Nonprofits often don’t realize that they are innovators, and that it is important they protect their innovations. Some such innovations include their branding. Potential donors recognize a nonprofit’s name or logo and it serves as an identifier for potential donors. The branding is protectable through trademark registration. When others, such as for-profit businesses, use that name or logo in unrelated ways, donors can be under the mistaken impression that they are donating to the nonprofit when purchasing goods – and the nonprofit can suffer.
Holiday Express, for example, is a well-known and respected nonprofit in Shrewsbury, N.J., which provides holiday cheer to people and facilities who rarely, if ever, receive visits from other organizations. These events – complete with live professional musicians, a meal and gifts for the most needy – are held mostly during November and December. Comprised of 1,600 volunteers, including 150 professional rock, jazz, folk, gospel and pop musicians, Holiday Express delivers music, food, gifts, financial support and friendship to those with the greatest need during the holiday season and throughout the year. Many volunteers seek out ways to contribute, such as purchasing gifts to be distributed by the organization. In 2015, Holiday Express will serve some 20,000 individuals at about 80 facilities, such as at state institutions and private facilities for mentally, physically, and/or emotionally disabled children or adults. Holiday Express also has partnered with businesses in the past, where a purchase results in a contribution to Holiday Express.
A few years back, a large national commercial entity decided to create “pop-up” stores around the country, including New Jersey, for the holiday season and named the stores “Holiday Express.” The stores created a likelihood of confusion in shoppers who might potentially believe that the stores were supporting the nonprofit. Ultimately, the commercial entity backed away from the name, notably after the nonprofit raised media awareness. The nonprofit ultimately filed for U.S. Trademark Registration on the name, so as to avoid future such issues, and now owns several registrations.
In summary, nonprofits should consider protecting their names and logos so as to avoid similar consumer confusion.
Barry R. Lewin is a partner with the New York City-based law firm Gottlieb, Rackman & Reisman, P.C. He is involved in all areas of litigation, prosecution, and licensing regarding patents, trademarks, and copyrights. Lewin focuses his practice on prosecution and litigation of patents in the mechanical and electronic arts, including medical devices, optics, telecommunications, material science, robotics and information technology, as well as a wide variety of consumer goods.
Why Nonprofits
Need to Protect Their Branding
By Barry Lewin