Should a Non-Profit Entity Like a School District Register its Logo Under the Pennsylvania Trademark Act?

Most people are familiar with registering trademarks or servicemarks with the United States Patent and Trademark Office (USPTO). Doing so gives the registrant of the mark some powerful remedies to use against an infringer of that mark, wherever in the United States of America the infringement may occur. Organizations that sell goods or services beyond the confines of the Commonwealth of Pennsylvania should consider registering their marks at the federal (i.e., the national) level with the USPTO because it gives them nationwide protection. But there are some organizations that use their marks in commerce only within the boundaries of the Commonwealth of Pennsylvania; those organizations should consider registering their marks with the Commonwealth of Pennsylvania.

I recently represented a Southcentral Pennsylvania school district that had been using its mark, (i.e., its logo) on clothing, athletic uniforms, yearbooks, gymnasium floors, sporting arenas and just about everywhere throughout the school district. The district had a licensing agreement with an apparel manufacturer that permitted the manufacturer to put the district’s logo on its apparel and sell the apparel and in exchange the district would get a percentage of the sales proceeds. The district did not anticipate that another person or entity would take the district’s logo, put it on that entity’s merchandise and sell the merchandise online. Well, it happened. The other entity was using the district’s logo to sell its own merchandise! While for profit businesses think about this potential all the time, and prepare for it by registering their marks, non-profits like school districts do not. Yet it happened to a Pennsylvania school district recently.

To make matters worse that other entity successfully registered the district’s logo with the Pennsylvania Department of State for itself and the registration was accepted! The other entity, essentially a counterfeiter, feeling pretty bold because it now had a registered mark went ahead and started putting the district’s logo on its merchandise and marketing the merchandise for sale on the internet. The district was shocked to find what appeared to be its merchandise with its logo for sale by a different entity! So, the district hired me. I filed an action to cancel the registration with the Pennsylvania Department of State. That process took some time and did require the district to spend its precious resources litigating that case. We won the case. The Department of State canceled the other entity’s trademark registration. To be clear, this was an action to cancel a registration; this was not an action in which we sued the entity for infringement.

If the district had previously registered the mark, it would have been in a stronger position and could have gone into court with the powerful statutory remedies available to one who registers its marks. If you register your trademark under the Pennsylvania Trademark Act, you obtain remedies against those who infringe your mark. You may sue an infringer in Court and if you are successful the Court may order the infringer to cease using your mark, pay you all profits derived from and all damages suffered by reason of such wrongful use of your mark, order that all counterfeits or imitations in the possession or under the control of the infringer be delivered to an officer of the court or to you to be destroyed, enter judgment for an amount not to exceed three times such profits and damages and/or reasonable attorney fees.

Non-profits such as school districts do not think about the need to register its marks because they are not focused on commerce and profits, they are focused on carrying out their non-profit mission. However, in today’s age, organizations that only engage in commerce within the limited confines of Pennsylvania, and that wish to protect their brand, their name, and any profits, may want to consider registering their marks with the Pennsylvania Department of State.

If you would like to talk about trademark registration in more detail, do not hesitate to contact Scaringi Law at 717-657-7770.