An Early Retirement
blog.watsi.org
blog.watsi.org
The only question is whether Watsi and BCBS operate within similar enough markets for their use to be considered infringement - I'm less sure of that.
On a related note, this is why early-stage startups shouldn't get too attached to their branding, product name, and/or company name. You're better off focusing your efforts on your product itself.
And don't waste money (as an early startup) on filing for trademark protection - because US trademark law respects common law use (ie, if you used it first, you are protected, even if you didn't file for protection)[1]. Registering your trademark does nothing if someone else (with more expensive lawyers) was using it first and can demonstrate that use.
And even if they accept your registration, that doesn't mean that it will hold up. Just like patents, the USPTO leaves this up to courts to decide. You could easily register something like the Coca-Cola[2] logo and they could accept it, but that doesn't prevent Coca-Cola from litigating against you and winning. They have no great way to check for conflicts, and they err on the side of issuing the trademark (and collecting your fee) so that the courts can be the final arbiters[3].
(Obligatory disclaimer: I am not a lawyer, and this is not legal advice).
[0] https://encrypted.google.com/search?tbm=isch&q=blue%20cross%...
[1] This is the opposite of the way that patent law works.
[2] In reality, probably not Coca-Cola per se, because it's popular enough that anybody reading your application would notice it, but a trademark that's very similar to an existing logo.
[3] If you're wondering, no, they won't refund your fee if your trademark is deemed invalid.
I am sure Watsi being who they are made an informed decision and with the advice of counsel. The sad thing is the advice was probably to the effect that while Watsi has a reasonable likelihood of prevailing on their use of the mark, BCBS has enough money to try to enforce the mark without putting a dent in their litigation budget, and Watsi's money would be better spent on Watsi's mission of helping people not in defending litigation. Nevertheless I would have felt good defending Watsi's use of the mark.
[1] http://en.wikipedia.org/wiki/Emblems_of_the_International_Re...
The reality, of course, is slightly less than that - they used his photo in the promotions, and the Red Cross contacted them to advise that the symbol was protected and 'request' that they change the costume, which of course they were happy to do.
I believe your disagreement is with the fellow whom I responded to. :)
As I noted in my post, though, marks don't have to be registered in order to be protected. Even if BCBS doesn't have any instances of the blue cross alone registered with the USPTO[0], that doesn't mean that BCBS couldn't still have trademark rights to it.
> while we have a reasonable likelihood of prevailing our use of the mark
I'm not convinced - there are many (seemingly) clearer-cut cases that have gone the other way. I'm not saying that this is the ideal state of trademark law, but I think that there's reasonable precedent for it.
> they have enough money to try to enforce the mark without putting a dent in their litigation budget
I agree that this is probably the dominant reason.
[0] Which I would not necessarily conclude based solely on the fact that you couldn't find it. It's not a comment on your searching skills; I've used it before, and TESS (the USPTO database search) sucks.
100% agree with you. A story I have told a few times on HN was getting a C&D letter for the use of the mark "blood" on a previous product I manufactured, and a basic search on TESS of "blood" will not turn up the registered mark (turns up a lot of other marks that include blood, but not blood by itself) I can only find it searching the registration number. Watsi is being classy by not even naming the company, but I would like to see the C&D or demand letter they received.
So the blue cross people were doing what they had to do. It sure is funny though how almost every law is interpreted in a way that maximizes future legal work involved.
There are a fairly limited number of useful marks because companies need fairly short names. Imagine if trademarks worked like copyright and modern companies had to worry about infringing the mark of a company that hasn't traded since 1940?
If patent enforcement worked like trademark enforcement, then trolls would have a much harder time.
This is mostly false as a concept, and false as written. It's pretty much a fiction trademark lawyers use to try to convince people they really like them, but they have to be suing them now.
There is no special "if you don't sue people, you lose" defense for trademarks, on that front it's the same laches defense as anything else.
About the only thing you risk is loss of distinctiveness, and only then if you are not otherwise doing things to try to maintain brand distinctiveness.
In fact, there is a specific "doctrine of progressive encroachment" that allows you to let people minimally invade, and only sue for infringement when there use expands past something small and minimal.
Even in cases where all of this fails, nobody has "lost a mark" except to genericness (which is unpreventable, in reality). The last case i'm aware of to confront this issue, the defendant was still barred from using the mark in the future, the plaintiff just got no money damages.
boo hoo.
I did some TESS digging of my own and found that the Blue Cross & Blue Shield Association holds a trademark on the cross logo alone: serial number 72450146, granted for "pre-paid financing of hospital and medical services".
And given that all the Blue Cross companies used to be nonprofit (some still are) I'd say there's enough of a chance of confusion that a medical-related nonprofit whose logo is a blue cross is somehow affiliated with Blue Cross for some BCBS entity to have a case.
Yes we all love Watsi and they deserve nothing but praise for their work. They made a small goof on the logo and are fixing it and even finding a way to turn a small misstep into a positive.
"The association owns and manages the Blue Cross and Blue Shield Trademarks." http://www.bcbs.com/about-the-association/ Some of the "independent" companies comprising the Association are the "registered owner" of marks but obviously that is only through a license with the Association, and they are not actual owners they are licensees.
>serial number 72450146
As I acknowledged in my comment there may have been such a mark and admitted to another comment I have previously been unable to find a specific mark with TESS. That said the design of the mark you found: 1. is the cross with the "Silhouettes of men" design in the middle, and 2. they specifically avoided identifying the color of the cross(i.e. they could have specifically identified blue to receive very specific and greater protection as to blue crosses, instead they receive a more general protection for a cross with a man in any color). Additionally, the category of the mark you identified is category 36 or in other words "insurance", therefore, it is going to be difficult to enforce the mark against a non-insurance company even if they are involved with medical services in one way or another (again I concede there may be other and more appropriate marks registered).
> I'd say there's enough of a chance of confusion
Although the legal standard is "likelihood of confusion", there still needs to be a showing of actual confusion in the market place (i.e. did a reasonable person actually donate to Watsi thinking it was BCBS, or can BCBS produce surveys of consumers showing they are actually confused?). It is possible, but I do not think so. Again I feel Watsi saw their effort/money better spent on their mission not on needless litigation, and I think they made the right choice, but as their counsel I would have said they would likely prevail, that said it is possible their counsel would not agree with me just the same as you.
[In general. I am not YOUR lawyer.]
Agree with most of what you are saying.
But with respect to the above paragraph doesn't incorporate the strategy of why you might want to register a trademark even if protected by common law. Some animals are more equal than others.
First, the cost. This can be done without a lawyer by just paying the USPTO fees. So we are talking about $375 (or $325 in the case of certain marks) per category. I've both hired lawyers and I've done this myself as well.
Anyway back to strategy. It gives you a leg to stand on. That's very important in terms of how the other side views you. You have taken the time to register and therefore the other attorneys will give that some thought when they are confering with their client as far as how to proceed. [2] Enough that, in my opinion, and from my experience [1], it is worth the trademark filing fees. (There are attorneys that will do this for $1000 all in by the say if you don't want to diy.)
[1] The leg to stand on principle is something that I have used before several times. In one case I was able to hold off the NCAA (they have big lawyers, right?) and in another case a billion dollar defense contractor. And in lots of small cases. Now this doesn't mean that you will execute as well as I do when doing this but I'd like to point out that it is certainly possible. (My expertise is strategy to the point where I can usually get lawyers that are working for me to agree with my way of doing things that contradicts even with legal precedent.)
[2] Meaning you could potentially extract a pound of flesh or concessions (see NCAA in [1]) just from that leg you lean on.
Nah, doesn't sound like Blue Cross at all.
Not sarcastic. Completely serious. IBX costs a fuckton, but is really great insurance.
Even if they're in different markets, Blue Cross is well-known enough that they may also have a colorable "dilution" claim.
Bottom line, if you're a startup and you get sued, you've already lost. Good on them for not wasting time fighting this too hard and getting on with their work.
I just donated two hours worth of my consulting time for two fellow human beings in need somewhere else in the world and it will have serious impact. I'm in total bliss <3 nothing feels like helping others - you should try donating!
The only thing I would like to see watsi doing is to offer donations with bitcoin! Integration with bitpay is really easy too. If watsi is rails based (seems so) they would have support for bitpay out of the box with active merchant!
Go spread some love folks, it feels great!
Edit:
https://bitpay.com (they offer immediate conversion to local currencies too!)
https://github.com/Shopify/active_merchant/tree/13e0ab52727b...
Medical companies are ruthless here. I ran an e-commerce store that sold medical equipment, it was nearly impossible to buy any .com domain name related to the medical industry. We ended up settling with JazzMed because one of our founders liked Jazz and we figured it was a unique brand. We ran the company for about 6 months slowly getting to a point where we had roughly 10 orders a day. Needless to say, once we started ranking well in Google a health care company called Jazz Pharmaceuticals threatened legal action, even went through the trouble of sending a certified letter from their lawyer. After reviewing our options and after receiving a formal complaint to the court from the company we decided to shut down and comply with their demands which was to transfer the domain ownership to them. We just didn't have the resources to hire a lawyer and keep the company going. The sad part is that there are so many businesses in that space it's nearly impossible to create a company name that doesn't sound like an existing one.
It's still extremely hard, see this PDF:
http://pubs.acs.org/subscribe/archive/mdd/v05/i08/pdf/802pat...
(Standard disclaimer - IANAL)
Isn't this akin to waving a stack of cash right in front of <insert big corporation here> lawyer's nose?
Is watsi's only saving grace the fact that they are not directly profiting from these t-shirt sales?
Seems kindof risky, no?
At a larger company, you have swathes of employees detached from the customer and focused on the numbers. I think that's probably where the empathy for customers can become unstuck.
They could have had their lawyers draw up a reasoned defense, then used that to wrangle a settlement offer whereby Watsi takes a large-ish donation in return for changing their logo.
Reason being a big battle would hit the larger plaintiff much harder in terms of public opinion. A little brinksmanship could do them a world of good.
Thoughts? Any legal eagles want to weigh in on whether this be a feasible course of action?
I think you're probably right, but brinkmanship would be incredibly time-consuming, stressful, and distracting. They have more important things to worry about right now.
If your question is, who would win the battle in the court of public opinion? For sure Watsi would win. No doubt in my mind.
As Chase Adam said in his startup school speech, Watsi merely has to get people to look at it's patients' pictures and read their stories.
But if the plaintiff is indeed BCBS, then Watsi would have definitely lost. Since BCBS will probably be regarded as a famous mark, and any similarity would cause an issue for Watsi.
It's unfortunate and sad nonetheless.
Let's make this so costly that no mega-corporation dares to bully non-profits in this way again.
Why?
"a multi-billion dollar health insurance company threatened to take us to court for trademark infringement"
to
"a multi-billion dollar health insurance company threatened to oppose our trademark application"
Was that because of careful consideration and consulting or again because of said health insurance company?
I give credit to Watsi for its response, though. This is a cool and creative way to deal with a forced change in brand.
Oh well, sounds like money will be coming in, and free advertising, so mission success, right?
I can't help but think how it is non-profit, but ONLY after investors and founders are paid good sums of money. Not that there is anything wrong with that, I am just saying it is shady.