In the business world, name recognition and protection are well-understood concepts. Companies know the importance of protecting their “brand” and its earning potential. Non-profits may be fundraising instead of selling, and their motivations for collecting money may be different than those of for-profit companies, but ultimately name recognition is just as important to them for bringing in public dollars.
Just how much can a name be worth? Consider the case of “F—k Cancer”, a phrase that has been making headlines recently for all the wrong reasons. Two parties have been fighting over the use of this cheeky slogan for several years now, and to the tune of tens of thousands of dollars in legal fees.
In 2010, Yael Cohen filed an application to trademark the phrase “F CANCER” and a design featuring an F with a censoring strip following it, then the word CANCER. She based the application on having used this mark since 2009 on t-shirts and in relation to operating a charity concerned with education about detecting and preventing cancer. However, Cohen’s trademark application was opposed by Susan Fiedler, another activist who claimed it caused confusion with her company’s own use of “F CANCER” (including a number of variations on the censorship, or lack thereof, of the phrase). Fiedler claimed to have been using the mark since 2008 on bracelets, the sale of which had raised over $100,000 for cancer-related charities.
The Trade-marks Opposition Board found that, although Fiedler had not actually registered the marks, she successfully established that her company’s F CANCER marks had “become known” to a sufficient extent prior to Cohen’s application, and thus denied Cohen the trademark.
However, this decision was just the start of the legal battle.
Cohen was the first to fight back. She applied for judicial review of the decision on the grounds that the Trademarks Act prohibits recognition of a trademark that includes a “scandalous, obscene or immoral” word. Cohen admitted that her goal was a ruling that no one had any enforceable rights to the marks, whether registered or not. The Federal Court was not impressed, and declined to entertain the obscenity angle as a ‘new argument’ that had no place being settled by judicial review. The Court dismissed the application with a rather pointed judgment and ordered Cohen to pay $5000 in costs.
Now, Fiedler has filed a civil claim in the B.C. Supreme Court. She has publicly stated that her goal in making this filing is to gain enforceable rights over the mark, but the claim is in fact for damages caused by the “deliberate deception and misrepresentations” of her rivals.
Whatever the outcome of this civil suit, this saga makes the point quite dramatically that name recognition can be a very valuable commodity to non-profit fundraisers and can lead to protracted legal battles. Where a cause is personal to the parties involved, as many charitable causes are, the battles are also bound to be emotionally fraught.
Just like with for-profit companies, there are specific legal ways in which a non-profit can protect its name. Trademarks are only the final and most complex step in a longer series of options. Awareness of these options is the first step to a good name protection strategy. In this case, both parties would have benefitted from taking concrete name protection steps sooner, before they had each come to independently rely on an unprotected phrase for their fundraising income.
If you are considering establishing a charitable/non-profit enterprise, or have already done so, Drache Aptowitzer LLP can help you review your options for name protection.