How to Know if You Have a Name You Can Legally Protect?
Now that we know what our goal should be when it comes to choosing a name for our nonprofit, let’s talk about the guidelines that we should take into consideration when choosing a name:
- You cannot trademark a generic term or something that is commonly used. The United States Patent & Trademark Office (USPTO) will not let you be the only person that can own the rights to a generic term. Therefore, we want the name of our nonprofit to be unique and original (think “Google”) instead of just a commonly used word or phrase.
- The name must be used to be protected. If you stop using it and it does not appear that you will start using it again, it may be considered “abandoned.” This means that someone else could technically get the name and assume ownership of it if you are no longer using it. So this is an incentive to not only start your nonprofit but to keep it going!
- You must use the name in commerce to have rights in the name. You do not receive trademark rights just for coming up with the name. This means thinking of a great name is not enough. You’ll need to put it to work in order for it to be something you can own via a registered trademark.
- Use in commerce generally means selling or transporting the goods or displaying the services (for your nonprofit) between states or overseas. You’ll need to use the name with people outside of your state to show that it merits a federal trademark. Thankfully, the internet, websites, and technology, in general, have made this requirement much easier to comply with.
- You can reserve a name that you have not used, but you still must use it within a certain amount of time to keep your rights. My law firm has done this successfully for clients that knew they wanted to own the name but weren’t quite ready to begin operations.
- The earlier you start using the name, the better. The law rewards the first user of the mark. The sooner you start using your mark, and preferably register your mark with the federal government, the better.
- You will only get rights to the mark in the classes (categories of goods and services) that the USPTO deems you are most likely to use or offer to the public. For example, just because you develop rights to your name in association with nonprofit services, does not mean your ownership will extend to pharmaceutical products. Someone else may be able to claim rights to the same name in that particular class if they are using the name in connection with goods or services (e.g., selling pharmaceutical products). You can apply for a trademark in multiple classes (many nonprofits own a number of trademarks) for additional fees, but will still have to prove that you actually use your mark within those categories of goods and services.
How to Know if Your Name is Too Similar?
Now that we know the general principles to consider when thinking of nonprofit names, how can you know if the name you have in mind is too similar to one that is already registered? Courts will consider several factors to decide if the name you have chosen for your nonprofit is too similar to someone else’s name:
- How similar are the names/marks?
- How related are their products or services?
- How strong is your mark itself?
- In what ways will you market the goods or services associated with your mark?
- How careful are potential buyers when selecting your goods or services?
- What was the intent of the infringing person when they chose the mark?
- Is there evidence that consumers are actually confused between the brands?
- What is the probability that the companies will expand their offerings to be more similar to the other company’s offerings in the future?