Trademarks and service marks are valuable in all areas of commerce, and health care is not an exception. Providers of health care-related goods and services rely upon trademarks and service marks to identify the sources of their goods and services and to enhance brand loyalty. And, like those in other industries, these providers protect their valuable marks by registration in the U.S. Patent and Trademark Office under the Lanham Act.
Trademarks containing variations of “cross” designs are popular with many companies which market products or services related to health care. But companies in this industry area, as well as their advertising and marketing experts and trademark practitioners, should take heed of several barriers regarding the use of cross designs in connection with health care products and services.
Red Cross Blue Cross, What a Cross to Bear!
Historically, many health care providers have been affiliated with Christian religious organizations. Thus, marks which include crosses have been popular with hospitals and others in the health care industry for decades. There are barriers, however, to the use of crosses, and these barriers restrict the styles and colors of cross designs which are available as trademarks and service marks. Additionally, at least one of these barriers (the Red Cross statute discussed below) is not readily apparent in a typical trademark search.
Red Crosses – Click here to view image. Under the Charter Act adopted by Congress in 1900 in connection with the Geneva Convention (and later amended in 1905 and 1910), the American Red Cross has the exclusive right to use a red, Greek cross on a white field. (A “Greek cross” is a cross of which the four arms are all equal in size and do not extend to the edges of the field.) The only exception to this right to exclusive use is that any user of such an emblem (that is, of a red, Greek cross) prior to 1905 continued to have the right to use that emblem.
Johnson & Johnson (J&J) had used red cross marks since at least as early as 1898; thus, its use of those marks was specifically permitted under the Charter Act. As early as 1906, J&J filed applications to register its use of those marks with the U.S. Patent and Trademark Office, claiming first-use dates of 1898.
J&J continues using similar trademarks today, such as:
Click here to view images.
Some might see the J&J trademark registrations and assume that other red cross marks could be registered, so long as they were not confusingly similar, under general principles of trademark law, to the J&J marks. Nothing in the trademark search record will reference the Charter Act and the special rights of the American Red Cross. Consequently, parties may be tempted to use a red Greek cross for their own goods or services. However, such parties and their trademark counsel should recall that J&J’s rights to its red, Greek cross marks are the result of common law trademark rights that preceded both the American Red Cross Charter Act and the adoption of the Lanham Act and are recognized under the Charter Act. This arena is truly a trap for the unwary.
Moreover, the relationship between J&J and the American Red Cross continues to evolve. In 2007, J&J sued the American Red Cross claiming that the American Red Cross infringed J&J’s trademark by including a red Greek cross on first aid and disaster preparedness products which licensees of the American Red Cross were distributing and selling commercially. In this litigation, one issue was whether the American Red Cross’s rights under the Charter Act included the right to license its mark for commercial use. The suit was settled in 2008 by the parties, after the initial court decision upheld American Red Cross’s right to use the mark even for commercial purposes.
Special notice also should be given to the American Red Cross's diligence in reviewing Trademark Office filings and its consistent and vigorous defense of its rights in its red, Greek cross design. In addition, the American Red Cross is persistent in identifying and objecting to uses of the red, Greek cross that constitute common law trademark use, particularly where the mark has been adopted by a third party as its brand or logo for goods or services related in some manner to health care.
For these reasons, the best course is to avoid using a red, Greek cross as part of a mark that will be used for any type of goods or services that are remotely related to health care. In contrast, a white Greek cross against a red background will not violate the Charter Act and should be permissible (absent conflict with other trademark owners).
Blue Crosses – Click here to view image. Blue crosses also should be avoided, since there also is another large barrier in this arena: the famous marks owned and registered by Blue Cross Blue Shield Association (BCBSA), including the number of its registered service marks for blue, Greek cross designs for various health care and insurance services. (For example, U.S. registrations 554,817; 1,699,627; 1,632,320; 1,639,079; and 1,826,582 are active registrations of a Greek cross with the color blue and no other distinguishing features, and all claim a first-use date of 1934.) Other BCBSA registrations include the superimposed human figure and the shield designs. Thus, the BCBSA family of marks includes any blue, Greek cross used in connection with various health care-related services.
It is possible that BCBSA would not object to a mark that contained a different type of cross (such as one with arms of unequal length) or a shade of blue that is dramatically different from its own. Unlike the American Red Cross, BCBSA does not have the benefit of any specific legislation and so its rights are based on the general principles of trademark law and an evaluation of the likelihood that other marks will be confused with its blue, Greek cross marks. However, members of the health care industry that use a shade of blue which is the same as or substantially similar to that used by BCBSA should not be surprised by the delays and costs this course engenders. They should anticipate a BCBSA objection and the costs of changing the conflicting mark which may soon follow.
A more efficient and less expensive route would be to select another color for the cross (assuming there are no conflicts with other marks). In the alternative, the health care provider could select a white cross against a blue background; this approach should avoid conflict with the BSBSA trademarks.
Trademarks and Service Marks in the Health Care Arena – Avoid the Traps
The use of cross shapes in trademarks and service marks for hospitals and other members of the health care industry is only one of the issues that can arise when the trademark world collides with the health care world. However, it is one that can result in an unhappy, and potentially costly, surprise if it is unexpected.
A simple solution: Health care providers (including biotech and other companies and institutions whose products or services are marketed or sold in the healthcare arena) can work with marketing and advertising experts, as well as experienced trademark lawyers, to develop new marks and brand identities that are uniquely their own and that avoid red Greek crosses and blue Greek crosses.