Penn is suing two companies over the use of trademarks registered by the University.
In late September, Penn filed two lawsuits for trademark infringement against PennRX Pharmacy and Penn Health Ambulance Corporation, both unaffiliated with the University.
The suits, which also include charges of unfair competition and false designation of origin, allege that the two companies are causing “confusion in the marketplace” by using Penn-registered names.
The cases refer to several names registered as trademarks by the University: “Penn,” “Penn Medicine” and “PennHealth.”
The University has over a hundred active trademarks for names and designs registered with the United States Patent and Trademark Office, including “Sansom Common,” “World Cafe Live”, “PennCard,” “The Inn at Penn,” “Penn Relays” and “Campus Express.” The number of Penn registered trademarks, particularly those associated with the health system, has been growing in the past two decades.
“PennHealth” was registered in the early 1990’s in designation of “medical referral services for the general public provided by telephone,” and then in 2000 for education and other medical services.
“Penn Medicine” was registered in 1998, according to court documents.
“A trademark is any word, symbol, device, pretty much anything … that can identify a particular organization and distinguish it from others,” said Jim Meyer, an intellectual property lawyer whose firm registered most of Penn’s currently active trademarks.
Registering a trademark gives Penn nationwide rights to use the name. Moreover, Meyer added, after five years, a registered trademark becomes incontestable, “which means that for the most part, no one can challenge your trademark rights.”
Registration also enforces the University’s rights in trademark infringement lawsuits. It serves “to protect against unauthorized individuals and businesses using Penn’s valuable trademarks to make it seem as if their business is owned by Penn or affiliated with Penn,” said Susan Phillips, a University of Pennsylvania Health System spokesperson, in an email statement.
In an email to Flaster/Greenberg PC — the law firm hired by Penn for the suit — a Penn Health Ambulance representative wrote, “ … we have absolutely never used penn or penn medicines name in our cards advertisement equipment … i don’t understand why this is being brought up now when we opened about 2 years … [sic],” according to court documents.
Neither PennRX Pharmacy or Penn Health Ambulance Corporation responded to requests for interviews.
The University decides to sue on a “case by case determination,” said Rob Firestone, an associate general counsel for the University.
The trademark “Penn” was registered by the University in 1992, though the name has been in use since at least 1895, according to court documents.
Other registered names for Penn include “University of Pennsylvania” in 1993, “Penn University of Pennsylvania” in 1993 and 2004. “UPenn” is currently being registered.
While Wharton is also registered under multiple names, the School of Nursing and the School of Engineering and Applied Science schools do not currently have registered trademarks.
Whether the school will register a trademark depends on “whether the money to protect the trademark” is worth the benefits, Firestone said.
Penn has also abandoned certain names over the years. For instance, the name “Daily Pennsylvanian,” in use since 1934, was registered as a trademark of the university in 1963, but the trademark has since expired. Today, the paper is independently run.
However, the University possesses trademark rights over names that have not been registered, Meyer said. “A right in a trademark comes from using a trademark. You don’t need to register a trademark in order to obtain rights from it.”
For example, he said, the sports venue names “Franklin Field” and “Palestra” are trademarks of the University though they are not registered.
Registering trademarks also helps the University protect its brand, Meyer said. “Penn has the right to control the quality of the services.”
“Most universities have trademarks protecting their symbols or their identities,” Firestone said, because “they distribute a lot of goods and services.”