More Trademark Bullies, Please -- At Least in the Charitable Space

Over the years I’ve come to the conclusion that trademark law and policy in the United States is likely the least appreciated area of intellectual property law, but also likely the most important.  Trademarks importantly allow the benefits of goodwill to be realized.  Consumer perception guides the development of U.S. trademark law for better or worse, as demonstrated by the U.S. Supreme Court’s recent Booking.com case.  This makes the boundaries of the legal protection provided by trademark law somewhat difficult to cabin-in and may facilitate over-reaching and over-enforcement with the danger of squelching free speech, competition and innovation.  


A benefit of intellectual property is its ability to allow owners to give it away.  The recent Open COVID Pledge is a good example of IP philanthropy.  So, how do trademarks aid in philanthropy?  One way trademarks facilitate philanthropy is by allowing people and entities to donate money to what they believe are worthy causes.  In the United States, we’ve had issues with people choosing trademarks similar to the trademarks of well-regarded charities and profiting from confusion from those marks.  I’ve written about that, here.  It seems that related problems have arisen from the Black Lives Matter movement—particularly given its non-hierarchical structure.  MarketWatch has a helpful article discussing the issues, here.  Charitable causes seem to be an area where greater trademark enforcement would be needed and welcome. 

A Need for Trademark Bullies (or at least more trademark enforcement)?

"Patent troll," "copyright troll," and "trademark bully" are labels with generally negative connotations. Most may say that we need less of all of the above, including less enforcement by these "evil doers." However, defining exactly what might fit in one of the above categories can be challenging. In some ways, it is like telling my children that people are not bad, but may engage in bad behavior. For example, Professor Lemley explores the conduct of some universities in a thought provoking article with the provocative title "Are Universities Patent Trolls?".

Interestingly, with so called "trademark bullies," a definition has been very elusive although some may say a trademark bully is an entity with a lot of resources enforcing a trademark against an entity with less resources (usually by a substantial amount) with a trademark theory that is either unsupported by trademark law or is a bit of a stretch. And even more interestingly, when one searches for trademark cease and desist letters posted on the Chilling Effects Clearinghouse website, that collects cease and desist letters, a vast majority of the letters are posted by Google--the apparent victim of bullying. Leaving aside the definitional issues involving trademark bullies, there is a space where there appears to be a need for more trademark enforcement--not less. That space involves nonprofits.

A few years ago, the well-known and well respected nonprofit Susan G. Komen For the Cure received some not so positive press about its enforcement of "for the cure" against other nonprofits--specifically smaller nonprofits. It was essentially labeled an evil "trademark bully." But, do we need more of that? A recent study and article by CNN, Tampa Bay Times and the Center For Investigative Reporting, outlines the 50 worst charities in the United States and discusses an apparent tactic of some "bad" charities that choose trademarks similar to respected charities and use telemarketers to secure donations--most of which never reach the intended beneficiaries. The article states:

The nation's worst charities are large and small. Some are one-person outfits operating from run-down apartments. Others claim hundreds of employees and a half-dozen locations around the country. One lists a UPS mail box as its headquarters address.

Several play off the names of well-known organizations, confusing donors.

Among those on the Times/CIR list are Kids Wish Network, Children's Wish Foundation International and Wishing Well Foundation. All of the names sound like the original, Make-A-Wish, which does not hire professional telemarketers.

Make-A-Wish officials say they've spent years fielding complaints from people who were solicited by sound-a-like charities.

"While some of the donations go elsewhere, all the bad public relations that comes with telemarketing seems to come to us," said Make-A-Wish spokesman Paul Allvin.

Donors who answer calls from the 50 worst charities hear professionally honed messages, designed to leverage popular causes and hide one crucial fact: Almost nothing goes to charity.

Why isn't there more trademark enforcement in this space? Is it because of the Komen problem where the nonprofit can look very bad very quickly depending on who they choose to enforce their mark against? Do we need more "bullies" and less shame here? An interesting 2013 article "Trademarks for the Cure: Why Nonprofits Need Their Own Set of Trademark Rules" by Lauren Behr in the 54th volume of the Boston College Law Review explores whether nonprofits need special trademark rules.