January 14, 2016

The NonProfit Times features Andrew Price on trademarks

3 min

The NonProfit Times featured Venable trademark partner Andrew Price on the issue of a judge who tried to adopt a variation of a nonprofit's brand for personal gain, after he learned the nonprofit failed to obtain a trademark registration for it. The recent matter involved the Detroit Riverfront Conservancy and a probate judge who filed trademark applications for similar variations of the organization's name, Detroit RiverWalk and RiverWalk Detroit. After the matter was widely reported and before Price was interviewed, the judge decided against pursuing the applications, though he had earlier boasted "I was surprised to discover that [the brand Detroit Riverfront Conservancy] had not been trademarked" and "maybe God is giving me an opportunity to do something with this"; he went on, "If I can use this to further benefit agencies, OK, and still make some money for myself, that is what I would like to do." Thus, the case generated interest in the nonprofit community, since a local judge was trying to take advantage of the longstanding goodwill in a nonprofit's primary brand.

According to Price, "the Conservancy left the door open and exposed its rights by not properly registering them with the Trademark Office." While the conservancy's case seems to have ended amicably, had it continued legally, the organization still had some recourse against the applications. "What tends to happen when a trademark application has been made, an organization might wait for trademark procedures to work out, such as the opposition process, to resolve it more inexpensively, outside of the courts," Price noted. "It could take months for an application to get reviewed and published but an organization then could file its opposition and try to work it out in that stage." It would be a lot easier if the Conservancy had filed applications and was able to present all of its registrations to stop any other trademark applications. "It's easier to explain and cheaper," said Price. The trademark office fee is $275 plus any legal costs. "You're not required to use a lawyer but doing it on your own is almost as bad as not doing it." A nonprofit that has not properly registered its brands is then potentially dealing with bad press, and "more expense in putting [tooth]paste back in the tube," added Price.

"In my 20 years, there's been a dramatic shift – especially in the last 10 years – of nonprofits; generally speaking, [they are] now on board with the need to protect trademarks and register them appropriately," said Price. "Early and often is the rule for trademark filing because it's so relatively inexpensive… As soon as you have the intention to use a brand, you should file. Even for one that could be descriptive like this."