What happens when you find out that another nonprofit is using a similar name to your nonprofit’s? It’s not a fun situation to be in. You’ll probably go through various emotions, including anger and fear. And then you’ll start to formulate a game plan so you can resolve the situation. Sometimes that game plan is to do nothing, other times you’ll need to go all in and hire an attorney.
Before we get to your game plan, let’s look at the different ways your nonprofit would find out that another nonprofit is using a similar name to yours:
Scenario One. You were at a conference, or searching online, and happened upon the name of another nonprofit that has a name disturbingly similar to yours.
Scenario Two. You open the mail or your email and discover a cease and desist letter from another nonprofit, or worse, from its attorney. The other nonprofit is accusing you of stealing its name, and demanding you stop using the name within a certain amount of time or it will take legal action against you.
These scenarios are common in the business world, and nonprofits can find themselves embroiled in a trademark dispute just as easily as for-profit businesses. Regardless of which scenario you face, the following steps will help you resolve the situation:
Step One: Keep Calm
Don’t panic, don’t offer a knee-jerk response, and for now, don’t talk to the other nonprofit (anything you say can be used against you!).
With that said, you don’t want to put off dealing with this, especially if you’re on the receiving end of a cease and desist letter. Most letters will give a short timeframe in which to respond, usually seven to 14 days from the date of the letter.
Of course, it's unlikely that the other party would just fire out a lawsuit if you don’t respond during the stated timeframe. Instead, you might receive a second letter, this one less friendly and more threatening than the first. So while you don’t want to panic, you also don’t want to procrastinate.
Step Two: Investigate
After calming down a bit, your next step is to investigate the other nonprofit. If you are the one who found that it is using a similar name as yours, you will want to investigate it further. If you have received a cease and desist letter, you will not only want to investigate the nonprofit, but its attorney, if it used one.
Here are some things to look for during your investigation:
- Is the other nonprofit’s name registered with the United States Patent and Trademark Office (USPTO)? This is an important piece of information. If there is a U.S. trademark registration, it might help resolve the dispute quickly and easily, because it will indicate who’s been using the name the longest--a key question in trademark disputes. If there is not a U.S. trademark registration, the dispute will center on determining which nonprofit owns the name, and which one has the rights to use it. If you received a cease and desist letter and it includes information about a U.S. trademark registration, use the information in the letter to look it up on the USPTO’s website. If it’s not stated in the letter, or if you are in scenario one, you will need to go to the USPTO website and search for the information there before continuing your investigation.
- How long has the other nonprofit been in business? This is important because it will give you an idea of whether your nonprofit is on equal grounds with the other one. If it has been in business for some time, and your nonprofit hasn’t, you may not want to pick a battle with it. It may have more funds than you and be able to better withstand a legal battle. This factor is also important because it may help you determine who’s been using the name longer.
- How big is the other nonprofit? This is similar to the question of how long it has been in business. The answer will allow you to compare your nonprofit in order to determine who may have the upper hand in negotiations. The larger the organization, the more bargaining power it likely has.
- What type of services does the other nonprofit offer? Trademark rights are limited to the types of services or products a business currently offers or is likely to expand into. If there’s not an overlap between the services your nonprofit offers and those the other nonprofit offers, then there may not be an issue with both using a similar name. For example, if your nonprofit is a food bank, and the other nonprofit is a school, it’s likely that there would never be any overlap between the two, which means the name could be used by both without any issues.
- Where does the other nonprofit offer its services? Trademark rights are limited to where the trademark is used geographically. That means if your nonprofit operates only in California, with no intention of ever expanding outside of California, and the other nonprofit operates only in Ohio, with no intention of ever expanding outside of Ohio, there would never be any overlap geographically, and each nonprofit can continue using the name in its respective area.
Step Three: Decide on an Action Plan
Based on the results of your investigation, you can now determine how to handle the situation:
- Do nothing. If you found a nonprofit using a similar name to yours, and the factors above indicate that it’s not really an issue, you might choose to do nothing for now. If you choose this route, it’s important to continue to monitor the other nonprofit, maybe every month, six months, or year. While it may be operating only in California now, it could choose to expand in the future. If that happens, you’ll want to know about it so as to intervene if necessary. If, on the other hand, you received a cease and desist letter, it’s not advisable to do nothing. If that’s the case, you’ll need to choose another option.
- Reach out to the other nonprofit. If you’ve discovered that another nonprofit is using a similar name as your nonprofit uses AND if you have a registered trademark, it is important that you contact it and issue a cease and desist letter. This can be done either formally or informally, and either on your own or with the help of an attorney, but it is a necessary step. Failure to protect your trademark can actually damage your trademark rights and make your trademark less enforceable in the future. It’s possible that the other nonprofit never did a trademark search and didn’t know about your registered trademark. An informal email could convince it to stop using the name, while at the same time saving you attorney’s fees. If you happen to be in scenario two and you’re on the receiving end of a cease and desist letter, then you may be able to negotiate with the other nonprofit and work out an agreement that allows you to continue using your name. Just remember that everything you say can be used against you, so be careful when you speak with a representative of the other nonprofit, especially if it’s using an attorney.
- Contact a trademark attorney. If you’ve received a cease and desist letter, it’s highly advisable to contact an attorney before acting. The attorney can shed light on what your nonprofit’s rights are versus the rights of the other nonprofit and can advise you on how to best resolve the situation. If your nonprofit is the one that sent the cease and desist or informal email, and it went unanswered, you will need to contact an attorney to escalate the situation. If you need to contact an attorney, don’t expect a free consultation. Trademark infringement issues take considerable time to investigate and advise on. Budget for one to three hours of consultation time, plus an additional fee for the attorney to draft a cease and desist letter and negotiate with the other nonprofit.
- Rebrand. The worst-case scenario, and the one that will happen if your nonprofit was the one using another nonprofit’s name, is rebranding. If you or your attorney were unable to negotiate an agreement with the other nonprofit, your only option would be to start from scratch with a new name.
Finding out that your nonprofit has a similar name as that of another nonprofit can be a stressful situation. Following the steps outlined above will help keep you focused as you work through a dispute.