Should churches and ministries care about trademarks?Business Activity, LEGAL Friday, July 1st, 2011
By Kenneth Liu
“A good name is more desirable than great riches,” says Proverbs 22:1 but it takes an effort to keep it that way.
For two years Father Luke Strand, a young priest at Holy Family Catholic Community in Fond du Lac, WI, had driven a car emblazoned with a “God Squad” logo. Unfortunately for him, the electronics retail giant Best Buy did not find much redeeming quality in his attempt at adding a little levity to his ministry. It sent Father Strand a cease and desist letter for infringing on its registered Geek Squad trademark.
What was once strictly a concern of for-profit businesses, today “branding” is just as important for nonprofits, including churches and ministries, as they are for corporations. Although churches and ministries do not market products and services in the same way that for-profit companies do, they nevertheless rely on their names, logos, slogans and other trademarks to express their identities and convey messages to the public.
Trademarks and ministries
Trademarks are important to churches, ministries, church networks and denominations, and other nonprofits for a number of reasons:
Trademarks embody the goodwill and reputation of an organization. The goodwill and reputation of an organization and its programs takes years of hard work to establish. Such goodwill and reputation is key to successful operation of your organization’s mission.
The public judges the quality of ministry services and the credibility of teachings from an organization based on the reputation of the source. Proper protection of a trademark helps to strengthen your ministry’s goodwill.
Adequate trademark protection prevents public confusion. Without trademark protection, other organizations may intentionally or unintentionally use a name similar to your church or ministry, leading to confusion among the public. Today, instead of traditional names like “First Baptist,” churches are increasingly adopting highly distinctive names such as “Mosaic” or “The Vine.” Such contemporary names are “brands” that convey certain messages in reaching particular audiences.
Trademark protection allows churches to prevent others from copying or unintentionally adopting similar names and creating confusion. Public confusion may result in anything from seekers driving to the wrong location, or worse, people finding a different ministry that espouses teachings contrary to yours. And in situations where the media is involved, confusion can result in a public relations nightmare.
Trademarks enable a ministry or church network to maintain doctrinal integrity. In the Christian community, people need to know whether a church or ministry’s underlying teachings are trustworthy. Trademarks help the public to associate a name, a church network or association with certain beliefs. Failure to protect the association or ministry name can lead to disputes about the right to use the name. If a trademark is properly protected, the association can compel an individual church whose teachings stray from its core beliefs to cease using the association’s name.
For instance, after a theological dispute in 2006, a former member of the Seventh-Day Adventist Church founded his own church with three members under the name, “A Creation Seventh Day & Adventist Church.” Fortunately for the Seventh-Day Adventist Church, they had earlier registered the SEVENTH-DAY ADVENTIST trademark and used it to stop the dissident member from using his confusingly similar church name. The dissident member argued that the phrase was a generic term referring to a type of religious belief, but in 2010, a Tennessee court found that the Seventh-Day Adventist Church had properly used and protected the name as a trademark, and enjoined the dissident member from further use of his infringing church name.
Trademark protection can prevent deliberate infringement or tarnishment of an organization’s name. Often, Christian ministries have detractors who deliberately seek to tarnish the ministry’s name. For example, in 1997 an individual opposed to the group Jews for Jesus set up a website using the “Jews for Jesus” name, deliberately trying to draw people away from Jews for Jesus.
His website directed viewers to another website that attempted to show people “how the Jews for Jesus cult is founded upon deceit and distortion of fact.” By enforcing its federally registered trademark, Jews for Jesus successfully stopped the individual from continuing to tarnish its organizational name.
Protecting your trademarks
Churches, ministries and other nonprofits should take the following steps to protect their trademarks:
Conduct trademark searches prior to use. Prior to adopting a new trademark, an organization should have trademark counsel conduct a trademark search to determine if the proposed mark is available.
Register your trademarks. Registration of a mark with the U.S. Patent and Trademark Office entitles the owner to significant legal benefits.
Use the proper notice symbols. Prior to registration, a trademark should be tagged with the TM symbol. This symbol alerts the public to your claim to a mark. After registration, a mark should be tagged with the registered ® symbol.
Always enter into written license agreements with those whom you permit to use your marks. Such an agreement is an important means of preserving the integrity of your mark in the event of a dispute.
Monitor your marks and pursue infringers. For key marks, you may wish to consider subscribing to professional trademark “watch” services that monitor for confusingly similar marks. Once you are aware of marks that are confusingly similar to your organization’s marks, consult a trademark attorney for help in stopping the infringing use. Failure to stop infringing uses of the mark can result in the weakening of rights in the mark, and damage your ministry’s goodwill and reputation.
The most cost-effective time to begin protecting your brand is in the early stages of creating a new organizational name or launching a new program, service, or product.
Kenneth Liu is a partner in the intellectual property group of Gammon & Grange, P.C., McLean, VA. www.gg-law.com
Brands and trademarks
A “brand” is the public identity represented by a name, logo or other identifier. A “trademark” is a legal term for the intellectual property embodied within a brand. The two words are often used interchangeably.
Trademarks include not only organizational names, but also:
- Logos and designs
- Slogans and jingles
- Program names
- Names of publications
- Anything that identifies a service or product – even colors and smell