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When we think of trademarks, most consumers think of famous international brands, such as Coca-Cola, Nike and Apple. Trademarks, however, are not just for traditional “for-profit” corporations. Trademarks can be very important assets to associations and can have significant value in advancing their missions and raising funds. An association’s name, acronym and logo, among other things, can be used in a trademark sense and acquire protection as trademarks. Therefore, it is essential for an association to use its trademarks properly, federally register its key marks, and enforce its trademark rights against infringers.
First and foremost, association executives should be aware of the following rule: USE IT OR LOSE IT. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark. A mark is presumed abandoned if an association fails to use the mark for three consecutive years. Once a trademark is deemed abandoned, all rights to the mark are lost.
Another important thing an association can do is to protect and enforce its brands. One way to strengthen an association’s rights in a trademark is to register the mark with the U.S. Patent and Trademark Office. Foremost among the benefits of federal registration is the fact that it is considered prima facie evidence of (a) the validity of the mark; (b) an association’s ownership of the mark; and (c) an association’s exclusive right to use the mark. Thus, in a trademark dispute, the owner of a federally registered mark is presumed to be the owner of the exclusive rights to the mark, and the burden of proving otherwise is initially shifted to the opposing party. After five years of continuous use of a mark after registration, an association’s exclusive right to use a mark may become “incontestable” and a registration can only be cancelled on limited grounds. Federal registrations can be maintained indefinitely by filing the appropriate declarations and renewals when due.
In addition to consistently using its trademarks and maintaining any federal registrations, an association should monitor the marketplace for infringing third-party uses of similar marks. One can monitor for infringement by conducting periodic Internet searches, setting up Google or other email alerts, or engaging a third-party monitoring service. If an association discovers that a third party is using a confusingly similar mark, it should take action to stop that use. Such action can be in the form of a cease-and-desist letter, opposition or cancellation proceedings at the PTO or litigation. An association will benefit from well-protected trademarks, which, in turn, leads to stronger trademarks, greater recognition and may also result in increased revenues from donations, program fees and sales of products (such as publications).
In sum, whether a trademark continues to be an asset to an association depends upon its ongoing use, protection and enforcement of the mark. An association should work with its legal counsel to develop a trademark protection and enforcement plan to preserve valuable trademark rights.
This article is featured in the TRENDS special focus on Intellectual Property Law, sponsored by Whiteford, Taylor & Preston. Other articles: Top-7 social media issues for associations • Copyrights are critical for associations • Cyberattacks are equal opportunity threats • Privacy matters • Managing risk with technology contractors • Glossary of intellectual property terms • CEO intellectual property checklist