by Andrea C. Barach 1
Trademarks and Service Marks—a Quick Overview
Trademarks or service marks identify the sources of particular goods or services in the marketplace. (If they are used for tangible items, they are trademarks; if they are used in connection with the sale of services, they are service marks.) Consumers use trademarks and service marks as quick and easy identifiers for their most trusted sellers of goods and services.
A trademark is a word, group of words, logo or graphic, or combination of logo or graphic material with words. The words may be normal English words, such as “Pizza Hut”; or they may be English words with novel spellings, such as “Kwic Sak”; or English words that are used for goods not associated with the common meanings of those words, such as “Pledge” for furniture polish or “Subway” for sandwich restaurants; or they may be invented words, such as “Xerox” for copiers or “Verizon” for telecommunication services. What all these trademarks and service marks share is that they are the symbols by which customers select goods or services from a particular vendor. The customer remembers “Verizon” because he wants to purchase telecommunication services from that particular source and believes that the services will be of better quality or better meet his needs than telecommunication services offered by others.
In the U.S., trademarks and service marks that are used in interstate commerce may be registered at the U.S. Patent and Trademark Office and will enjoy protection under the Lanham Act.2 Once registered, the mark should be identified with the symbol ® to put the public on notice that it is a registered trademark. Federal registration can help a trademark owner protect itself from competitors using the same or similar marks to “steal” customers. In addition, the registration (on the Principal Register) is prima facie evidence of the owner’s exclusive right to use the mark and serves as constructive notice of a claim of ownership so as to eliminate a defense of good faith. A federal registration becomes incontestable after five years of registration. Trademark owners in all industries expend substantial resources developing marks that will create memorable identity and image for their customers. Once selected and adopted, a mark becomes the external face of the company. Thus, it is very important to select a strong mark that communicates the desired image of the brand. Furthermore, it will be very difficult to change a mark after registration due to a conflict with another registered trademark. This is true for health care companies as well, but there are some particular issues that arise in the health care area.
Red Cross Blue Cross, What A Cross to Bear!
Historically, many health care providers have been affiliated with Christian religious organizations, and thus, marks including crosses have been very popular for hospitals and health care providers. In modern times, the cross design has generally become associated with health care, making it even more desirable. However, there are some pitfalls to the use of crosses that result in limiting the styles and colors of cross designs that are available as trademarks and service marks.
Red Cross – Under the Charter Act that was adopted in 1900 under the Geneva Convention (and later amended in 1905 and again in 1910)3, the American Red Cross has the exclusive right to use a red Greek cross4 on a white field, with the only exception being that any user of such an emblem prior to 1905 would continue to have the right to use the emblem. Registrations owned by Johnson & Johnson for red Greek crosses date from 1906 and claim first use dates of 1898, and thus its right to use those marks were grandfathered based on the American Red Cross Charter Act. J&J continues using similar trademarks today, such as
5 and 6, respectively.
It is important to understand that J&J has a unique ability to use red crosses in its marks because it had begun using those red crosses years before the American Red Cross Charter was passed, and rights to trademarks continue so long as those marks continue to be used in commerce. In 2007, J&J sued the American Red Cross claiming trademark infringement of its mark on first aid and disaster preparedness products distributed and sold commercially by licensees of the American Red Cross. The suit was settled in 2008 by the parties,7 after the initial court decision upheld American Red Cross’ right to use the mark even for commercial purposes.8
The American Red Cross is diligent in its review of the Trademark Office filings and vigorously defends its right to use and block other users of the red cross design. It may also discover, and bring objections to uses of the red Greek cross which constitute common law trademark use, such as adopting a mark containing a red Greek cross as a brand or logo in the health care field. Thus, we routinely advise clients to avoid using a red Greek cross as part of their marks. A white Greek cross against a red background, by contrast, will not violate the statute and should be permissible (absent conflict with other trademark owners).
Blue crosses should also be avoided, due to the famous marks owned and registered by the Blue Cross and Blue Shield Association. BCBSA owns a large number of registered service marks for blue Greek cross designs for a number of health care and insurance services.9 Based on correspondence received by this author, BCBSA claims the exclusive rights to any cross design used in the color blue, or used in proximity to a shield design. It is possible that BCBSA would not pursue objections to a mark that contained a different type of cross (such as one with arms of unequal length) or a dramatically different shade of blue from the shade used by BCBSA, but in light of the possible cost and delay that adoption of a blue cross logo would engender, it is best not to adopt such a mark if at all possible. A white cross against a blue background, for example, should avoid conflict with the BSBSA trademarks.
Trademarks and Service Marks for Health Care
When purchasing potentially life-sustaining or lifesaving services from health care providers, customers have a particularly high desire to ensure that the services are being provided from trusted sources. Thus, protecting the names and logos used by health care providers is very important. The issues surrounding the common use of cross shapes in trademarks and service marks for companies in the health care industry is only one of the issues that can arise when the trademark world collides with the health care world, but one which can result in an unhappy surprise. Health care companies should be sure to work with experienced trademark attorneys when they select new marks and brand identities in order to minimize the chance of having to change trademarks or brands unexpectedly. Once the mark is selected and cleared as being available, the mark should be registered on the Principal Register in order to maximize its protection in the future.
1 The author acknowledges the valuable contributions of Mark D. Swanson, Esq. to the text of this article.
2 15 U.S.C. 1051 et seq.
3 18 U.S.C.§706
4 A “Greek cross” is a cross for which the arms are all equal in size and do not extend to the edges of the field
5 R.N. 3,178,913
6 S.N. 85,072,572
7 “Claim Over Red Cross Symbol is Settled”, New York Times, June 18, 2008
8 Johnson & Johnson v. The American Red Cross, 552 F. Supp. 2d 434 (S.D.N.Y. 2008)
9 For example, registrations 554,817, 1,699,627, 1,632,320, 1,639,079, and 1,826,582 all are active registrations of a Greek cross with the color blue and no other distinguishing features, all of which claim a first use date of 1934. Other registrations include the superimposed human figure and the shield designs, but clearly BCBSA’s trademark rights include any blue Greek cross used in connection with health care related services.