Page 264 - Washington Nonprofit Handbook 2018 Edition

CHAPTER 71. Trade Names and Trademarks

There is often confusion surrounding the difference between a trade name

and a trademark. A trade name is the name of the business, but a trade name is
usually also a trademark because it indicates the source of origin for the goods or
service provided by the business. For example, Microsoft Corporation is a trade
name, and “Microsoft” is also a trademark.

Rather than trying to understand the differences between a trade name and
a trademark, it is easier if a nonprofit corporation just assumes its trade name will
also function as a trademark, and picks a trade name with trademark law in mind.

Under trademark law, a nonprofit corporation can be sued for trademark
infringement if it uses a trademark that is the same as the trademark of a senior
user, or so similar that people are likely to confuse the nonprofit corporation and
the senior user, and/or their respective goods and services. Thus, if a nonprofit
corporation begins using a business name without conducting any prior research,
and later finds that there is another entity with senior rights in the same or similar
name, the nonprofit corporation may have to change its name, reprint materials,
change signage, and incur other expenses.

In order to avoid this, it is important for a nonprofit corporation to do
preliminary research before finally deciding on a business name. This usually
involves at least three things: (i) searching the database available at the U.S.
Trademark Office website, (ii) performing some general searches using the internet,
and (iii) investigating to see whether an appropriate domain name is available.

Initially, a nonprofit corporation should go to the U.S. Patent and Trademark
Office's trademark site at http://www.uspto.gov/main/trademarks.htm. The site
allows the nonprofit corporation to use the Trademark Electronic Search System
(TESS) to see whether a particular trademark has been applied for or registered.
The site also contains various background information related to trademarks.

If TESS does not indicate that the same or a similar trademark has been
applied for or registered, a nonprofit corporation should then conduct additional
searches on Google, Bing or other internet search engines to see if an entity with
the same or similar name already exists.

Finally, since a nonprofit corporation will probably want a website, it should
see if an appropriate domain name is available, and then register such domain.

WASHINGTON NONPROFIT HANDBOOK -253- 2018