It was a busy night.
As a former journalist, I appreciated how undeniably juicy the story would be: Johnson & Johnson sues the American Red Cross and other parties over…. What?! … the use of the RED CROSS?!
It was almost too easy.
I also know that companies, like Johnson & Johnson, built on innovation and long-lived brands must resolutely defend their rights in these innovations, and in these brands.
One of Johnson & Johnson’s oldest trademarks is the Red Cross design. We began using the Red Cross design and "Red Cross" word trademarks in the United States in 1887, predating the chartering of the American Red Cross. The company has had exclusive rights to use the Red Cross trademark on products in certain categories for over 100 years. Since its creation, the American Red Cross has had the rights to use the Red Cross trademark in connection with its non-profit relief services.
If you’re interested in the history of Johnson & Johnson’s use of the Red Cross symbol, our history blog, kilmerhouse.com, will have some additional background and photos available later today. Interestingly, Clara Barton herself acknowledged and affirmed our rights to this exclusive use of the mark back in 1895.
It was disappointing to discover in recent months that the American Red Cross had started a campaign to license the trademark to several businesses for commercial purposes on all types of products being sold in many different retail and other commercial outlets. These products include baby mitts, nail clippers, combs, toothbrushes and humidifiers, as well as products that fall within Johnson & Johnson's longstanding product categories. This action is in direct violation of a Federal statute protecting the mark as well as in violation of our longstanding trademark rights. Here’s a photo of some of these products (these particular ones are sold by Learning Curve International, Inc., under license from the American Red Cross, and manufactured by RC2. Click to enlarge):
From my perspective, with responsibility for Public Affairs at Johnson & Johnson, I was delighted that we were attempting to resolve this issue through cooperation and discussion with the American Red Cross, an organization for which we have much respect (and to which, by the way, we contributed over $5 million cash and additional product and volunteer time over the past three years).
I was saddened, of course, to learn that, unlike in decades past, the American Red Cross was not working through this issue with us. In fact, they had rejected our offer to turn to third-party mediators to find an agreeable resolution, even after we had indicated our willingness to use a mediator recommended by the American Red Cross itself.
Johnson & Johnson was left with no choice but to seek protection of our trademark rights through the courts. A suit was filed yesterday morning in the United States District Court of the Southern District of New York.
As mentioned in an earlier post , Johnson & Johnson seldom comments on lawsuits in progress, preferring to leave to the courts the difficult job of assessing fact and interpreting law. Nonetheless, the American Red Cross issued a strongly worded press release Wednesday evening objecting to our action. We worked energetically Wednesday night to provide the media with fair balance on this story, including public issuance of our own statement concerning the suit and providing some night-time telephone interviews to better inform reporters.
Our small media relations group was reduced even further by summer vacations (including Marc Monseau, who does double duty as our chief resident blogger – that’s why I’m pinch-hitting this posting). Nonetheless, we felt most every journalist we engaged with (including bloggers) gave fair hearing to both sides of this matter.
So, I’ve now lived a classic corporate public affairs nightmare: announcing a lawsuit against the American Red Cross. Would I have chosen this exercise as a reputation-building opportunity for Johnson & Johnson? No, of course not.
But keep in mind that the law requires organizations and individuals to act against infringers of trademarks or they lose their rights. In other words, as much as we might respect the American Red Cross, if we didn't act we could open the floodgates to all infringers of our trademark and could do nothing about it. So even though we remain committed to supporting the primary mission of the American Red Cross through our philanthropic efforts, we simply can’t give them a pass on violating our trademark rights.
The goal of our complaint is to restore the long-standing legal boundaries that have surrounded the use of the Red Cross trademark. We certainly regret that we had to take this step, but we are confident that the courts will protect our legitimate rights to this venerated trademark.