Trademarks can be Rough Sledding for Nonprofits

Devon Thomas Treadwell | Intellectual Property Law,Naming,Nonprofit,Trademarks | Friday, June 3rd, 2011

The Star Tribune reports on a feud between the Susan G. Komen “Race for the Cure” and small nonprofit also dedicated to fighting breast cancer. In a formal opposition to a trademark registration, Komen claimed that the Minnesota-based group’s name–“Mush for a Cure”–was confusingly similar to its own registered trademark. The all-volunteer sled-dog race fundraiser was only one of dozens of groups earning Komen’s enmity because their name contained “for a cure” or “for the cure.”

Ultimately, Komen dropped its opposition to “Mush for a Cure” and a New York group named “Kites for a Cure” after their stories garnered national attention on NBC News. The USPTO has seen fit to grant “Mush for a Cure” a trademark registration.

What can we learn from this story?

  1. Trademarking a name–and protecting a mark–is becoming increasingly important to nonprofit organizations, who must compete in a weak economy against a growing number of competitors.
  2. While it’s understandable that a nonprofit group would not want to be confused with another–and see its donations unwittingly diverted to another organization–there’s a fine line between prudence and arrogance. Sorry, but “Mush for a Cure” and “Kites for a Cure” are each dissimilar enough from “Race for the Cure” that Komen should never have tried to block the mark. Picking on smaller nonprofit groups makes the deep-pocketed Komen organization appear petty and greedy, damaging its brand far more than the highly unlikely confusion it claimed to fear.
  3. Based on the trademark examiners’ inclination to grant the mark to “Mush for a Cure,” it appears that Komen cannot own “for a cure” or “for the cure.” However, should another “Race for a Cure” or “Race for the Cure” crop up as a competing breast-cancer charitable group, Komen should absolutely act to protect its mark.
  4. Nonprofits can avoid a similar trademark issue by choosing a shorter, less descriptive name–one that doesn’t have a generic, modifying phrase vulnerable to imitation simply by changing the noun in front of it.

And that last point is good advice for all organizations–for-profit and nonprofit alike–because a shorter, distinctive and creatively unexpected name performs better in a crowded marketplace than a longer descriptive one.

2 Comments »

  1. What a hairy situation. I wonder how many people would think that racing, mushing and kiting were all alternative ways to arrive at the cure from the same organization.

    Just looking at the photo of the ribbon-like carabiner grabbed my attention and made me think of Susan G. Komen. I instantly transferred a little credibility of the larger organization to Mush for the Cure without even thinking about it.

    It seems to me that the smaller of the two organizations stand to benefit from the imitation, and Komen has no good options. Point #4 is great advice. Interesting stuff!

    Comment by Josh Braaten — June 3, 2011 @

  2. Yes, and that’s probably why Komen has become so aggressive about its name. They introduced the pink ribbon in 1991, and it was quickly appropriated as the symbol for breast cancer awareness. I don’t know if they attempted to trademark it or not, but use of the pink ribbon proliferated so widely that it is now considered public domain in the U.S. I’m guessing Komen didn’t want that to happen with their name. Sounds like it’s too late now.

    Comment by Devon Thomas Treadwell — June 4, 2011 @

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