The “Ice Bucket Challenge” is the viral fundraising sensation of 2014, raising more than $100 million in the US and over $16 million in Canada to date, as reported by The Amyotrophic Lateral Sclerosis (ALS) Association in the US (“ALS US”) and ALS Canada. In the US, this equates to a 1000% spike in donations to ALS US.
In August 2014, ALS US recognized (perhaps too late) that there may be some value to the phrases “Ice Bucket Challenge” and “ALS Ice Bucket Challenge” and sought to protect the fundraising brand through trade-mark registrations in that country. However, almost as fast as the Ice Bucket Challenge became a viral sensation, ALS US received public criticism for the its trade-mark filings because the applications would prevent other charities from using the marks. As a result of public concern, ALS US stated its decision to withdraw its applications to register the phrases as trade-marks via Facebook. Notwithstanding the public criticism, the applications may have been denied by the US Patent and Trade-Mark Office in any event, as the phrase had likely already become too generic by that point in time.
Unfortunately, ALS US did not apply for the trade-mark registrations until after the Ice Bucket Challenge had become a global fundraising phenomenon. In this regard, once a fundraising marketing campaign, such as the Ice Bucket Challenge, goes viral and is used increasingly by the public, the trade-mark owner may no longer have control over the mark and may lose its ability to claim ownership of the mark. If ALS US had applied and registered the mark domestically and abroad prior to the challenge becoming a global phenomenon, it would have been able to effectively prevent the misuse of its fundraising marketing brand by numerous third parties in other countries who have been able to “piggyback” on the success of its campaign. Many of these third parties use ALS as a cover, but have no affiliation with the disease or ALS US in any country.
The lesson to be learned here is that charities should register their unique fundraising brands prior to the launch of a public campaign in order to maintain control over the goodwill associated with their brands and prevent their marks from becoming generic and thereby potentially misused. Early registration is also important to avoid public backlash and criticism that could otherwise result from a later attempt to trade-mark a fundraising marketing brand after it is already in the public domain.
For more information regarding registering fundraising brands, please see:
Enhancing Your Charity Brand: Why it Matters? By Sepal Bonni
Terrance S. Carter is the managing partner with Carters Professional Corporation, and counsel to Fasken Martineau DuMoulin LLP on charitable matters. He is a member of Canada Revenue Agency’s Technical Issues Group, past member of CRA’s Charities Advisory Committee, Chair of the National Charity and Not-for-Profit Section of the Canadian Bar Association, and has been recognized as a leading expert in Canada by Lexpert and Best Lawyers in Canada. He can be reached at tcarter@carters.ca.
Sepal Bonni, B.Sc., M.Sc., J.D., Trade-mark Agent - Called to the Ontario Bar in 2013, Ms. Bonni joined Carters’ Ottawa office to practice intellectual property law after having articled with a trade-mark firm in Ottawa. Ms. Bonni has practiced in all aspects of domestic and foreign trade-mark prosecution before the Canadian Intellectual Property Office, as well as trade-mark portfolio reviews, maintenance and consultations, and is increasingly interested in the intersection of law and technology, along with new and innovative strategies in the IP world.
