Friday, February 6, 2009

Adventist Church Wants U.S. Government Agencies to “Quit Now!”


On February 3, 2009, The General Conference of Seventh-day Adventists (“GCSA”), the governing organization of the Seventh-day Adventist Church, filed a trademark infringement lawsuit against the U.S. Department of Health and Human Services (“HHS”) and the National Institutes of Health (“NIH”) in the U.S. District Court for the District of Columbia. A copy of the complaint can be downloaded here.

At issue is the phone number 1-800-QUIT-NOW established by HHS/NIH in connection with services to help people stop smoking. In addition to setting up the number, HHS/NIH began using the number as a service mark in connection with such smoking cessation services sometime around January 2007 (currently promoted on the website http://1800quitnow.cancer.gov/).


HHS also filed a trademark registration application for the above design mark, but was ultimately refused registration by the UPSTO as likely to cause confusion with two federal trademark registrations owned by GCSA for the mark QUIT NOW! (for both the word mark and design mark) for two classes of services (“conducting smoking cessation seminars and distributing educational brochures and materials dealing with smoking cessation in connection with the seminars” and “health care services, namely counseling to assist individuals to stop smoking”). HHS failed to file a response to the PTO’s second office action, which was due December 8, 2008, and a Notice of Abandonment was issue on February 2, 2009.

According to the complaint, in early 2008 (after the PTO’s initial office action, but before the PTO's second office action), NIH contacted GCSA about acquiring its QUIT NOW! marks. While GCSA was not interested in selling, it did express an interest in licensing the marks. A draft agreement was forwarded to NIH in March 2008, but NIH (like most government agencies) was not very quick to respond. There were several attempts by GCSA to follow-up on NIH’s interest in licensing the marks, but NIH never responded. Instead, in December 2008, HHS/NIH apparently began a larger marketing campaign for its 1-800-QUIT-NOW number and website.

GCSA’s causes of action are federal trademark infringement under 15 U.S.C. §1114; federal unfair competition under 15 U.S.C. §1125(a); and federal trademark dilution under 15 U.S.C. §1125(c).

[Comment: Am I the only one out there who finds it annoying when trademark litigants throw in a trademark dilution claim for a mark with very questionable “fame.” Either some parties are delusional about their “fame” or they don’t appreciate the fact that fame requires a mark to be recognized by the general consuming public of the United States. Do these people really believe that their mark is “famous”? GCSA filed for the QUIT NOW! marks in late 2001/early 2002. Both were allowed in November 2002. GCSA filed five extensions of time to file a Statement of Use. Finally, just shy of the three year deadline, GCSA filed Statements of Use in November 2005 – claiming first use in July 2005. The marks were registered February 2006. GCSA may have a decent case against the government for trademark infringement, but dilution after a little over 3 years of use? -- I have two words for that cause of action: quit now!]

2 comments:

Kyle said...

Ryan--
Yes, dilution is supposed to be a limited remedy for truly famous trademarks, well-known in the general consuming public. Why attorneys want to continue to push dilution claims (ESPECIALLY when the goods and services are closely similar such that infringement will do) is beyond me.
Now, the same may not be true for some state law dilution claims (as some states recognize niche fame, or at least a lower threshold within the geographic borders of the state), but this is federal law through and through. Nearly frivolous.

Kyle Kaiser

Anonymous said...

Dilution as a theory can happen to any mark, it's just that Congress made the legal claim that entitles you to relief narrower than dilution per se. If my mark is being diluted (i.e., a whittling away of the distinctiveness, or tarnishment) and I have nationwide use, then I'll allege it and worry about the strength of my evidence on consumer recognition as I develop it. It's easier to include dilution as a count in the initial complaint rather than amend to add it later, and just because it's in the complaint doesn't mean I have to pursue it.