Relevant Trademark Issues for Naming DLCs, Makerspaces & Student Groups

May 2019

Consistent with the Institute’s continual growth, evolution and commitment toward helping to solve the world’s greatest challenges, new groups are being formed on campus at breakneck pace. Whether these are new centers, consortiums, makerspaces or student groups, one of the most fun parts to getting a new group off the ground is choosing a name.  This article is intended to provide a few pointers, and some background considerations, if you find yourself in the position of helping to choose a name for a new group here at MIT.

Use of MIT Name v. Third Party Trademark Issues

The focus of this article is the intersection between campus activities and the trademarks of third parties.  However, there are many instances in which you may need to consider how you may permissibly use the Institute’s name or insignia in connection with a MIT group or project.  Before using MIT’s logo or branding, please contact the Communications Initiative in the Office of Communications. [1] 

Trademark Primer

A trademark is one of several types of intellectual property protected by US law.  

A trademark can be a word, name, or symbol; in some circumstances, trademarks may consist of colors, sounds and even scents.  A trademark is used to identify the source of goods or services. To be protected at the national level, a trademark must be distinctive and used in interstate commerce.  Distinctiveness is a legal determination and exists when a mark is capable of identifying the origin of a good or service. 

The owner of a trademark has the right to exclude others from using confusingly similar marks in the same marketplace (i.e., industry or field).  The underlying goal is to protect the trademark owner’s right to rely on the trademark to distinguish the trademark owner’s goods or services from others. 

“Likelihood of confusion” is the test for trademark infringement. This concept refers to the likelihood that there may be confusion in the marketplace over source, sponsorship, or affiliation resulting from the simultaneous use by different parties of identical or similar marks for their respective goods or services.    

Obtaining a federal trademark registration occurs through an application and review process with the US Patent and Trademark Office (“USPTO”).  However, a party need not have a registered trademark in order to protect their mark and require others to stop using confusingly similar marks; “common law” marks (i.e., those that are unregistered but are in prior use) may also be protectable.  

When Should I Think About Trademark?

If you are involved in the naming of a DLC, Makerspace or student group you should carefully consider the choice of name.  While it is likely not necessary (or appropriate) for you to initiate the application for trademark protection, you should consider whether the adoption of a certain name or logo could potentially infringe another entity’s trademark.  There are, however, some instances in which you may want to consider trademark protection for your group’s new name.  This may be appropriate when the name will be frequently used outside of MIT (e.g., you are developing a curriculum that will be used by other institutions).  If you wonder whether it would be beneficial to register your new group’s name, please contact the Technology Licensing Office. 

If a trademark owner (or applicant) subsequently contacts you and requests that you change the name of the applicable DLC, Makerspace or student group, you may be required to do so.  Changing your chosen name after you have spent time and resources on communication materials and begun the process of educating the MIT community (or external community) about your group may be costly and burdensome.  Therefore, you should carefully consider the following prior to adopting a name.

Factors to Consider in Choosing a Name

  • Does the name evoke any other brand, product or service? Try to pick a name that is distinct from other associations.
  • Can you pair your chosen name with MIT? (For example, instead of “Turtledoves”, try “MIT Turtledoves”.)  If possible, attaching MIT to the name of a group will help limit any possibility that your group could be confused with a non-MIT entity. Note: Prior to using the MIT logo or other MIT branding, consult with the Office of Communications.
  • Do not promise use of a certain name until you have undertaken appropriate research, as described below. (For example, if you are enlisting student input in choosing a name, caveat the use of the winning name with an explanation that prior to final adoption of such name certain research must be performed in order to make an assessment as to whether the chosen name might potentially cause confusion with any other existing marks.)

What To Do Before Deciding on a Name

  • Perform an informal Google search to look for similar names or acronyms that describe or are associated with a group, company or other entity involved in, or related to, the same field, work or service as your group.
  • Perform a search on the Trademark Electronic Search System (TESS), which contains the records of active and inactive trademark registrations and applications.  TESS can be accessed from the USPTO website. 
    • TESS contains records that could be used by the USPTO if the USPTO were examining an application to register a certain mark. However, TESS does not contain all registered trademarks (e.g., state registered marks and common law marks).  
  • For the most exhaustive search, consider, in consultation with OGC, using an outside trademark searching firm. (This decision will be made only in appropriate circumstances.)
  • If you come across a name that is similar to the one you would like to use, and that name is already being used to identify goods or services that exist in the same general field (or related field) as the subject matter of your new group, please consider choosing a new name all together (rather than trying to “tweak” your chosen name).

Potential Disputes; Path Toward Resolution

If you are contacted by a person or entity claiming that the use of a certain name, acronym, logo, etc. infringes (or potentially infringes) another mark please contact OGC.  Typically, if you are contacted in this manner (i.e., receive what is known as a “Cease and Desist Letter”) the other entity will request that you change the name of your group, which will include changing your URL and all communication materials using your name. 

In this instance, it is unlikely that litigation will ensue, however, receiving a Cease and Desist Letter will require time to address and may delay certain timelines that your group has planned.  For instance, if discussions concerning your permitted use of a certain name are underway with another entity, your group may not be able to use its name externally or publicly display or communicate certain events.  To avoid the possibility of a dispute with a third party, it is worthwhile to investigate your potential name choice in advance of adopting it.

Other Considerations

Prior to choosing a new name for a group or project at MIT – particularly a student group or project – remember to consider the fact that the name you choose will become associated with MIT and therefore part of the overall MIT “brand”.  Therefore, if you plan to subsequently spin out your group, project or other initiative please consider avoiding a catchy name that you may later want to take with you and use for the project when it becomes external to MIT.

Conclusion

Founding a new group on campus is exciting, fun and often leads to exceptional scholarship and world changing technology.  The tips above should in no way take away from that excitement!  The goal is to help you choose a name that can last; and remember, when in doubt, or if you have any questions, please do not hesitate to contact the OGC. 

 

[1] By contrast, the Technology Licensing Office, is responsible for coordinating, reviewing and approving Use of Name requests by external, third parties.  That type of use is not within the scope of this article, but TLO provides some helpful information on this topic.