Non Profit Report - December 2013

Date: December 19, 2013

Protecting An Association's Trademarks
By: Dana O. Lynch, Esq.

When we think of trademarks, most consumers think of famous international brands, such as Coca-Cola, Nike and Apple. Trademarks, however, are not just for traditional “for-profit” corporations. Trademarks can be very important assets to associations and can have significant value in advancing their missions and raising funds. An association’s name, acronym and logo, among other things, can be used in a trademark sense and acquire protection as trademarks. Therefore, it is essential for an association to use its trademarks properly, federally register its key marks, and enforce its trademark rights against infringers.

First and foremost, association executives should be aware of the following rule: USE IT OR LOSE IT. Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark. A mark is presumed abandoned if an association fails to use the mark for three consecutive years. Once a trademark is deemed abandoned, all rights to the mark are lost.

Another important thing an association can do is to protect and enforce its brands. One way to strengthen an association’s rights in a trademark is to register the mark with the U.S. Patent and Trademark Office. Foremost among the benefits of federal registration is the fact that it is considered prima facie evidence of (a) the validity of the mark; (b) an association’s ownership of the mark; and (c) an association’s exclusive right to use the mark. Thus, in a trademark dispute, the owner of a federally registered mark is presumed to be the owner of the exclusive rights to the mark, and the burden of proving otherwise is initially shifted to the opposing party. After five years of continuous use of a mark after registration, an association’s exclusive right to use a mark may become “incontestable” and a registration can only be cancelled on limited grounds. Federal registrations can be maintained indefinitely by filing the appropriate declarations and renewals when due.

In addition to consistently using its trademarks and maintaining any federal registrations, an association should monitor the marketplace for infringing third-party uses of similar marks. One can monitor for infringement by conducting periodic Internet searches, setting up Google or other email alerts, or engaging a third-party monitoring service. If an association discovers that a third party is using a confusingly similar mark, it should take action to stop that use. Such action can be in the form of a cease-and-desist letter, opposition or cancellation proceedings at the PTO or litigation. An association will benefit from well-protected trademarks, which, in turn, leads to stronger trademarks, greater recognition and may also result in increased revenues from donations, program fees and sales of products (such as publications).

In sum, whether a trademark continues to be an asset to an association depends upon its ongoing use, protection and enforcement of the mark. An association should work with its legal counsel to develop a trademark protection and enforcement plan to preserve valuable trademark rights.

Copyrights Are Critical For Associations
By: Jefferson C. Glassie, Esq.

Books, publications, websites, white papers, conference proceedings, magazines and newsletters constitute some of the most valuable property that associations have. These materials may be protected by the copyright laws, and it’s critical that associations maximize such protection. It’s important to make sure both that the organization owns or has adequate rights to use and publish any materials, and also that it has the ability to maintain control of them for purposes of ensuring their integrity and maximizing value to the organization. Understanding key aspects of copyright law is crucial for association executives to ensure proper copyright protection for their publications and other materials. Here are a couple key points:

Any original work is protected under the copyright law as soon as it is created and put into a physical form. Once a work is created and fixed in a tangible medium – for example, put on paper, recorded on audio- or videotape, or typed into a computer file – copyright protection attaches. This means that as soon as an association staff person or a volunteer writes an article or white paper, copyright protection begins for that work. The rights accrue upon creation – no notice or registration is required, although there are benefits from meeting formal registration and notice requirements; it is advisable to register copyrighted publications with the U.S. Copyright Office and to include a copyright notice on all publications. The proper form of notice has three elements: (1) the copyright symbol ©, the word, “copyright” or the abbreviation, “copr.,” (2) the year of first publication of the work, and (3) the name of the copyright owner.

The author owns a “bundle of rights” to a copyrighted work, including the right to reproduce, publish, sell and make derivative works. The ownership of copyrights can be assigned or transferred to another person, but the transfer must be in writing signed by the person transferring ownership. The only exception is the employer/employee situation under the work-for-hire doctrine, but otherwise all transfers of copyright must meet this requirement. A written transfer of a copyright is typically called an assignment, and can be included in a written agreement; it doesn’t have to be in a stand-alone document.

Copyright permission, called a license, to use copyright works can also be granted by the copyright owner. Licenses can be exclusive or nonexclusive, and they can be for the entire bundle of rights or just for limited rights. Licenses can also be in writing, can be oral, or can be implied from the parties’ behavior or in the course of their dealings. However, to ensure that everyone agrees on the terms of any permission or license, it’s best to have such licenses in writing.

It is very common for an association to engage consultants or contractors to write material for the association’s publications; however, just because the association paid for the work to be done, that doesn’t mean the association owns it. The independent contractor owns the work unless rights are assigned or transferred in writing. So, all agreements with contractors should include provisions regarding ownership of any materials or works developed or created, and they should be formally assigned in the agreement if the association intends to own such works. These are just some of the important points about copyrights that association executives should understand.

Maine Gets Rid of CCV Requirements
By: Eileen Morgan Johnson, Esq.

The State of Maine has repealed its commercial co-venture requirements effective October 10, 2013. Commercial co-ventures (CCVs) are also known as charitable sales promotions or cause marketing. In a CCV, a merchant uses the name, logo or other trademarks of a charitable organization to entice customers to purchase its product or service with a promise that a part of the purchase price will go to that charity. The Maine legislature decided that the rather onerous requirements for CCVs in that state (requiring a $25,000 bond and over $600 in application, licensing and bond fees) resulted in "unnecessary regulation and document filing requirements." Charities and the commercial companies they collaborate with on CCVs are still regulated by Maine's other charitable solicitation laws and other laws applicable to advertisements and sales.