Following the disaster in Haiti, Sean Penn started an organization to help the devastated country. He named his organization J/P HRO. Nine years later, J/P HRO is getting a new name: CORE. According to an article in the Hollywood Reporter, in addition to continuing to help Haiti, the organization will also focus on helping other communities facing disasters in the Caribbean.
Unlike some of the rebrand examples that made the worst list in 2018, Sean Penn’s organization decided to shed its acronym for a word that better represents the organization’s image. The move was a good one. CORE is a better name than J/P HRO, but is it available?
Protecting the service mark rights of a nonprofit that performs its actual service in a foreign country can be tricky. Because trademark rights are territorial, use of a trademark in foreign country cannot support United States trademark rights. But some activities of this type of organization occur in the United States such as fundraising. Using a service mark in the United States to raise money for the organization can be protected.
Unfortunately, CORE, by itself, may not be available for fundraising services. The Silicon Valley Common Core Initiative has registered its mark for the broad description “charitable fundraising and charitable fundraising services.” This description is broad enough to cover raising money for Haiti and other Caribbean countries and the CORE word is encompassed in its entirety in the prior registered mark.
In situations like this, it would be wise for Sean Penn to make a couple changes. First, consider adding some words to CORE. Preferably, the added words will be inherently distinctive not descriptive or generic. But even descriptive and generic words are considers when assessing the overall commercial impression of a mark.
Second, be more specific about the type of fundraising the organization is doing and the cause it is supporting. This is an important first step in avoiding a potential dispute with the prior registered mark.