Trademarks can be Rough Sledding for Nonprofits
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?
- 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.
- 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.
- 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.
- 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.
Was it an off-hand remark in a phone call? A mumbled “might be a good idea” in a meeting? A smiley face emoticon in an email?