A nonprofit organization (or any individual) becomes the owner of the intellectual property simply by using it in the course of its activities.
Registration is not mandatory to claim protection under the intellectual property laws.
An organization that has registered its trademark can use the ® symbol. An organization that does not register a trademark may instead use the symbol “TM” next to the unregistered mark.
The “TM” mark does not yield any special legal rights in federal law, but it nevertheless helps the organization establish a distinguished identity for itself in the common market place.
Registering a trademark has a few benefits:
1) It provides added protection from infringements.
2) This is the simplest procedure to let the state or federal authorities know of the existence of the organization.
Many unincorporated associations and fiscally sponsored organizations prefer to get their service marks registered to establish their independent identities without the need of getting into compliance related to incorporation.
Intellectual property rights basics
If an organization has decided to register for intellectual property rights, the second step should be to familiarize with the various intellectual property protections available.
Intellectual property broadly covers patents, copyrights, trademarks and service marks.
Patents are property right relating to an invention and copyrights are applicable to authorship, such as writings, paintings, music, and other tangible works of art. Patents and copyrights may not be relevant for most of the nonprofit organizations.
Many nonprofit organizations instead go for trademark or service mark registration.
Trademark: Trademarks are applicable to those nonprofit organizations that have ‘goods’ or ‘products’ and want to get a unique identification or differentiation from other products. Trademark is a word, phrase, symbol or design, or a combination thereof.
Service mark: A service mark is a word, phrase, symbol or design, or a combination thereof, that are applicable to services rather than goods. Service mark registration is apt for many nonprofit organizations as they are often service oriented organizations.
Applying for trademark/service mark registration
The term ‘trademark’ is used interchangeably for trademarks and service marks.
Trademark registration application can be forwarded to:
- The United States Patent & Trademark office OR
- The office of secretary of states. (if the marks are not used in interstate activities)
Steps Involved in trademark registration
Once the organization has decided the relevant registration (trademark or service mark) and has finalized the word, phrase, symbol or design, or a combination thereof to be put up for registration, it needs to do the following processes.
Step 1: Conducting a search of existing trademarks
The United States Patent & Trademark office offers an online search facility: Trademark Electronic Search System (TESS) to search for existing trademarks.
The search results are nonbinding and may not be accurate or exhaustive. For example, the search may not cover marks that are in use but for which there is no application or registration (common law marks).
The search however gives the applicant an opportunity to overrule the possibilities of refusal on grounds of existence of same or similar registered trademarks.
The database search can be downloaded at: http://tess2.uspto.gov/bin/
Step 2: The application
If applying with: The United States Patent & Trademark office
The application form can be downloaded at: http://www.uspto.gov/initial_app.jsp
The application process can be assessed at: http://www.uspto.gov/trademarks/process
If applying with the state:
The forms can be downloaded at website of office of secretary of states.
An organization may consider taking the services of a licensed attorney to represent the application before the U.S. Patent and Trademark Office (USPTO).
Online filing: The United States Patent & Trademark office offers the facility for online application.
Application assessment process
The United States Patent & Trademark office maintains a publication manual titled Trademark Manual of Examining Procedure (TMEP) which outlines the assessment process.
The manual can be assessed at:
Keeping the registration active
A registered trademark owner is required to file §8 declaration of continued use (or a declaration of excusable nonuse) between the 5th and 6th years after the registration date.
Subsequently the declaration of use must be filed between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter to maintain the trademark/service mark registration.
The USPTO will cancel any registration if a timely §8 declarations are not filed by the trademark owner.