Not-for-Profit Organisation Team of the Year: Rotary International

Roxanne Elings of Davis Wright Tremaine (right) presents the award to Jomarie B Fredericks

Rotary International (RI) brings together a global network of some 1.2 million members from more than 35,000 Rotary clubs in almost every country to improve lives both locally and internationally. As such, the organisation’s trademarks “act as a true source identifier, unifying our membership and the good work they do throughout the world”, explains Jomarie B Fredericks, deputy general counsel and chief IP counsel.

Fredericks’s team closely monitors the use of RI’s marks in a bid to maintain this integrity. “Communicating brand guidelines and protecting use of the trademarks across so many countries and cultures can be challenging,” she admits. “Most Rotary clubs maintain a website and often a Facebook page, conduct fundraising activities and participate in charitable and humanitarian efforts, all showcasing RI’s trademarks. And RI’s global membership purchases and uses licensed products ranging from pins to banners to t-shirts. RI policy allows use of the marks by the membership under brand guidelines, but no ownership rights are ever extended to the members.” In addition, volunteer leadership changes annually. “New leaders bring new ideas, new understandings and different cultural expectations,” states Fredericks – “all of which can be invigorating but also challenging.”

The IP team tasked with meeting these challenges head on comprises two attorneys, one paralegal, one licensing specialist and one legal assistant (Fredericks, Angela Baluk, Beth Wollar, Chris Cardenas and Melinda Torres, respectively). “Together, we are responsible for trademarks, copyrights and domain names, licensing and other brand-related social media, software and communications projects,” Fredericks explains. “We protect and preserve the intellectual property to ensure that our global membership has a strong and enduring brand that represents who they are as professionals who volunteer their skills to improve lives and strengthen communities throughout the world.”

This is no small task – RI currently has over 900 registered trademarks in 77 countries, owns about 1,400 domain names and has registered approximately 1,500 copyrights. In addition, Fredericks notes that “there are nearly 150 Rotary licensees throughout the world who produce and market club-related merchandise and software with RI’s trademarks, and over 30 licensed magazines which bring regionally relevant news to our global membership in various languages.”

As such, the team has been busy over the past year with a lengthy list of activities. “Maintaining the trademark portfolio, implementing the enforcement strategy, conducting trademark clearance and running the licensing system are only a part of our responsibilities,” Fredericks reveals. “We are also responsible for counselling the senior leadership on policy matters and working with RI’s communications, education and member support teams for training and education on marks and brand-related issues.”

Crucially, resources have to be carefully managed. “Brand versus budget” is always front of mind, observes Fredericks. “Every company, no matter how large or small, has its budget challenges. As a non-profit, we feel this acutely. We try very hard to be proactive in determining when, where and what we register, but there is always some element of reactiveness. When possible, we do registration roll-outs over multi-year periods, so as to spread the costs.

The brand versus budget battle extends to the team’s enforcement strategies. “We need to be aggressive enough to preserve our rights, but we also need to recognise that we are a member association and our primary role is to serve our members,” states Fredericks. “We always take into consideration that ‘rotary’ is a dictionary word, so our rights over certain types of use and in different countries will be stronger than others. Our enforcement strategy needs to be realistic and is designed to achieve the most benefit where we will most likely see positive results.”

Teamwork is a recurring theme then. “Global RI staff, Rotary members and licensees are all allies in policing and enforcement,” notes Fredericks. It is this togetherness that forms the basis of the organisation’s IP-related success: “The key to our success is our team!” she declares. “We are fortunate to have a small but dedicated group of professionals with depth and diversity of experience at RI’s world headquarters, supported by a great global team of outside counsel. And we extend our network further through the efforts of RI’s communications and club and district support teams at our headquarters and eight international offices, that work to apply and enforce brand use guidelines for our global membership.”

  

Other nominees:
  • Blue Cross and Blue Shield Association

  • Scotch Whisky Association

  • The American Red Cross

  • The Federation of the Swiss Watch Industry FH

Unlock unlimited access to all WTR content