Do you Need A Trademark If You Have Incorporated Your Nonprofit?
Some people think that just because they incorporated or formed their nonprofit with their State that they do not need to apply for a federal trademark to own the name. Please know that registering your nonprofit with your state by filing Articles of Incorporation does not give you legal ownership of the name. Someone else in another state could have registered the exact same name and may have been using the name longer than you have – which would mean they have already acquired ownership rights to the name you are using.
Do you Need A Trademark If You Have A Fictitious Name or D/B/A?
Filing and receiving a fictitious name or “doing business as” (D/B/A) within your state also does not give you ownership rights to a name. Some people choose to avoid the investment involved with filing for a federal trademark by filing for a “fictitious name” instead. Again, a fictitious name does not give you ownership or legal rights to the name in and of itself. If someone else was using the name before you or had already registered a federal trademark, they would most likely have superior rights to the name.
Should You Get a State Trademark or Federal Trademark?
Lastly, instead of paying for a federal trademark, some people apply for a state trademark thinking it will give them the same legal protection. Once again, this is not true. A federal trademark has more weight than a state trademark.
If you register the name of your nonprofit for a state trademark and someone else registers the same name with the federal government for a federal trademark, their rights would likely be superior to yours. Meaning, they would likely be able to keep the name and you would have to use a different one and possibly be liable to them for damages.