So you sue.
The hospital, part Grady Health System, earlier this month filed suit in U.S. District Court against Albritton’s company, along with another similarly named business, charging trademark infringement and asking the court to stop them from using the name.
In their suit and in a statement to The Atlanta Journal-Constitution, hospital officials said they have asked the court to stop both Albritton and another local company named Gradybaby Apparel from using the phrase on their merchandise.
“We are concerned that their unauthorized use could lead to public confusion and even usurp our right to use our own name and trademark,” the hospital said in a statement. The phrase “has been used by Grady for many years and directly refers to the hospital.”
In a December letter, Grady told both companies that the phrase was its intellectual property. Grady officials said Wednesday that they had to act when the companies refused to stop.
Albritton said he found the logic baffling.
“It’s like why you can have Delta Air Lines and Delta Faucet Company,” he told the AJC. “There’s no confusion in the marketplace between us and Grady Hospital.”
He obtained the trademark years ago and doesn’t see how the hospital can claim it, he said. “I was kind of shocked. Y’all didn’t create that name. The community did.”
In January, his attorney Amber Saunders answered the hospital’s letter, arguing that his customers are not confused at all by the name. She included a link to Grady’s gift shop, which lists a number of items, including balloons, candy, flowers, blankets and stuffed toys, but no clothes.
“We responded, ‘Hey, there’s no conflict. You guys don’t sell clothes,’” she said. “Your client has not used ‘Grady Baby’ as a trademark or in any manner that would cause confusion in the marketplace.”
Trademark law is not cut and dry and the nuances of the law differ by jurisdiction, said Margo Bagley, professor at the Emory University School of Law.
Generally, the ownership of a phrase comes from use in commerce and doesn’t necessarily need to be registered. But sometimes the association with a phrase — and the consumer’s assumption that there’s a relationship — is enough to give a company the right to it.
The law sometimes protects a company’s right to a term that it didn’t create, she said. “If it’s a mark that you don’t use, but other people use it to refer to you, the law is split on that.”
On one hand, even though Coca-Cola didn’t name its soda “Coke,” it successfully stopped a company from selling a drink named ‘Koke,’ because it exploited a short-hand that consumers used that only referred to Coca-Cola, she said.
Yet IBM, which was often referred to as “Big Blue,” was unable to stop Big Blue Products from using that phrase.
While a company may not be in a business — like clothing — it can sometimes stop another company from using a phrase that they might want to use at some point to go into that business. The law has also expanded to include cases where a customer might assume the two companies are connected.
“The standard is, is there a likelihood of confusion as to the source or the affiliation or the sponsorship,” Bagley said. “Even if you don’t think the merchandise is coming from Grady, do you think that Grady approved it?”