Healthvana Sues “As Seen On TV” Company Over Hand Sanitizer

On Tuesday, May 12, 2020, digital healthcare start up Healthvana, Inc. sued Telebrands Corp., the company credited as the pioneer of “As Seen on TV” ads, in a California district court, claiming that it was damaged as a result of Telebrands’ unauthorized use of the registered trademark Healthvana to sell overpriced hand sanitizer.

Asserting claims for trademark infringement and false advertising, Healthvana alleged that it experienced a wave of backlash following the use of its name on the expensive hand sanitizer, including angry complaints from its consumers, partners and investors. Healthvana specifically alleged that Telebrands’ use of the Healthvana mark on hand sanitizer, a form of protection against the spread of germs, purportedly led Healthvana’s customers to believe that the start up healthcare firm was the one behind the pricey products, leading to public remonstrations against Healthvana on social media and calls for an investigation. Healthvana normally provides a digital portal that connects healthcare providers with their patients; but, since the pandemic, it has focused on providing COVID-19 testing and tracing services.

Although Healthvana acknowledged that Telebrands has since changed the mark for its hand sanitizer to “Handvana,” it claimed the damages have already been done and admonished Telebrands for “taking advantage of people during a crisis by jacking up prices.”

The case is Healthvana, Inc. v. Telebrands Corp., et al., Case No. 2:20-cv-4305, in the U.S. District Court for the Central District of California. A link to the complaint can be found here.

3M Granted Injunction in NY Against Unauthorized Reseller of N95 Masks

On May 4, 2020, U.S. District Judge Loretta A. Preska granted a preliminary injunction in favor of 3M Company, the manufacturer of N95 masks, against New Jersey company Performance Supply, LLC for violating federal trademark law and for offering 3M’s N95 masks for 500% more than 3M’s list price, including to a New York City agency. Judge Preska ruled that Performance Supply used 3M’s trademarked red logo without authorization, which led city workers to believe that it was permitted to send offers on behalf of 3M. Judge Preska banned Performance Supply from using 3M’s trademarks in connection with the advertising and sale of goods, and from engaging in any misleading conduct in connection with 3M and its products. In her ruling, Judge Preska stated, “The public has an interest in avoiding confusion about the source and quality of goods and services. This is especially true during the global COVID-19 pandemic, when consumers, including experienced governmental procurement officials, are relying on the 3M [trademarks] to indicate that goods and services offered thereunder originate from 3M, and are of the same quality that consumers have come to expect of the 3M brand.” 3M has 10 other similar lawsuits pending.

USPTO Rejects TM Application for PUMA TOKYO 2021

 On April 24, 2020, the U.S. Patent and Trademark Office issued an office action to Puma SE for the trademark application that it filed for PUMA TOKYO 2021 for various types of carrying bags, clothing, and sporting goods, stating that the trademark would falsely suggest a connection with the Olympics, which have been postponed because of the COVID-19 pandemic. The USPTO examiner noted that the application was filed on the same day as the International Olympic Committee announced that the games would be rescheduled. The USPTO examiner also refused to register the mark because it was confusingly similar to the registered trademark TOKYO 2020 owned by the U.S. Olympic Committee, stating that Puma “simply added the house mark ‘Puma’ to the nearly identical wording in the registered mark[].”

Trademark Applications at the Edge of Coronavirus Pandemic

While the world deals with its worst pandemic of the century, SARS-CoV-2, COVID-19 or Coronavirus as people may call it, many are seeking trademark protections for COVID-19-related trademarks for all kinds of goods and services.

From an applications for I SURVIVED CORONAVIRUS QUARANTINE 2020 or WARNING MY RIDE IS SICKER THAN THE CORONAVIRUS for clothing to COVID-19 IMMUNE for identification bracelet, JABON COVID-19 for bar soap, or COVID-19 lbs for a weight loss program, the coronavirus is all around us, even in trademark law mazes. Among the wide range of applications designating all kinds of goods and services, many applications also relate to the health care crisis and designate face masks, gowns or hand sanitizers.

However, most of these attempts to protect pandemic-related trademarks will unlikely lead to trademark registrations. The underlying purpose of trademark law which is to permit the consumers to determine the source of the goods and services they are buying. Accordingly, it seems highly unlikely that the USPTO would accept the registration of FVCK COVID-19 for clothing or COVID-19 for toy cars magnets because such pandemic-related marks do not serve as source identifier but rather seek to take advantage from this worldwide pandemic.

Booking.com

For the first time in 230 years, on May 4, 2020, the Supreme Court of the United States hosted oral arguments online due to the COVID-19 pandemic.  In USPTO v. Booking.com, trademark practitioners from around the world tuned in to hear two experienced attorneys (both female, #womeninlaw!), skillfully argue their respective positions.  At issue in the Booking.com case is whether, when the Lanham Act states generic terms may not be registered as trademarks, the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.  Erica L. Ross, Assistant to the Solicitor General at the Department of Justice, argued on behalf of the USPTO, and Lisa S. Blatt, from Williams & Connolly LLP, argued on behalf of Booking.com.  More info here.

SHOP Safe Act

On March 2, 2020, a bipartisan group of representatives in the U.S. House of Representatives introduced the Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce Act (the SHOP Safe Act).  Proponents of the Act claim that the bill “addresses the problems of the sale of unsafe counterfeit goods by incentivizing platforms to engage in a set of best practices for screening and vetting sellers and goods, penalizing repeat offenders, and ensuring that consumers have the best (and most accurate) information available to them when they make their online purchases.” See a one-pager on the bill here.

The Act replaces “contributory infringement” liability with a statutory “safe harbor” for platforms that incorporate certain preventative measures (e.g. verifying the third party seller’s identity and contact information, require the seller to attest the goods are not counterfeit, implement timely take down provisions and so forth).  The Act would apply only to goods that implicate the health or safety of the consumer.

Critics of the bill claim that it is vague and ambiguous.  For one thing, it is unclear what implicates the “health and safety” of consumers, and the Lanham Act has no such limitation.  The bill also confuses concepts of counterfeiting and infringement, and imposes an impractical requirement of platforms to screen goods before they are displayed to the public. More information can be found here.

Dunnington Bartholow & Miller Trademark Bulletin Committee: Olivera Medenica, Donna Frosco (Partners); Sixtine Bousquet, Betsy Dale, Kamanta Kettle (Associates); & Valerie Oyakhilome (Paralegal).