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[Anthony]

Hello everyone,

Thanks for reading. When you start a non-profit organization, is it necessary to use some sort of intellectual protection to safeguard the name?

For example; In the event someone tries to use the same name for commercial purposes?

Feedback will be greatly appreciated.

Thank you,

Anthony

[Synergy Legal]

Hi Anthony

Two things I would suggest you think about:

a.  is anyone else already using the name or something similar (do some searches) - you don't want to end up in a dispute with someone else

b.  taking out a trademark.

Just because you're non-profit doesn't mean your name isn't potentially an important thing to protect.  Take a name like "Medecins sans frontiers" or "Amnesty International" for instance.

cheers

Michael Curtotti
Synergy Legal
service@synergylegal.com.au

[JSonnabend]

One does not "take out" a trademark in the United States.  Either you are using the name as a mark or you are not, and trademark rights flow from that use.  You might consider registering your mark, but that does not give you trademark rights, only certain (albeit important) legal advantages.

The "Intent To Use" filing is also available in the U.S., which can essentially place "on hold" a registration spot for the mark, albeit with certain limitations and requirements.

Europe is somewhat different, and perhaps in Australia, where the last poster is apparently from, but unless the OP is interested in securing trademark rights in one of those jurisdictions, the advice doesn't exactly make sense.

- Jeff

[Michael Curtotti]

Dear Jeff

Its interesting to hear that trade marks are inherent in the U.S.  It is indeed quite different in Australia.  Registration provides access to statutory rights and ownership of a "trade mark" as a property right.  In absence of such registration, someone whose trade mark is infringed must either bring a common law action for passing off or a trade practices action for misleading and deceptive conduct.   However even in the case of a registered trade mark may lose registration in Australia if they fail to use their registered trade mark.

What are the legal advantages of trade mark registration in the U.S?

regards

Michael

Michael Curtotti
Lawyer
Synergy Legal

[JSonnabend]

From your description of trademark law in Australia, the two countries' laws sound similar, but not exactly the same.  For example, in the U.S., without registration, one is left with common law trademark infringement, although the (federal) Lanham Act may be invoked through section 43(a).  Registration of trademarks brings all sorts of benefits over common law marks, including access to federal courts without resort to 43(a), nationwide "priority", presumed/incontestible distinctiveness, etc.

My quibble with the earlier post was on the "taking out a trademark" suggestion.  In the U.S., one cannot register a mark until the mark has been used in bona fide interstate commerce.  The Trademark Office won't issue a registration prior to that, and no trademark rights can accrue to the owner prior to such use, neither common law nor Lanham Act rights.  In other words, "taking out a trademark" isn't something one can actually do.

- Jeff