IP Update

By Sepal Bonni and Cameron A. Axford

Jan 2025 Charity & NFP Law Update
Published on January 30, 2025

 

   
 

1.1.  Trademark Opposition Initiated by WE Charity Fails

In a recent decision by the Trademarks Opposition Board (TMOB), WeWork Companies Inc. (“WeWork”) was successful at defending an opposition proceeding initiated by WE Charity against two trademark applications owned by WeWork. WE Charity v WeWork Companies Inc. was decided on November 26, 2024.

The issue before the TMOB was whether WeWork’s two trademark applications for WE trademarks caused confusion with WE Charity’s established trademarks, which are associated with charitable and educational services. WE Charity argued that WeWork’s trademarks could mislead the public into believing there was a connection between the two entities, potentially harming WE Charity’s reputation and brand identity.

However, the TMOB rejected WE Charity’s oppositions. A key factor in its decision was WE Charity’s failure to provide sufficient evidence to support its claims. While WE Charity asserted extensive use and advertising of its WE trademarks, it did not submit any evidence demonstrating this use. This lack of evidence significantly hampered We Charity’s case.

The TMOB also considered the inherent distinctiveness of the marks in question. It found both WeWork’s and WE Charity’s WE trademarks to be inherently weak, meaning the trademarks lacked inherent distinctiveness. The term WE is considered suggestive, if not descriptive, of both organizations’ activities – community-focused services for WE Charity and collaborative workspaces for WeWork. Without evidence of acquired distinctiveness through extensive use and promotion, neither party’s marks were considered strong trademarks or afforded a wide ambient of protection.

The TMOB also analyzed the nature of the goods and services offered by each organization. They found a clear distinction between WeWork’s focus on commercial real estate, co-working spaces, and related services, and WE Charity’s emphasis on charitable fundraising, educational services, and community building. This difference in the nature of services further reduced the likelihood of confusion between the trademarks.

The TMOB acknowledged the high degree of resemblance between the marks. However, it emphasized that the similarity of marks alone is not decisive, especially when dealing with weak marks. The differing nature of the services and business operations played a more significant role in mitigating the potential for confusion.

Ultimately, the TMOB concluded that WeWork had successfully demonstrated there was no reasonable likelihood of confusion between its WE marks and those of WE Charity. The dissimilarity of the services and the inherent weakness of both parties’ marks weighed heavily in WeWork’s favour. 

This case highlights the importance of proactive trademark protection and distinct branding for charities to avoid public confusion and safeguard their reputation. Charities should register their trademarks, monitor for infringement, and ensure their branding is unique to prevent conflicts with unrelated entities, while also being prepared to enforce their rights legally if necessary. It also highlights the challenges faced by organizations relying on inherently weak trademarks, particularly when facing opposition from other entities using similar marks in different commercial spheres.

   
 

Read the January 2025 Charity & NFP Law Update