November 15, 2007 | Read Time: 3 minutes
A federal judge has dismissed one of the eight legal charges that the pharmaceutical company Johnson & Johnson filed against the American Red Cross in a trademark dispute, but agreed to allow the others to go forward.
The Red Cross said the judge, who issued an order last week, had dismissed an “important part” of the case and urged the corporation to withdraw its lawsuit over use of the red cross emblem.
“I appreciate the court’s decision and hope that Johnson & Johnson will reassess their actions and drop the case altogether,” Mark W. Everson, president of the Red Cross, said in a statement.
However, Johnson & Johnson indicated it had no plans to do that, saying it was pleased that the judge denied most of the Red Cross’s motion. “The decision clears the way for J&J to proceed with seven of the eight claims that were originally alleged, allowing the case to move forward as planned,” said Marc Monseau, a company spokesperson.
U.S. District Judge Jed S. Rakoff, of the Southern District of New York, dismissed Johnson & Johnson’s claim that the Red Cross “has clearly and unambiguously promised never to engage in commercial activity, including promises not to license the Red Cross emblem to others.”
Johnson & Johnson and its consumer division, Johnson & Johnson Consumer Companies, both in New Jersey, sued the Red Cross in August.
The company charged that the Red Cross violated long-held trademark arrangements by licensing third parties to sell products under its own brand, such as first-aid kits, hand sanitizers, latex gloves, and humidifiers. Johnson & Johnson says it has had the exclusive right to use the red cross on commercial products since it won its first trademark for the symbol in 1906.
The company also sued four other companies that it says use the Red Cross emblem on products that compete directly with its own products — First Aid Only, Learning Curve International, Magla Products, and Water-Jel Technologies.
The Red Cross filed a motion to dismiss five of the company’s eight specific claims in September, saying it has a right through its Congressional charter to sell products to support its charitable mission. It also argued it had been using the red cross emblem since 1881 — six years before Johnson & Johnson started using it on retail products — and that it was helping Americans be more prepared for disasters by making items like first-aid kits available at the retail level.
The charity also pursued legal charges against Johnson & Johnson, saying the company had been marketing products with the red cross emblem that go beyond those allowed by a law that restricts use of the symbol.
The remaining charges in Johnson & Johnson’s lawsuit allege that the defendants have interfered with the company’s business relationships and contractual relations, engaged in unfair competition, and diluted its trademark for the red cross emblem. The company has asked to be awarded damages, which it said it would contribute to charity.
The court will hear the case in January, a Red Cross spokeswoman said.
