Nonprofit organisations get their own voice at INTA
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Nonprofit organisations get their own voice at INTA

Nonprofit organizations have many of the same trademark issues as businesses, but they are rarely understood

In March 2011, Japan was hit by its biggest earthquake since records began. Aid agencies around the world scrambled to send help, but were still piling in resource - and appealing for funds - months later. During the INTA Annual Meeting in San Francisco in May, Debra Hughes at the American Red Cross received an email informing her of several websites that were masquerading as Red Cross sites for the Japanese appeal.

"She told about a dozen of us, and we all immediately went to the lobby and began banging out cease-and-desist letters and shutting down websites," remembers Amber Sterling from the Association of American Medical Colleges (AAMC). "We all banded together."

Nonprofit organizations usually have the same trademark problems as other companies, they just strike in different ways. And the members of the INTA Nonprofit Organizations Committee are quickly realizing the benefits of working together.

What are you doing here?

"My boss and I were at the 2008 Annual Meeting in Berlin and a few people said, you're a non-profit, what are you doing here?" remembers Sterling. The AAMC runs the admission test for medical school in the US; Sterling helps protect the reputation of the exam and prevent other companies from misleading students. But other INTA attendees couldn't quite understand why a nonprofit would have trademark issues.

"I began talking to staff at INTA about whether there was a way that nonprofit organizations could affiliate among themselves," says Sterling. The AAMC itself was only just beginning to put together its IP program, and was interested in what other how other nonprofts ran their IP departments.

The next year, in Seattle in 2009, Sterling organized a "small gathering" of attendees from nonprofit organizations. A wide variety of people showed up, everyone from the Colombian coffee association to the YMCA to a range of religious organizations. "It was a really strange group of people, but we all had the same problems," says Sterling.

Those problems stemmed from the status of nonprofit organizations and the way that influenced their trademark strategies. For example, nonprofits are often enforcing against their own members, who might be misusing the brand in some way. And any public enforcement can easily come across as heavy-handed. Lance Armstrong's LiveStrong foundation discovered this to its cost, with its cases at the TTAB leading to it being named one of the top 10 'brand bullies' in the US by Business Insider. Susan G Komen's attempts to register the color pink for her charity Race for the Cure led to similar criticism.

"The thing is, a big corporation can be very active in its enforcement, and it is rarely seen as a negative thing," says Sterling. "You would expect that the public would be more generous with charitable organizations, but this is often not the case."

We are nothing without our brand

A nonprofit's brand is, if anything, even more important than that of a commercial business. Nonprofit organizations are founded on their reputation, for their good work or their maintenance of standards. If that reputation suffers, perhaps because it turns out donations have been going to rogue websites, it can undermine the entire organization very quickly. It can also lead to a loss of charitable status, which effectively closes it down immediately.

"We live and die by our reputation, and our trademarks are the weapons that help us defend our reputation legally," says Sterling.

That defense often has to be tailored for the infringer and the seriousness of the offense. Sterling, for instance, says she has three grades of cease-and-desist letter. The first is along the lines of: "Thanks for your support, is there any chance you could use our logo this way? Thanks!" The second she describes as, "we still see you, could you do it now?", the third is a little more formal ("we include words like 'statute' and 'code') while the fourth often comes from outside counsel ("OK, you apparently need to see some letterhead").

Even when nonprofit organizations have discussed their legal strategy with counsel, they will often send out the first few letters themselves. This keeps the cost down and makes the message more personal. (In many ways, the approach is similar to that increasingly adopted by big brands on social media. There too, a heavy-handed approach can often backfire.)

Working with outside counsel is one challenge that is very different for nonprofits. Some have a legal budget, some don't, but most ask for discounts from their attorneys. The biggest issue, though, is often not price but the fact that attorneys don't consider the way that nonprofits are viewed, and are therefore too heavy-handed. "We shop around to find counsel that are great on price and on understanding our position," says Sterling.

A table topic on Sunday, between 1 p.m. and 3 p.m., will demonstrate how nonprofit attendees work with counsel.

The Committee takes shape

Following the success of the gathering of nonprofits in Seattle, a quarterly conference call was set up for them to talk through their issues and share experiences. This has been successful, partly because it allows nonprofits to participate even if they can't come to the Annual or Leadership Meetings.

The structure is quite loose, with 12-20 people dialing in and some quite specific issues coming up, such as how you switch from docketing with software to doing it yourself, because your funding has been cut. The participants are just starting to make use of INTA's My Powerful Network for hosting similar discussions as well.

"We want to build up that side of the communication, so that problems can be posted straight away instead of waiting for the quarterly call," says Sterling. "We're also at the point where everyone has each other's direct dials, so once a month or so I get a call from someone else asking for specific advice. I had an enquiry yesterday that was along the lines of 'Icann's Trademark Clearinghouse - what's that about?'"

Generic TLDs and their management is another table topic for nonprofits at this year's Annual Meeting, with a discussion on Wednesday from 1:15 p.m. to 3:15 p.m. It is being moderated by Audrey Wilkins of the World Trade Centers Association who, unusually for a nonprofit, has applied for a gTLD. She will bring an interesting perspective on the process and the internal discussions that went into the decision to apply.

The nonprofit program at this year's Annual Meeting includes open and nonprofit-only events, with subjects that are specific to nonprofits and some that affect all brand owners, such as gTLDs. Whether you work with nonprofit organizations or just want to hear more about their unique concerns, it's worth going along.

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