U.S. judge rules American Red Cross can use red cross

NEW YORK (Reuters) - The American Red Cross can continue to use its iconic emblem, a federal judge ruled on Thursday, in a case that pitted Johnson & Johnson against the humanitarian organization and four of its licensees.

J&J, which also uses the symbol, filed suit in U.S. District Court in Manhattan against the American Red Cross and four of the charity's licensees, seeking to prevent them from using the "Greek red cross on a white ground," claiming that it is a trademark violation and the humanitarian group was barred from using it for commercial purposes.

But U.S. District Judge Jed Rakoff disagreed, noting that the American Red Cross had used the emblem for more than a century and it was authorized to do so by various Geneva Conventions and the U.S. Congress.

Judge Rakoff left intact only a part of the suit which contends that the ARC purposefully interfered with J&J's business relationship with two of the four companies.

In his 34-page decision, Judge Rakoff found that the answer to the "real question ... whether the permission the (U.S.) statute gives to ARC to use its logo for any purpose, including commercial purposes," was yes.

ARC entered into licensing agreements with Learning Curve International Inc and three privately held companies, Magla Products LLC, Water-Jel Technologies Inc and First Aid Only Inc.

In return for using the red cross on their packaging and websites, the companies pay the American Red Cross a fee or percentage of their sales. J&J had a similar arrangement with ARC in the 1980s, the judge found.

The American Red Cross filed a countersuit against J&J, claiming that it was the one violating trademark law, but the judge noted that the 120-year-old company's right to use the red cross was protected by a grandfather clause. He also dismissed ARC's contention that J&J could only use the red cross on products for the same purpose it did before 1905.

"If ARC were correct that J&J could only sell kits containing exactly the same products as those sold prior to 1905, J&J would be constrained to continue forever selling kits that contain such antiquated products as cat gut ligatures and kidney plasters," the judge ruled in dismissing ARC's counterclaims.

His order allows J&J to proceed to trial against the American Red Cross for interfering with its contracts with Water-Jel and First Aid Only and also the four companies' counterclaims against J&J.

"We are pleased that the court upheld J&J's use of its Red Cross trademark over the past century as entirely appropriate under federal law," the company said in a statement.

"We are disappointed that the court rejected our claims involving ARC's commercial uses of the emblem. We are reviewing the decision and look forward to continuing this process to resolve our legal dispute with the American Red Cross," the statement added.

The American Red Cross and the four companies did not immediately return phone calls seeking comment.

(Reporting by Leslie Gevirtz; Editing by Brian Moss)