Most people don’t think of nonprofits as needing to navigate the world of intellectual property or pursue legal action. After all, nonprofits are focused on making an impact, not defending their brand in court.

But in reality, trademark disputes happen more often than you’d imagine.

One organization, after years of growing their mission, was shocked to find another nonprofit using a nearly identical name and logo—leading to confusion among donors and supporters. Fortunately, because they had trademarked their name and logo early on, they were able to protect their brand and continue their work without disruption.
In another case, an organization was surprised when they received a cease and desist letter from another entity alleging trademark infringement and requiring the organization to rebrand. Just like that, years of name recognition—and the goodwill that goes along with a brand—was lost.

As a patent and trademark attorney for the past 25 years, I’ve seen firsthand how safeguarding a nonprofit’s intellectual property can preserve its identity and mission in an increasingly competitive world. And with the onset of AI, it’s more important than ever that you protect the most foundational pieces of what makes your nonprofit unique—its identity.

Understanding Intellectual Property for Nonprofits

Understanding intellectual property is crucial for nonprofits looking to protect their brand and mission. Ensuring that your nonprofit’s intellectual property is secure not only shields your organization from potential legal issues but also helps maintain your brand’s distinctiveness in the marketplace. This is particularly important as your nonprofit grows or expands its reach, helping to avoid confusion with similar organizations.

What’s the difference between a patent, copyright, and trademark?

When it comes to intellectual property, it’s important to understand the key differences between patents, copyrights, and trademarks.

• Patents protect inventions. They prevent others from making, using, or selling your invention without permission.
• Copyrights protect original works of authorship, such as books, music, or art, giving creators exclusive rights to their work.
• Trademarks protect brand elements like your nonprofit’s name, logo, or slogan, distinguishing your organization from others in the marketplace.

What is available for trademark protection?

Nonprofits can greatly benefit from trademarking their name or logo, but any intellectual property can be protected. Here are some of the most common considerations for trademarking:

• Name
• Logo
• Taglines or slogans
• Brands for proprietary software (like charity:water’s well tracking sensors)
• Brands for programs (like Alcoholics Anonymous’ “12-steps of Recovery”)

Trademarking ensures that your nonprofit’s brand identity is protected, preventing others from using a similar name or logo that could cause confusion. This is especially important if your organization has a broad reach or plans to expand to offer more programs that could overlap with similar nonprofits. Trademarks can also be used defensively, if another organization wants to stop you from expanding the reach of your nonprofit.

Can you trademark a ‘Doing Business As’ name instead of the original nonprofit name?

Yes, you can trademark a “Doing Business As” (DBA) name. A DBA is a name your nonprofit may use to operate under, which differs from your legal name. Trademarking this alternate name ensures that it’s protected from unauthorized use, just like your original nonprofit name. And a federal trademark registration will provide more protection than simply registering the DBS with the Secretary of State Office.

Trademarking Considerations

Before trademarking your nonprofit’s logo, it’s important to consider whether it’s the right move for your organization. There are certain situations, like ongoing logo changes or upcoming mergers, where holding off on a trademark might be more cost-effective and strategic. Let’s dive into some key factors to help you decide if trademarking your logo is the best option.

Why shouldn’t I trademark our nonprofit’s logo?

There are a few scenarios where trademarking your logo might not be the best move:

• If your logo is still in flux—changing the design after filing a trademark means you’ll need to file again, which can get costly.
• If your word mark is generic or something similar already exists, it may be rejected by the Trademark Office.
• If you plan to merge with another entity soon, it might be best to wait to avoid rebranding costs.

How long does the trademark process take?

Trademarking a word mark or logo typically takes anywhere from six months to a year or more. We start by submitting an application to the USPTO, and if everything goes smoothly, it will move through various stages of review before the trademark is granted.

Do I need to categorize my nonprofit for the trademark?

When you trademark a logo or name, you’ll apply for ownership in a specific “class.” For example, when we trademarked HeartSpark’s name and logo, those were filed for protection under class 035: “business consulting services” so no one else in that category can use the name “Heart Spark.” Now imagine all of the different categories for every sector out there—you can see why it’s crucial to have some level of organization!

For most nonprofits, you’ll file your trademark protection against other charitable organizations, but it’s not quite as simple as that. The term “charitable services” simply indicates that a service is provided for charitable purposes—but the type of service provided, the nature of that service, and the type of activities involved must also be clarified when applying for a trademark. In other words, you’ll want to search for and file your trademarks under the appropriate classifications, based on the specific type of services provided.

For example, the wording “charitable services, namely, providing temporary shelter for the homeless” is acceptable in Class 43, like other temporary accommodation services; “charitable services, namely, providing tutoring in the field of math for underprivileged students” is classified in Class 41, like other educational services.” Trademark Manual of Examining Procedure (TMEP) § 1402.11(d).

Navigating these different classifications can be tricky, so it’s best to work with a trademark attorney to make sure they understand your organization’s mission and register in the correct category for your IP.

What does the trademarking process cost?

The cost of trademarking varies, but you can expect to pay between $250 and $350 for the filing fee, depending on the type of trademark and how many categories you want to file with the USPTO. If you work with an attorney, additional legal fees will apply.

Do I need to work with an attorney to trademark the name or logo for my nonprofit?
While it’s not required to work with an attorney, it’s highly recommended. An experienced IP attorney can guide you through the trademark process, help you avoid common mistakes, and increase the likelihood of your application being approved.

How do I check if a trademark is available?

To check if a trademark is available, you can search the US Patent and Trademark Office (USPTO) database. It’s essential to do a thorough search to ensure that no one else has already patented the same name or taglines. It is best to work with a trademark attorney for this so that you don’t infringe on someone else’s trademark.

For logo trademarks, check the Global Brand Database or even a quick Google Image Search can help you quickly detect if a logo like yours already exists.

Trademark Symbols and Protection

Once you own a trademark, it’s essential to actively protect it. This means using your trademark symbol properly and monitoring its use to ensure that no one else is infringing on your rights.

How do I use trademark symbols?

You’ve probably seen these trademark symbols after a nonprofit name or next to a logo, but there are some key differences between them:

• ™ (Trademark): Use this for any unregistered trademark for goods.
• ℠ (Service Mark): Use this for unregistered trademarks for services.
• ® (Registered Trademark): Use this once your trademark is officially registered with the USPTO.

And contrary to common belief, you don’t have to use the trademark next to every instance of your name or tagline, just the first or most prominent one on a webpage or in printed materials, and then make sure your name or tagline is set apart from other text (don’t use it in a sentence).

For logos, you’ll want your designer to incorporate the trademark or registered trademark symbol into the design so that your nonprofit’s logo always displays your registered symbol. Most brands put this in the bottom right corner of the logo or wordmark.

What do I do if someone is using my name or logo?

If you discover that someone is using your name or logo before trademarking it, consider hiring a branding agency like HeartSpark to help you uncover a more ownable name or logo. The truth is, the nonprofit sector is only getting more crowded, so unique names are becoming harder and harder to find. As soon as your team decides on a new name, start the trademark process!

If someone is using your name after you’ve successfully trademarked it, your first step should be to have an attorney send a cease and desist letter. This is a formal request for the infringer to stop using your name or logo. If they do not comply, you may need to take legal action to protect your trademark.

How often should I renew my trademark?

Trademarks are not one-time registrations. You need to renew your trademark every five years, which is crucial to keep your trademark active. Like a website domain that renews, it is important for your administrative team to know the dates of when trademarks are set to expire so you can start the process before the renewal deadline—or you risk losing rights to your trademark.

Common Trademark Mistakes to Avoid

Even with the best intentions, nonprofits can fall into some common pitfalls when it comes to trademarking their intellectual property. These mistakes can lead to costly rebranding, legal disputes, or lost protection.

By working with a trademark attorney, you can avoid many of these issues:

• Filing too late after establishing the name or logo.
• Not conducting a thorough trademark search before filing.
• Failing to consistently use the trademark in a way that reflects what was registered (logo changes, name changes, etc.).
• Overlooking international protection if the nonprofit operates or plans to operate globally.