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August 9, 2007

Red Cross

Johnson & Johnson (J&J) is suing the American Red Cross (ARC) for trademark infringement, contending that the Red Cross has broken the law by licensing the emblem to other businesses, which are using the symbol on their products. [Yes, this is a patent weblog, but this story is too interesting to be left untold to Patent Prospector readers.]

Johnson & Johnson filed a complaint yesterday in the Southern District of New York, seeking a stop to use of the Red Cross symbol by other companies which ARC had illicitly licensed the emblem to, as well as the proceeds, damages, and attorneys fees.

Johnson & Johnson, having used the famous Red Cross symbol in products since 1887, and secured the trademark in 1906 (Reg. No. 54,308), has used it on a variety of its first aid products, including "gauze pads, adhesive tape, first aid cream, and first aid kits."

The American Red Cross organization congressional charter begun in 1900, gave the charity the right to use the design in "carrying out its purposes," from medical aid in wartime to relief efforts anytime.

In 1905, Congress passed 18 U.S.C. §706, which prohibited use of the "the emblem of the Greek red cross on a white ground, or any sign or insignia made or colored in imitation thereof " other than "the American National Red Cross and its duly authorized employees and agents and the sanitary and hospital authorities of the armed forces of the United States." Johnson & Johnson was exempted by a grandfather clause: "This section shall not make unlawful the use of any such emblem, sign, insignia or words which was lawful on the date of enactment of this title."

From the filing -

For over one hundred years, Johnson & Johnson has owned exclusive trademark rights in the Red Cross Design for first aid and wound care products sold to the consuming public, including first aid kits, while the ARC has at all times since its organization possessed only the right to use the Red Cross Design for charitable purposes.

In January 1895, Johnson & Johnson and the ARC entered into an agreement that acknowledges Johnson & Johnson's "exclusive use of a red cross as a trademark and otherwise for chemical, surgical, pharmaceutical goods of every description." Clara Barton executed that agreement on behalf of the ARC.

[I]n 1942, Francis Biddle, then Attorney General of the United States, issued an opinion letter stating that the ARC "is not empowered to engage in business of commercial or manufacturing character in competition with private business."

Over the years, the ARC and Johnson & Johnson have cooperated by sending "cease and desist" letters to third parties who have used the red Greek cross on commercial products, with Johnson & Johnson asserting its trademark rights in the Red Cross Design, and the ARC relying on 18 U.S.C. § 706.

The defendant companies licensed by ARC include: Learning Curve, Target, and FAO, who market and sell first aid kits; Magla, a medical exam glove maker; and Water-Jel, for a hand sanitizer product, sold at Wal-Mart.

American Red Cross Chief Executive Mark Everson rattled his pocket change and decried: "For a multi-billion dollar drug company to claim that the Red Cross violated a criminal statute that was created to protect the humanitarian mission of the Red Cross - simply so that J&J can make more money - is obscene."

Tough talk from a guy who's only a few chats with lawyers away from tucking the obscenities in and settling.

Posted by Patent Hawk at August 9, 2007 2:44 PM |

Comments

There's one big hole in J&J's argument. Look in any history book and you will see that Clara Barton founded the American Red Cross in 1881, before J&J even existed.

Posted by: Sam Johnson at August 9, 2007 5:41 PM

Thank you for your post on the Red Cross/Johnson&Johnson laswuit. From an outsider's point-of-view, it would appear that indeed the ARC is crossing the boundaries of its charter to use the Red Cross symbol. I wonder how this will all play out. Even altruistic and philanthropic enterprises like the ARC have to be aware of intellectual property laws and abide by them. I cross-posted to your piece, along with some comments at http://www.innovators-network.org which is a non-profit dedicated to bringing entrepreneurs, small businesses, venture capitalists, and intellectual property experts together for mutual benefit with a special focus on technology. Come visit us and help build the community of innovators. Best wishes for future success!

Regards,

Anthony Kuhn

Posted by: Anthony Kuhn at August 10, 2007 1:24 PM

The National American Red Cross was founded through the efforts of Clara Barton. 1881, established and registered use of the NATIONAL AMERICAN RED CROSS emblem. Barton naturally became President of the American branch of the society, which was founded on May 21, 1881, at the age of 60.

In 1895, when Congress was first considering legislation to charter the Red Cross, J&J went to Clara Barton and negotiated an agreement (the "Barton Agreement") that would have permitted J&J to continue to use the red cross emblem if Congress gave the use of the emblem to the Red Cross in a charter.

The Barton Agreement was effective only if Congress passed a specific law that would have prohibited J&J from continuing to use a red cross symbol. Congress did not pass the law, so the agreement never took effect.

To date, the Red Cross has generated about $2 million in funds for the organization from the sale of products in retail stores. In contrast, J&J recently made $11 billion in profits in one year. This lawsuit is not about any threat to J&J's retail business.

We have no intention of allowing any more J&J product in this home...they got greedy.

FACTS ARE IMPORTANT, ANYONE CAN DO A LITTLE RESEARCH FOR THE TRUTH.

Posted by: phh at October 29, 2007 11:59 AM