Not only should churches consider protecting their names with federally registered trademarks, they should also consider protecting their brands.
Churches create valuable brands when they develop unique products and services from their own initiatives. Churches may create a community outreach program that involves a food bank, ESL learning services, and legal aid services all under a unique brand, and advertise that unique brand to the local community. Churches also often develop their own curriculum or other Christian and educational products, such as books, CDs, DVDs, and curriculum materials that they sell on their online bookstores. Bigger churches may even identify their radio or television programs, conferences, or seminars with a particular brand. All of these brands may require trademarking.
The question is, when should a church invest in protecting a brand name with a federal trademark registration?
Practically speaking, a church should consider protecting a brand when it:
Offers a product or service to those in at least two states;
Determines that the product or service is sufficiently valuable to the church to justify the initial costs of protecting the brand as a federal trademark;
Wants to protect the particular product or service from being misappropriated;
Wants to keep target audiences from being confused or misled by products or services offered under the same, or confusingly similar, brand; or,
Wants to prevent others from using the same, or confusingly similar, brand on similar products or services.
It is possible to secure a state trademark registration for those brands the church only uses locally or within state borders. These brands aren’t eligible for federal protection. However, unlike state trademark registrations, federal trademark registrations, which are initially more expensive, offer significant long-term benefits:
The right to use the federal trademark registration symbol (®);
Presumption of right to own and use the mark against all others for the goods or services designated in the registration;
Application to all states, not just one (this is particularly important in the age of the Internet for offering goods and services to consumers across state lines);
Listing on either the Primary or Supplemental Register—publicly available registries—and also puts the public on notice of the brand’s trademark rights;
Provision of a legal presumption of the validity of the registration and the ownership;
Provision of certain statutory rights under the Landham Act related to infringement and ability to recover damages;
Ability to form the basis for other filings, such as international trademark filings;
The opportunity to stop unauthorized imports via U.S. Customs at the border; and,
Easy maintenance with maintenance filings required at 5, 10, and 20 years after registration.
Practically speaking, it is particularly important to assist in registering with Amazon’s Brand Registry if your church books or products are sold on Amazon. This registry helps prevent hijacking of your listings by infringers. Even if a church uses a third-party publisher that sells on Amazon, the duty to protect trademarks and copyrights against infringement is the contractual duty of the church.
If federal registration isn’t possible
What if a church is not ready to invest in federal trademark registration to protect its brand—how can it put others on notice of its claim to the mark? Consider these three options:
1. Use trademark symbols. As soon as the church creates a brand, it should identify that brand with a TM (™) symbol typically placed at the upper right shoulder of the mark to indicate it is making a claim to ownership of that brand: CHURCH BRAND™. Use the symbol on each type of product or service that is under the same brand.
Use of the trademark designation for products or other goods or “SM” (service mark) designation for programs and services alerts the public to your church’s claim to a common law mark. No federal registration is required to use either of these symbols. It does not give you the rights and benefits of a federal registration, but it does put the public on notice that your church has a claim.
Your church legally may not use the federal registration symbol of “®” until the United States Patent and Trademark Office has registered the mark. The ® can also only be used with the specific goods or services that were listed in the federal trademark registration. It cannot be used if your church only has a state trademark registration.
2. Keep evidence of use in a retained file. Keep evidence and information in a file about the date of first use of the product anywhere in commerce, and also across state lines. For example, if your church offers the product online, print out the page with a date stamp that shows the product and the opportunity to purchase it, such as an “add to cart” button. This evidence will assist your church to defeat other claims within the common law territory in which it uses the mark. It then is easily available to you later if you decide to file a federal trademark application.
3. File a state trademark registration. When a church provides a local program or product under a brand it wants to protect, and it does not offer those services to those in at least two states, then it is not considered eligible for federal registration with the USPTO. If the goods and services are not offered across state lines, then the brand is not eligible for federal trademark registration. For example, if a church offered a community services program that involved local volunteers, community partners in the provision of a food bank or meals program, and that church only advertised the name of the program locally within one state, it would not be eligible to protect that brand through a federal registration.
The church could protect its local or statewide product or service, however, with a state trademark registration. If it secured a state trademark registration, the church could prevent others in the same state from offering a similar community services program under the same or any other confusingly similar name.
Due to the fact that many churches offer their products and services on their church websites, which are available to many across multiple states, state trademark protection has become less significant. But it is still a viable option. It is less expensive, less time-consuming, and it provides at least some public notice of your brand. It will not prevent any other church, organization, or individual in another state from using your brand. It can be an important first step, however, in protecting your brand (at least within your own state).
How can a church secure a state trademark registration?
Each state’s rights, privileges, benefits, filing, and maintenance requirements are different. You will need to examine the benefits of a state trademark registration by contacting your particular state governmental department agency that governs trademark registrations. Typically, each state’s Secretary of State has authority over the granting of a state trademark registration (see Table 1 beginning on page 6 for a listing of states and links to state trademark registration information and forms).
Table 1. State Trademark Information Links
To acquire trademark and/or service mark registration at the state level, applicants must file an application with the trademark office of the specific state in which protection is sought. For information about state registration requirements, applicants must contact the individual state trademark office.
|District of Columbia||Use of a mark solely within the District of Columbia qualifies for federal registration. There is no D.C. trademark law. The District’s trade name registry can be found at brc.dc.gov/planning/requirements/tradename.asp|
Application for Registration of Mark:
Oregon Trade and Service Mark law:
Trademark and Service Mark Law:
|Puerto Rico||estado.gobierno.pr/ (in Spanish)|
For example, assume a church in Virginia wanted to protect its series on family financial well-being based on Biblical principles, which includes church-based seminars it offers four times a year and a number of products (curriculum, leaders’ guides, participant’s guides, DVDs, CDs, books, workbooks, and budgeting software) developed under the brand MONEY WISDOM™. This church offers and sells this program and these products only to its own local church members and to those who shop at the church’s physical bookstore.
The church administrator can look online to find information and can often submit an online state trademark application form and pay the requisite fees online. In Virginia, a state trademark application only costs $30. Virginia requires a notarized form to be submitted and a specimen of the mark as it is used in Virginia. Virginia’s one-page form asks for basic information about the person or entity seeking registration. It then asks basic ownership questions about the mark that might be typical of many states.
See Table 2 for how we would fill out this form for the series of four DVDs that comprise the MONEY WISDOM™ home study course.
Table 2. A Sample Application
How we would complete a state trademark application form for MONEY WISDOM™ in Virginia:
|Kind of Mark(trademark or service mark):||Trademark|
|Identify the mark:||MONEY WISDOM|
|Classes of goods or services1:||Class 9|
|Describe the product or services the mark represents:||Series of DVDs|
|Date the mark was first used anywhere by applicant:||1/1/2014|
|Date the mark was first used in Virginia by applicant:||1/23/2014|
This is defined by Virginia statute and you should check the classes for which you are applying.In reading through the list, it did not mention DVD, but did mention “recording discs” in Class 9.
The Virginia application requires the submission of a specimen to show how the mark is used on the product. A copy of the front cover of the DVDs showing the brand works well as evidence of the church’s use of the trademark on the DVD.
Descriptions of goods and services are more detailed on the federal trademark register because subject matter fields often are required. States often do not require the same amount of specificity.
Each state’s process for registering your brand is different. In addition to Table 1, you can find links to your state’s process for registering and other information about the rights and benefits of registering your trademark in your particular state here: uspto.gov/trademarks/process/State_Trademark_Links.jsp
A church should follow the steps outlined below (and in Table 3 on page 9) when considering brand names for a particular product, program, or service, particularly if the church desires to offer the products in at least 2 states. A church wants to be fairly confident it can secure full-bodied protection before investing in the costs of production, marketing, and advertising. Much creative time and valuable administrative energy and expense will be expended to ensure that your target audience identifies your church’s product or service with a specific brand name.
Table 3. Federal Trademark Registration
Here’s the rundown in eight easy steps.
|1||Identify potential brand names for the product, program, or service.|
|2||Secure identical and similar domain names to the possible brand names.|
|3||Conduct a Google search for the name.|
|4||Contact a Trademark Attorney to Conduct a USPTO Screening Search.|
|5||Conduct a Professional Trademark Search through a Qualified Intellectual Property Search Firm.|
|6||File Trademark Applications in All Classes Necessary.|
|7||Respond to USPTO Actions.|
|8||Enjoy and Maintain the Benefits of Federal Trademark Registration.|
Securing the rights to that name prior to launching the product or program requires due diligence on the part of the church to determine if it is likely to be able to secure the rights to that name. We recommend that product/program creators take the following steps to systematically secure federal trademark rights to a brand name:
Step 1: Identify potential brand names for the product, program, or service. Think about whether or not you want this name to cover a number of products and services. The brand may encompass several classes of goods and services. For example, a curriculum program might have Class 41 educational services, Class 9 downloadable and electronic data products, and Class 16 print products (see Table 4 on page 10). A brand name will cover both the program and the products developed under the program.
Step 2: Secure identical and similar domain names to the possible brand names. Ideally, you will want to own the identical domain name to the brand name desired. We also recommend purchasing as many domains as possible that are similar to the mark (such as plurals, extended phrases, or misspellings). This is particularly important in preventing infringers from capitalizing on your mark’s goodwill, or even trying to attack your products or programs. The cost of purchasing a domain name is inexpensive—about $8 per domain name per year—and well worth the additional protection. If the identical domain is not available, you may wish to consider another brand name on your list (see the sidebar “What Churches Should Know About Trademarks and Website Addresses” on page 16).
Step 3: Conduct a Google search for the name. Use quotations around the potential names to identify any other users of the exact same trademark. We find that a typical problem for many of our clients is that they do not develop a unique enough name—especially in the area of Christian products and services. Searching the brand name on Google will help you identify how broadly used (and thus, weak) the name might be. In our experience, some of the strongest marks can be terms used in a trademark that are not ordinary terms found in the Christian “world.” Although there may be many others who use that term as a trademark, they are not using it with a religious audience or for similar products and services in Christian and spiritual subject matter fields.
Step 4: Contact a trademark attorney to conduct a USPTO screening search. Although the church can normally perform the first three steps through an administrative staff person, this next step should be conducted by an experienced trademark attorney. Once the names are narrowed down with the first three steps, contact a trademark attorney to conduct a screening search of the USPTO. This search is conducted in-house, is not comprehensive, and only reviews marks that contain identical terms. Nonetheless, this often helps to further define your church’s list of potential brand names.
Step 5: Conduct a professional trademark search through a qualified intellectual property search firm. Prioritize your list of potential brand names that have made it through the first four steps. At this point, your church should be ready to work with the trademark attorney to finalize detailed descriptions of goods and services. You should also be ready to order a professional search through a well-respected intellectual property trademark search firm that uses algorithms and search strings to search the USPTO database for potentially confusingly similar marks. The resulting search report, which typically is 100 pages to 300 pages long, should be analyzed by legal counsel with experience in prosecuting federal trademark registrations.
The analysis of the intellectual property search firm report should review potential problems and identify prior marks or applications with potential conflicts. The report also assists the attorney in working with a church to further refine its descriptions of goods and services in order to avoid a challenge by the USPTO attorney who will review your application.
This legal analysis can identify variants of your mark which may potentially present a conflict in advance, develop a strategy to assist in overcoming objections by the trademark examiner, and assess the risk of moving forward with that brand.
View this as a bit of a chess game, anticipating the objections ahead of time by trademark examiners, and executing a strategy for avoiding and/or overcoming those objections. It sets the framework for the process of trademark review and response with the USPTO. Note that this process can take up to a year, or in some cases, longer.
Step 6: File trademark applications in all classes necessary. Once you have reviewed the intellectual property search firm report with counsel, made adjustments as necessary in the descriptions of goods and services, and determined what classes of goods and services have the best chance of approval, you and your counsel should be ready to prepare and file the trademark applications.
There are two types of applications available: filing for “actual use” trademark and filing for an “intent-to-use” trademark.
Actual-Use Application. An actual-use application requires that you submit a specimen demonstrating your church’s use in commerce of the trademark as used on the product or service, and that your church identified the date of first use in commerce. Here is where that file of evidence your church tucked away earlier comes in handy. A church should have an attorney review the specimens to uncover any potential problems prior to submission. If approved, the USPTO issues the church a certificate of registration for its trademark in the classes that were approved and for the goods and services stated in the application (or as amended in the review process with the trademark examiner).
Intent-to-Use Application. An intent-to-use application does not require the submission of a specimen, but permits a church to effectively apply to reserve the name for the classes, goods, and services for which the church applied (or which were amended in the review process with the trademark examiner). When the USPTO approves the application, it issues a notice of allowance, which reserves the right of the applicant to demonstrate actual use of the trademark for the particular goods and services sometime in the next 6 6-month periods (or a maximum of 36 months). This gives an applicant effectively 4 years (typically a year for the approval process, and 3 years more to demonstrate actual use) to protect its name against other subsequent applicants. We typically advise our clients to file intent-to-use trademark applications when it is relatively certain they will bring the proposed good or service to market within the next 36 months to 40 months from the date of application.
Churches can file for trademarks comprised of words (word mark), trademarks comprised of designs (design mark), and trademarks comprised of words and logo design (combination mark). Typically our clients are most interested in protecting their word marks and strategic long-term designs as separate marks, even when used together.
See Table 4 for examples of typical classes and types of products or services of our church clients.
Table 4. Examples of Typical Classes and Types of Products or Services of Churches
|Class 09||CDs, DVDs, downloadable audio, video, or audio-visual files, podcasts, software|
|Class 16||Books, workbooks, study guides, leader guides, participant guides, curriculum and associated printed materials that accompany that curriculum (handouts, workbooks)|
|Class 35||Online retail store.|
|Class 36||Charitable fundraising|
|Class 38||Radio broadcasts, television, cable, satellite broadcasts, streaming of audio, video, and audio-visual material through the Internet, and video on demand|
|Class 41||Educational services, such as providing classes, courses, seminars, training, conferences, instruction, and workshops|
|Class 43||Services for providing food and/or temporary housing|
|Class 44||Humanitarian services such as medical, agricultural services|
|Class 45||Conducting worship services, prayer ministries|
Step 7: Respond to USPTO office actions. It typically takes three months for an application to be assigned by the USPTO to a trademark examiner. The trademark examiner reviews the application and, by searching the USPTO database with its own algorithms, determines if there are prior registrants or prior-filed applications (which have priority) that might create what is known as a Section 2(d) objection. This occurs when a trademark examiner finds a prior registered or pending mark in its registry that, in the examiner’s opinion, is confusingly similar to your applied-for mark. Hopefully, with the adequate search, review, and adjustment methodology outlined above, such refusals are avoided. Sadly, the trademark examiner still sometimes issues the 2(d) refusals based on illogical assessments. Unfortunately, it is a fairly subjective process.
Examiner office actions generally fall in three categories: a refusal based on confusingly similar prior registered or applied-for marks; a technical issue with the description of goods and services; or a problem with the specimen submitted with an actual-use application. You should work with your attorney to respond to these office actions in a timely manner as they often require technical amendments or legal arguments.
Step 8: Enjoy and maintain the benefits of federal trademark registration. Once the examiner approves the mark, it is set for a 30-day public notice period in which anyone may object to the registration of the mark. If no objection is made, the examiner issues the certificate of registration.
The church is legally entitled to replace the ™ symbol with the ® symbol in its trademark after the certificate is issued (or once the Notice of Allowance matriculates into a certificate of registration). This closes the registration process of your trademark and provides the legal benefits you need to prevent others from using your mark.
There are maintenance requirements, however, at intervals of 5, 10, and 20 years after initial trademark registration. The USPTO will clear its registries of federally registered trademarks and service marks that the owners do not maintain. These maintenance filings are not difficult to complete, require proof the owner is still using the mark at these intervals, and of course, involve government filing fees. Many owners who do not note the dates on a calendar may miss these important filings and lose their federal trademark registrations. Often your attorney will provide such reminders.
Budgeting for the process
How does a church budget for the federal protection of its brands?
In retail marketing, a general guide to the costs invested in the packaging of a product is 10 percent to 40 percent of the purchase price for the cost of each box. A church should think of the legal protection of its trademarks as an additional production expense to be spread out over the various components of the brand. The expenses for legal protection are frontloaded in the first year, but then are protected with minimal additional expense for decades. Depending on the shelf-life of your church’s products, or the success of the program or products, a church may later end its brand, but a good brand should stand the test of time.
A church will invest significant development, design, production, marketing, and advertising costs, as well as personnel time, in creating products, programs, and services to provide to its members and a larger constituency and audience. A church may be more well-known for a particular product or program than for its own church name (such as PURPOSE DRIVEN® from Saddleback Church). An initial investment in the brand protection not only secures the name for decades going forward, but also provides the church the legal tools it needs if there are those who attempt to market counterfeit goods, or offer similar products or programs, under a confusingly similar name.
The costs invested in creating the product or program actually creates “goodwill” among those who identify your product or program by a brand name. People recommend the product or program to their friends by that brand name. A federal trademark registration protects the goodwill that vests in your products and programs. Initially part of the development cost, registration of your significant brands quickly becomes a measure of trust in the marketplace and an identifier of excellence and values.