NAMI sues former affiliate Mindspring Mental Health for trademark infringement
JOE GARDYASZ Oct 5, 2021 | 3:55 pm
4 min read time833 wordsAll Latest News, Health & Wellness, Law & Government
The National Alliance on Mental Illness on Friday filed a federal lawsuit against Mindspring Mental Health Alliance Inc. in Des Moines, alleging that Mindspring has infringed on NAMI’s trademark and intellectual property protections by using NAMI-branded materials after ending its affiliation with the national organization.
Mindspring, formerly NAMI Greater Des Moines, voluntarily surrendered its affiliate status in January. The organization formally adopted new bylaws and adopted new articles of incorporation in March. (Read a related Business Record article about the organizational split.)
“Despite leaving the NAMI Alliance, Mindspring has continued to use NAMI-branded materials,” said Daniel Gillison Jr., CEO of the Arlington, Va.-based national advocacy group, in a press release. “NAMI has resorted to a lawsuit after several attempts over the past six months, including a cease-and-desist letter from counsel, to get Mindspring to stop using NAMI intellectual properties.”
The lawsuit, NAMI National v. Mindspring Mental Health Alliance, was filed in the U.S. District Court for the Southern District of Iowa. NAMI Iowa, the statewide Iowa affiliate of NAMI, is not a party in the lawsuit, but was notified about it by the national organization, said Peggy Huppert, executive director of NAMI Iowa.
According to the complaint filed by NAMI National, NAMI applied for its first trademark registration with the U.S. Patent and Trademark Office on May 7, 2009, for the word mark “NAMI” for providing self-help information for families of the mentally ill, which has been in use since Sept. 1, 1979, and for promoting public awareness of the needs of the mentally ill, which has been in use since Sept. 1, 1989. The registration was issued on Dec. 1, 2009. The organization’s resource materials and mailing lists also are part of NAMI’s intellectual property that it provides for its authorized affiliates to use, it said.
Officials with NAMI National said the suit is “our latest effort to strongly defend our brand and our intellectual property.” The organization recently filed a similar federal lawsuit in Texas against Uncommon Bond Inc., which does business as 3dASAP Promotional Solutions. NAMI alleges that the company has been selling and marketing unauthorized NAMI-branded products through a website it operates.
The National Alliance on Mental Illness describes itself as the “nation’s largest grassroots mental health organization dedicated to building better lives for the millions of Americans affected by mental illness.” The former Greater Des Moines chapter was one of 15 local NAMI affiliates across the state, and made up about one-fifth of NAMI Iowa’s 850 members.
Mindspring officials on Sept. 30 sent a newsletter to its members in anticipation that the lawsuit would be filed.
“We are shocked and saddened that an organization that we have held in such high regard for so many years has elected to take such an extreme action against a small volunteer-led organization, with a shared mission,” Mindspring’s board wrote. “However, we don’t think that there is any community better positioned than this one to understand that sometimes we are hurt by people we love.”
In the newsletter post, Mindspring officials said that the organization has made its “best attempt” to notify the public that it is no longer affiliated with NAMI, but said that it is waiting on some third-party entities, among them the Internal Revenue Service and Facebook, to allow the name change online.
Mindspring also disputed claims by NAMI that the new organization has taken trade secrets of NAMI by using its previous member list, and that Mindspring is interfering in NAMI National’s relationships with other affiliates, an accusation that Mindspring’s leaders termed “a real head scratcher for us.”
NAMI officials said the unauthorized use of its trademarks harms the organization. In the lawsuit, the national organization is asking the court to enjoin Mindspring from using NAMI’s trademarks, to destroy all materials that use programs, materials and mailing lists owned by NAMI, and to surrender its website domain name, www.namigdm.org, to NAMI, among other relief. The organization is also asking the court to award compensatory and exemplary damages, including income and profits that NAMI says it has lost or may lose due to Mindspring’s actions.
“To preserve the goodwill associated with the services provided under NAMI’s brand, we cannot allow unauthorized vendors or former affiliates to use the same or similar trademarks that are likely to cause confusion as to source, sponsorship or affiliation,” NAMI said in its press release. “We will be vigilant in protecting our brand against anyone who engages in unlawful activity against our brand.”
Editor’s note: This story originally incorrectly stated that Mindspring Mental Health Alliance Inc. was formed earlier this year. Mindspring is the new name of the former NAMI Greater Des Moines organization, which has always been a separate, legally distinct organization, created in 2003 by a group of local volunteers. In 2015, it entered into an affiliate agreement with NAMI Inc., a contractual relationship that Mindspring ended in March. A business entity search on the Iowa secretary of state website indicates that the effective date of Mindspring as an organization is Oct. 2, 2003.