Can You Trademark Awareness Of A Disease?

from the someone's-trying dept

Fri, Jan 9th 2009 10:08am — Mike Masnick

BoingBoing has the latest story of trademark insanity, where a "charity" focused on the rare, but apparently serious disease of Congenital Diaphragmatic Hernia (CDH), is trying to trademark the phrase "Congenital Diaphragmatic Hernia Awareness" and appears to be threatening other charities for using the phrase, and (according to this petition) has filed complaints to get fundraising stores shut down for using the phrase. The whole thing is so bizarre, and so far outside the purpose of trademark law that it's really difficult to understand how this issue could have gone as far as it has. But, you have to say one thing for the charity doing this: they have "raised awareness" of CDH.

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Filed Under: awareness, congenital diaphragmatic hernia, trademark

34 Comments

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Anonymous Coward, 9 Jan 2009 @ 10:28am

For crying out loud, why are you giving people the impression that this organization is trying to co-opt others from using the term CDH? They are trying to trademark the entire phrase as used in association with their specific charity, and make no claim as to the individual elements of the mark. People will still be able to freely use "CDH" and "awareness", as well as the phrase "CDH awareness" in a manner other than a trademark sense. For example, it would be totally legal for another organization to provide material including sentences such as "The primary purpose of our organization is to enhance CDH awareness.", "We want to enhace awareness of CDH.", etc. As John Stossel says, "Give me a break!"

For example, you will quickly find about 230 different registered marks using "breast cancer" in association with other terms. Check out the USPTO trademark database if you harbor doubts. I am unaware of any crimp this has placed on others who establish organizations associated with breast cancer.
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- Anonymous Coward, 9 Jan 2009 @ 11:01am
  
  Re:
  There charity is called Breath of Hope. Why would they need to Trademark "Congenital Diaphragmatic Hernia Awareness"? Isn't the whole point of a trademark to protect your product or company name, so that there won't be other companies confusing consumers or customers. So in essence, it's NOT like the Brest Cancer Awareness Foundation, or in this case, The Congenital Diaphragmatic Hernia Awareness Foundation, no it's Breath of Hope trying to monopolize as the only charity for the the awareness of the disease.
  
  It is so very hard to have a battle of wits with the unarmed.
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- usmcdvldg, 9 Jan 2009 @ 11:10am
  
  Re:
  As u probably know, I'm usually the first to note when this site cry's wolf but....
  
  Actually, another charity organization would not be able to use the phrase, CDH awareness because this charity would own in. Just like Adidas can't use "Just do it" because its owned by Nike, any organization that performs a function simalar to that of CDH awareness,Breath of Hope, Inc would be bared from using this phrase in association with themselves. For instance, they couldn't say "we provide CDH awareness" or "we support CDH awareness" because that phrase is the legal "mark" of all trade pertaining to Breath of Hope, Inc.
  
  Know I'm not that well verse in trademark law so I can't speak to the actual legality of this, but the idea does seem distasteful at the very least!
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- hegemon13, 9 Jan 2009 @ 11:53am
  
  Re:
  First, adding "awareness" to the name of a disease should not be unique enough to qualify for a trademark. The phrase is too generic.
  
  Second, if this is really a legitimate, respectable charity trying to help this cause, why are they trying to stifle others' efforts to help the same cause? Sure, there is no law saying a charity has to be a "good" charity, but it certainly kills any sympathy I might have for them.
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- Steven Hartman, 11 Jan 2009 @ 11:40am
  
  Re: CDH Awareness
  It's not as simple as Anonymous Coward suggests. Trademark rights in "CDH Awareness" puts a cloud on competitor's rights to use that term (and such terms as "CDH Awareness Day" or "CDH Aware") as the title of an awareness campaign for a therapy to treat CDH or to raise money for a CDH-related cause. "Breast Cancer Awareness" is not registered in the USPTO.
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  - Anonymous Coward, 11 Jan 2009 @ 7:10pm
    
    Re: Re: CDH Awareness
    While there are always nuances that depend upon particular circumstances, it is that simple. In this specific situation the mark is extremely weak (and this is an understatement) at best, as a consequence of which attempts to enforce it would be very, very difficult...bordering on impossible except in the most extreme of cases.
    
    Traipse on over the the USPTO trademark database and type in the term "breast cancer". Right now there are about 154 marks that use the term and are in force.
    
    BTW, if the individual at the linked site understood what trademark law embraces and what it does not, she would almost certainly realize she is making a mountain out of something that is far, far smaller than a mole hill.
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Phillip, 9 Jan 2009 @ 10:36am

This is completely ridiculous. If they are really wanting to raise awareness for this issue, why in the world would they try to stifle other venues related to the topic?

Absolutely absurd, their true intentions are showing, and it's not pretty.
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Lonnie E. Holder, 9 Jan 2009 @ 10:46am

Cancellation
It is also worth noting that a cancellation of the trademark was initiated in early December of last year.

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77436855
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Jesse, 9 Jan 2009 @ 10:55am

Can I trademark "Trademark System Abuse Awareness"
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- :Lobo Santo, 9 Jan 2009 @ 10:57am
  
  Re:
  Yes, you can trademark "Trademark System Abuse Awareness" but my company lawyers at "Trademark System Abuse Awareness Inc." may suggest legal action...
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Jim, 9 Jan 2009 @ 10:59am

How can they raise awareness of Congenital Diaphragmatic Hernia if they are forced to call it CDH instead of the real name? Would you ask someone to say BC Awareness instead of Breast Cancer? If it smells like greed, talks like greed, looks like greed; it's greed.
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- usmcdvldg, 9 Jan 2009 @ 11:15am
  
  Re:
  No one would be force to not use Congenital Diaphragmatic Hernia there not trademarking Congenital Diaphragmatic Hernia. This would be analogous to Nike trademarking the word shoe, and im relatively certain this is illegal for one reason or another.
  
  They are trying to trademark "Congenital Diaphragmatic Hernia awareness" which noone else involved with the illness would be allowed to use
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  - hegemon13, 9 Jan 2009 @ 11:54am
    
    Re: Re:
    Which is ridiculous because that phrase is still far too generic to warrant a trademark.
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    - usmcdvldg, 9 Jan 2009 @ 12:04pm
      
      Re: Re: Re:
      I agree with you on several levels for several different reasons. You will get no argument from me on this point.
      
      I am simply trying to help others frame the topic correctly.
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Analyst (profile), 9 Jan 2009 @ 10:59am

Trademark update
Looking at the prosecution history, the last (top) entry reads:

2008-12-04 - Cancellation Instituted No. 999999

Unless I am interpretting this wrong, the trademark has been cancelled by the USPTO, making any continued action to enforce the trademark blatently illegal.
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- DanC, 9 Jan 2009 @ 12:18pm
  
  Re: Trademark update
  Unless I am interpretting this wrong, the trademark has been cancelled by the USPTO, making any continued action to enforce the trademark blatently illegal.
  
  The cancellation has not been issued as of yet. 12-04 is only date the Petition for Cancellation was filed.
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mike b, 9 Jan 2009 @ 11:05am

re jim
the petition says that organization is attacking people. it does smell like shit, uh i mean greed.
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Twinrova, 9 Jan 2009 @ 11:18am

I'm going to go trademark...
"Diseased User Mental Blockage And Short Sightedness Syndrome" and start (freely) applying it to idiots like the charity claiming to "own" it.
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Jim, 9 Jan 2009 @ 11:30am

It looks like Breath of Hope, Inc. is who filed it.
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Jim, 9 Jan 2009 @ 12:29pm

hegemon13
I'm with you man. I just read all the links and the things going on behind this trademark. It looks to me like a very sick woman is playing god with charities.
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NullOp, 9 Jan 2009 @ 1:45pm

Branding
What a hoot. I sincerely hope that if this reaches the courts it is thrown out as being ridiculous. This falls into the "You can't fleece the masses with that phrase! Only I can fleece the masses with that phrase!" And, as always, greed is involved as its easier to pay big-bucks to the CEO/Chief Fundraiser if you're building a monopoly based on a phrase.
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brown65, 9 Jan 2009 @ 11:13pm

Details - Details...
The mark is in the Supplemental Registry. There is a generic term of the phrase then there is the organization's term of the phrase with their goods and services. It would only infringe if the the mark was used and the goods and services were replicated by another.

Petitions to cancel are the start of the suit - there must be proof which if you read the Petition, there is no legal reason listed to cancel said mark. Fraud is a basis which must be proven and first in use has been an argument long lost on Petitions. The othr organization appears not to have a conflicting mark - this also lessesn their argument. The only other legal reason listed is generic? The word Awareness itself is trademarked.

There are also countless other phrases - and this is one that are trademarked of other diseases and conditions.

By the way - this is a birth defect - not a disease. Details people...Interesting that the charity that has the mark is listed in the IRS and they come up in the database. The one that is making all the stink and filed the petition - go to the IRS under charities, why can't you pull CHERUBS up in the IRS search?
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- Anonymous Coward, 10 Jan 2009 @ 9:38am
  
  Re: Details - Details...
  Be careful lest you incur the wrath of those who have strong contrary positions based upon the total absence of any relevant facts and knowledge of the concepts that underlie trademark law. They are only too quick to decry a system about which the possess no substantive knowledge.
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  - Mike (profile), 10 Jan 2009 @ 11:29am
    
    Re: Re: Details - Details...
    Ah, my favorite response of all. All you non-lawyers with your common sense: how dare you criticize a result that goes against common sense. You should shut up and accept what the law tells you.
    
    Reasoning only a lawyer could love.
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    - Anonymous Coward, 10 Jan 2009 @ 12:54pm
      
      Re: Re: Re: Details - Details...
      Perhaps you should try reading comments 2, 4, 5, 6, 8, 9, 12, 14, 15, 18 and 19 to this article before posting a comment such as this. Each of these comments are being made by persons who demonstrably have not the slightest understanding of trademark law comprises and how it works.
      
      For one who constantly criticizes persons who express opinions on this site that you feel reflect ingonorance of basic economic principles, it seems a bit hypocritical to criticize persons who express opinions on this site that do reflect substantive knowledge of applicable law.
      
      Quick now...and without searching the internet or some other reference...can you identify the constitutional provision from which federal trademark law is derived? Likewise, what is the TMEP (again, no peeking)? If one understands even a modicum of substantive trademark law, they should be able to answer these questions in mere nanoseconds.
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      - Mike (profile), 12 Jan 2009 @ 12:44am
        
        Re: Re: Re: Re: Details - Details...
        Heh. You must have been one of those kids in high school who picked on others who didn't know all the right rules of grammar.
        
        Do you really feel so superior because you're a lawyer? You come here pretty much every day with some similar comment every day, and it doesn't make you look smart. It just makes you look like a condescending brat.
        
        Yes, I'm quite aware of the constitutional backing of trademark law. It stems from the commerce clause because trademark law is about commerce. This is, of course, different from where copyright and patent law come from. Yay. So brilliant.
        
        If I didn't know that, though, it wouldn't have made any freaking difference in understanding whether or not this bit of trademark law made sense. Bringing it up is meaningless to this discussion, and the only purpose of doing so is to give you another chance to appear smug and superior. I have no problem admitting that I'm unfamiliar with TMEP, so after doing so I've looked it up, and I see, again, that it's rather meaningless to the discussion, but I'm glad it makes you feel superior. That must be enjoyable.
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reg4c, 10 Jan 2009 @ 4:40am

I wander who will patent the process of breathing?
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Anonymous Coward, 12 Jan 2009 @ 6:31am

TMEP is an acronym for the "Trademark Manual of Examining Prodedure", the internal guidance used by trademark examiners to process trademark applications. I asked about it for a specific reason not particularly related to techdirt.

Back in the early 80s IP law underwent a cardinal change when it was "discovered" by non-IP lawyers as a potential cash cow. Suddenly all of them were holding themselves out as experts, and from that point forward I began noticing many of the abuses that regularly appear in news reports.

As in-house counsel for a Fortune 50 company I was constantly bombarded by attorneys trying to wine and dine me to get the company as a client. One of my small tests for trying to figure out who knew what they were talking about and who did not was to casually ask if they had a copy of the TMEP for me to take a quick look at to answer a question I had. Much more often than not I received a quizical (sp?) look, it being clear the person did not have a clue what I was talking about. That look sealed the deal...no deal if he/she did not know about one of the most basic resources needed to practice trademark law. This exemplifies in large measure part of the problem that underlies many of the problems you and others write about.

By the was, I happen to be a person who happens to practice law. My purpose in posting comments about the law that some seem to interpret as being argumentative is merely for the sake of accuracy. It is impossible to gauge what is and what is not a real issue without an accurate understanding of what the law entails. In this specific instance the linked site was started by an individual who is not familiar with the ins and outs of trademark law, and in situations such as this passion tends to overcome reason. People begin to say the law is an a**, which in this case is incorrect.

By the way, I am heartened you know about the commerce clause, not because it is the genesis for trademark law, but because it demonstrates your sensitivity to one of the most important powers of Congress that is regularly abused under pressure from special interest groups.
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Jim, 12 Jan 2009 @ 6:55am

Re: Re: CDH Awareness
By the very long and interesting list of "attacks" on the other organizations it seems as though the offending charity is threatening the others by claiming ownership of this flimsy trademark. You cannot help but sympathize with the organizations who have filed the Petition to Cancel clearly in an effort to stop the attacks.

I looked up CHERUBS on the IRS site and several charity sites and their state site and it looks to me that they are in good standing and have been in existence for a long time. It took some searching but I found their IRS paperwork on their extensive site also. I could not find the word Awareness itself trademarked.

In doing this search which only goes to show that I have entirely too much time on my hands I found several interesting documents on the history of this Elizabeth person.

I am not a man easily swayed by female drama but I found myself popping popcorn and reading these documents until 3am. I would recommend that CHERUBS file charges against her and Breath of Hope on several grounds. At the very least someone needs to sue this woman in hopes that a judge will order psychiatric care or counseling and a proverbial time out since it seems that she cannot play well with others.
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- Joann, 16 Jan 2009 @ 1:35pm
  
  Re: Re: Re: CDH Awareness
  Jim - do you believe everything you read on the internet? I hope not because apparently if you read this on-line Petition and sign it - which will do nothing but give you a inbox of spam - you can see that this woman who is now pleading for a pro bono attorney has made a mountain out of a molehill.
  
  The organizations that don't say anything and don't air the dirt - or galf it off and just continue to do their work - ahum - Obama Campaign vs. McCain - for example. Usually have the winning ace up their sleave.
  
  The answer was filed and the CEO may be an attorney or in law by the way it is written - if not - she's brighter than this one begging for an attorney who wrote a piss poor Petition.
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CHERUBS, 12 Jan 2009 @ 8:30am

Re: brown65
To clarify for brown65:

CHERUBS can be found on Guidestar - http://rds.yahoo.com/_ylt=A0geu6cAb2tJ01kBfHhXNyoA;_ylu=X3oDMTBybnZlZnRlBHNlYwNzcgRwb3MDMQRjb2xvA2Fj MgR2dGlkAw--/SIG=130c8mt5c/EXP=1231863936/**http%3a//www.guidestar.org/pqShowGsReport.do%3fpartner=j ustgive%26npoId=191819

Our financial documents and IRS letters are available for download on our site -
http://www.cdhsupport.org/members/dload.php

Jim, if you are offering your services pro bono to help us stop this behavior, please feel free to contact me. This is extended to all lawyers here. A good pro bono NC or VA lawyer to help end this once and for all would be a great help to our charity.

Thank you all for your support, analysis, signatures on our petition, and for raising CDH awareness. On behalf of over 2600 CDH families and medical professionals, our sincerest appreciation goes to you all.

Dawn Williamson
President & Founder
CHERUBS - The Association of Congenital Diaphragmatic Hernia Research, Awareness and Support
dawn.williamson@cherubs-cdh.org
http://www.cdhsupport.org
http://www.cdhresearch.org
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Dawn Williamson, 24 Jan 2009 @ 7:11am

Re: Jonann (aka Elizabeth Doyle-Propst)
We are quite covered in our trademark fight.

The comment I made about a pro bono attorney was for a slander and corporate tort suit to finally gain some peace for CDH families from this woman.
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Anonymous Coward, 2 Feb 2012 @ 7:05am

Trademarking a horrible disease (which took my son at 14 days old) is ridiculous. This charity should be banned from everything. They have divided the CDH world and instead of giving awareness to CDH they have tainted it. New families whose baby's are diagnosed with CDH have to read petty fights over a trademark name rather than focusing on finding out information about the scariest thing they will ever have to deal with. Breath of Hope is horrible for doing this. They should remember their dead babies and stop this nonsense!
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Mary Jane Chapman, 10 Jun 2016 @ 5:36am

CDH Awareness
What a ridiculous post. This is not the only charity who have registered such a mark. There are loads of similar marks for everything from feeding tube awareness week to Stomach Cancer Awareness Month.
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