Originally posted 2011-09-09 13:12:09. Republished by Blog Post Promoter

Congenital Diaphragmatic Hernia!

It’s a serious condition, but… what about it?

Techdirt explains:

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 [sic] 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.

Brilliant use of a charity’s resources, pro bono or otherwise!  Just the thought of it gives me a neurological hernia.  But congenital it ain’t.  I just got it from reading this item.  Or maybe I just became “aware” of it.

In fact, as the page at the “petition” drive shows, a registration was in fact issued for CONGENITAL DIAPHRAGMATIC HERNIA AWARENESS last April.  Well, okay — it’s only on the Supplemental Register.  It was bounced there last July after being rejected for inclusion on the Principal Register on the unsurprising grounds of “mere descriptiveness.”  For non-trademark professionals, it’s like this:

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.TMEP §1209.01(b) . . .

In the present case, as seen from the recitation of services, the mark, CONGENITAL DIAPHRAGMATIC HERNIA AWARENESS, is merely descriptive of a feature of the services that provides awareness regarding congenital diaphragmatic hernia.Because the mark is merely descriptive of the services, registration must be refused on the Principal Register pursuant to Section 2(e)(1) of the Trademark Act.

They can take another shot at a real registration if they can ever demonstrate that the “mark” has “acquired distinctiveness.”

But there’s more:  a new, pending application (serial number 77640674) for CONGENITAL DIAPHRAGMATIC HERNIA AWARENESS DAY!  And, once again, they’re shooting for the Principal Register over at Breath of Hope, Incorporated.  Because “awareness” may be descriptive, but a “day” of “awareness”?  Who would ever figure out what that means?

Don’t fret too much.  There are “petitions” — such as the one linked to in the story above — and there are petitions — such as this Petition to Cancel.   Filed by a rival organization working the same territory (yes!), it’s based on two arguments: “Fraud” on the PTO about how and when the mark was first used and whether the first use claimed is really for the pending DAY mark (indeed there’s a lot of back and forth on this topic in the application archive), and “genericness” — i.e., that the “mark” will never acquire distinctiveness and never can and that the opposer will be harmed by the registration by being unable to talk about… that awareness thing.

Quite a bit of intrigue here, actually, because it appears that the DAY application was indeed filed after the opposition!

Considering how little heavy lifting is involved, I’d bet on the latter “petition” … but not on the end of “trademark insanity.”   It’s the modern-day version of competition by other means.

UPDATE:  The registration was in fact cancelled in June of 2010.

By Ron Coleman

I write this blog.

7 thoughts on “Trademark Insanity Awareness. Day.”
  1. Dear Mr. Coleman,

    Thank you so very much for this article. I am President of the “other organization that is Petitioning (both types) this trademark.

    A few notes to clear up; CDH is a birth defect, not a disease. It has affected over half a million babies since 2000 and lack of awareness is obviously an issue we are all working hard to overcome and would not like to see any of our effects restricted by one person. Also, CHERUBS is just one of eight organizations fighting this insanity. We just happen to be the largest, loudest and the “official” organization to Petition to Cancel.

    And you are correct, this is not the end of this insanity or even the beginning. This is just the latest attack of four years of insanity from that organization and not even the first to use a government agency to attack CDH families and organizations. It is also important to note that the first trademark is the only trademark on the registry of awareness of any health issue (disease, birth defect, etc). It sets a horrible precedence and reflects badly on charity ethics – to put it mildly.

    We would greatly appreciate you forwarding any slanderous or defaming comments you may (and probably will) receive from Elizabeth Doyle-Propst, CEO of Breath of Hope, Inc.

    Thank you so very much for your assistance!

    Dawn Williamson
    President and Founder, CHERUBS – The Association of Congenital Diaphragmatic Hernia Research, Awareness and Support

    1. Hi, Ms. Williamson. You’re welcome, of course, but just for the record I call them as I see them, and I am not carrying anyone’s water here. On the other hand, you can count on my publishing anything I received on this topic, so just keep reading the blog — as I am sure you will do for the rest of your life anyway — and you will be privy to whatever comes my way.

      By the way, regarding the “disease” description, as you can see I was merely quoting TechDirt. I myself described it as a “condition.” Personally, I wish only blessings on you and all the people involved in seeking a treatment and other forms of relief for this and all other afflictions, of course. Professionally I agree with your assessment of the issue based on the facts of which I am aware, as my blog post should indicate.

  2. Good work digging this one up, but its one I don’t want to have to read cause it makes me mad. The idea of a charity spending money on this legal stuff is beyond amazing. I think I am going to try to trademark all the “medical problem weeks” for my own, just so I can sue non-profits with less money.

  3. Brandland, let me be very clear about this: You never have to read LIKELIHOOD OF CONFUSION®, just as you never “have to” vote, brush your teeth or fight Communism.

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