Page 266 - Washington Nonprofit Handbook 2018 Edition

simultaneously with filing the other information initially required by the Master
Business Application. Usually, the nonprofit corporation’s corporate name is also a
trade name. In some cases, the acronym of a nonprofit corporation's corporate
name may also be an additional trade name. For example, the acronym “ACLU”
may be an additional trade name for the American Civil Liberties Union. As noted
above, these trade names are also usually trademarks.

In the United States, nonprofit corporations accrue rights in a trademark as
soon as the trademark is used in commerce in connection with the nonprofit
corporation's business. These are called “common law” trademark rights, and no
registration is required. Once trademark use has started, generally the only people
who can require a nonprofit corporation to stop using its trademarks are those who
can show that they began using the same or similar marks before the nonprofit
corporation. That is why conducting thorough searches is so important. It gives
the nonprofit corporation confidence that it has a good defensive legal position,
and that there are likely no prior users.

From a legal point of view, it is always better if a nonprofit corporation
supplements its common law rights, and also registers its trademarks under state
and/or federal laws.

A nonprofit corporation may register a Washington State trademark through
the Washington Secretary of State’s website. Information can be found at
https://www.sos.wa.gov/corps/Trademarks.aspx. State trademark registration may
prevent other entities with similar goods or services from subsequently obtaining a
Washington State registration for the same mark, because either the registered
trademark will be included in searchable databases and will discourage other
parties from filing for such mark, or the Secretary of State may refuse to register a

similar mark for similar goods or services. It also allows a nonprofit corporation to
bring a claim against a subsequent user for state trademark infringement, in
addition to a claim for common law trademark infringement.

Nonprofit corporations may obtain more expansive trademark rights by
registering the trademark at the federal level with the U.S. Patent and Trademark
Office. The application for this registration is now usually submitted online from
the U.S. Patent and Trademark Office website at http://www.uspto.gov/main/
trademarks.htm. While federal trademark registration is always recommended, the
costs for such registration are more substantial than state registration, and the
application review process is more rigorous and time consuming. Therefore,
whether a nonprofit corporation should in fact undertake federal registration

WASHINGTON NONPROFIT HANDBOOK -255- 2018