’ve registered your nonprofit’s trademark, you benefit from the following:

  • Your rights will be protected in all 50 states. Even if you only operate locally, registration protects your mark against infringing in another state and causing confusion among clients, donors, and other stakeholders.
  • Dispute resolution may be less complicated for you. Having a registered trademark gives you an extremely strong proof of ownership and rights.
  • Your nonprofit will have exclusive rights to the trademark even in locations where it does not operate.

If you’re ready to register a trademark for your nonprofit, remember, it’s important to do things right! Especially for nonprofits, your public relations and reputation are important. If you would have questions or would like to schedule a consultation, call 612.200.3679 or contact me here

Birken Law Office – Law firm serving nonprofits organizations, and foundations – Birken Law

Birken Law Office – Law firm serving nonprofits organizations, and foundations – Birken Law

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