A recent trademark opposition case shows that a trademark disclaimer can make a difference.

In Foundation Medicine, Inc. v. Alfred F. Czap, the Applicant sought registration of the trademark FOUNDATIONAL MEDICINE REVIEW for journals in the field of medicine.    Foundation Medicine, Inc. opposed the application.  In doing so, it relied on two prior registrations of FOUNDATION MEDICINE.  One was for the word mark and the other was with a design logo.    The services identified in the word mark registration included the electronic storage of medical data and healthcare information for healthcare professionals.  The services in the design logo registration were for an online portal featuring links to medical and scientific research in the field of cancer treatment and diagnosis.

Trademark disclaimer rule.  The Applicant had to disclaim exclusive rights to the term “medicine review.”   The Opposer, in both of its pleaded registrations, had to disclaim the term “medicine.”  When a party disclaims certain words in a trademark, it means that it does not seek to claim exclusive rights to the word.  This is for public policy purposes.  Disclaimers recognize the need for competitors to use common words to describe their goods or services.    Disclaimers are often required when an applicant seeks registration for a compound mark that contains descriptive words.

Likelihood of confusion analysis.  For purposes of providing a likelihood of confusion between trademarks, the Board looks at the protected elements of each parties’ mark.  In the case of a disclaimer, what is compared are the remaining non-disclaimed elements.  Here, the dominant portion of Foundation Medicine’s pleaded registrations was the word “FOUNDATION.”   Since the Applicant had to disclaim exclusive rights in “medicine review,” the  protectable portion of its mark was the word “FOUNDATIONAL.”

Conclusion. In any likelihood of confusion case, two of the most important factors are the similarity of the marks and similarity of the services.  The Board concluded that Applicant’s services and Opposer’s services overlap.  Specifically, Opposer’s pleaded trademarks included providing “medical data/information to healthcare professionals.”  Applicant’s services included “providing on-line, non-downloadable articles in the field of medicine and healthcare.”  Since the dominant portions of the parties’ respective marks were “Foundation” and “Foundational” and the goods and services overlapped, this was sufficient for the Board to rule in favor of Foundation Medicine, Inc.  Judgment entered in its favor and the opposition was sustained.

Editor’s Note.   Brand protection is vital for healthcare organizations.   For further health trademark protection tips, please refer to this article.