by special guest author Statton Hammock, Principal of ASHnet Legal Services, PLLC
Non-profit organizations must be vigilant about protecting their brands online. It is not uncommon for third parties to start an organization with a similar name or logo, either intentionally or unknowingly. Having more than one non-profit organization with a similar or identical name or trademark can confuse volunteers, partners, grant making agencies, and, most worrisome of all, donors. Employing a “trademark watching” strategy is critical to early discovery of potentially infringing trademarks or similar organization names so that a non-profit can assert its rights and avoid confusion among its key constituents. Below are some best practices non-profits can adopt and implement to monitor their valuable brand online.
- Set up multiple trademark-related watching services. To effectively police a trademark, organization name, or logo, a non-profit should monitor both the marketplace and official trademark registrations. Nonprofits can set up Google “alerts” for the organization’s most important trademarks, logo, and service brands so that they receive notifications of news reports related to organizations having a similar name or trademark. Trademark watching services can identify trademark applications for word marks, stylized words, and logos. If the visual impact of a trademark is particularly important, it is worth watching for the stylized word or logo. Good examples are the American Red Cross’ “Red Cross” or the Susan G. Komen Breast Cancer Awareness “Pink Ribbon.”
- Select a reputable trademark watching service provider. There are several brand protection companies that offer quality trademark watching services. BrandIT, Brandshelter, BrandShield, CompuMark, Corsearch, and Markify all offer excellent trademark watching services at varying price points to meet a non-profit’s limited budget. Each will provide you with a detailed watch report each week identifying potential infringements or confusing uses of your brand or logo. Using a good watching service takes the pressure off having to do watches manually.
- Select the type of watch. Trademark watching will take one of two forms: An identical trademark watch which identifies word marks or logos that are visually or phonetically identical; and a similar trademark watch which identifies identical and confusingly similar marks. It is recommended that the watch service employ both types of watches to ensure the broadest protection.
- Make watching a regular, weekly occurrence. A designated non-profit staff member should be tasked with devoting time each week to review watch notices and reports from the watching service provider. Surprisingly, it takes little time (about 10-15 minutes) to review results and determine whether a competing organization or individual is infringing upon your registered trademarks or hashtags and whether action should be taken. Not all results will warrant a response, but learning about potential confusion is the most important step in enforcing a non-profit organization’s intellectual property rights.
- Craft a good watch strategy. It is important for organizations to take some time to define the scope of the watching service: Which classes of trademark services will be monitored? Should competing organizations’ marks be watched? Which geographies or markets should be reviewed? Which words, designs, or logos should be included in the search? Answering these key questions will help focus the results of a watching service. If a non-profit is going to run a fundraising campaign for only a short period of time, it may not make sense to add the campaign logo to the watch service.
Another added benefit to trademark watching is that it is also a useful way to monitor other organizations that provide the same or similar charitable services as the non-profit. For instance, by watching another organization’s trademarks, a non-profit may be notified of a new application in a different city or different part of the world, thereby providing advance notice that the competitor organization may be considering entering a new market. This information can be beneficial in helping the non-profit identify key partnerships and collaborations.
Many non-profits, particularly small, regional, charitable organizations, may believe that their trademarks, logos, or campaign slogans will never be visible enough to be copied by other organizations. They also may doubt that others could create, even inadvertently, logos and slogans that create confusion among donors or volunteers. Unfortunately, similarities in logos and trademarks aren’t uncommon especially considering the global reach of social media and domain names. Trademark watching services can minimize this risk of confusion and give non-profits a valuable tool to protect their goodwill and reputation created by their charitable activities.
ABOUT THE AUTHOR
Statton Hammock is a recognized expert in Internet-related law, policy, and brand protection. Statton advocates for regulations, procedures, and industry best practices that promote the security, trust, and safety of the Internet and use of online platforms. Statton has worked with the world’s most recognized brands and non-profit organizations to develop and protect their intellectual property rights online and enhance their digital presence.