REPORT/RECOMMENDATION TO THE BOARD OF SUPERVISORS
OF THE COUNTY OF SAN BERNARDINO
AND RECORD OF ACTION
May 18, 2021
FROM
WILLIAM L. GILBERT, Director, Arrowhead Regional Medical Center
SUBJECT
Title v
Arrowhead Regional Medical Center’s Trademark Renewal for The Heart of a Healthy Community
End
RECOMMENDATION(S)
Recommendation
Authorize the Director of Arrowhead Regional Medical Center or its designee to electronically execute and transmit all necessary declarations with the United States Patent and Trademark Office, subject to review by County Counsel, to maintain its trademark in the amount of $850.
(Presenter: William L. Gilbert, Director, 580-6150)
Body
COUNTY AND CHIEF EXECUTIVE OFFICER GOALS & OBJECTIVES
Pursue County Goals and Objectives by Working with Other Governmental Agencies.
Provide for the Safety, Health and Social Service Needs of County Residents.
Improve County Government Operations.
FINANCIAL IMPACT
Approval of the recommendation will not result in the use of Discretionary General Funding (Net County Cost) as the cost of $850 is funded by State Medi-Cal, Federal Medicare, private insurances, and other departmental revenue. Funding sources may change in the future pending any legislative activity related to the repeal and/or replacement of the Affordable Care Act. Adequate appropriation and revenue is included in the Arrowhead Regional Medical Center's (ARMC) 2020-21 budget and will be included in future recommended budgets.
BACKGROUND INFORMATION
On July 30, 2015, ARMC filed a Trademark/Service Mark Application with the United States Patent and Trademark Office (Patent Office) to have the phrase “The Heart of a Healthy Community” trademarked. On or about April 26, 2016, the Patent Office approved and registered the trademark. “The Heart of a Health Community” trademark is used within the organization for items such as announcements and newsletters as well as publicity. It is used on the ARMC website, and in educational materials, brochures, and pamphlets delivered to the public, such as the brochure that promotes the ARMC Diabetes Program, and Maternal Child Services.
In order to maintain a trademark’s status, between the fifth and sixth years after the registration of a trademark, an owner of a trademark must file a Declaration of Use and/or Excusable Nonuse (Declaration of Use) with the Patent Office to affirm that either the trademark is in use in commerce for the services listed in the underlying application, or the trademark is not in use in commerce due to special circumstances that excuse nonuse.
Additionally, if a trademark has been in continuous use for five years, an owner of a trademark may file a Declaration of Incontestability with the Patent Office to claim incontestable rights in the trademark. The Declaration of Incontestability requires the owner of the trademark to affirm that (a) the trademark has been in continuous use in commerce for a period of five years after the date of registration and is still in use in commerce, (b) there has been no legal decision adverse to the owner’s claim of ownership of the trademark, or to the owner’s right to register the trademark or to keep the registration, and (c) there is no pending legal proceeding involving the trademark in the Patent Office or in a court of law. Following the filing of the Declaration of Incontestability, the trademark become incontestable and various aspects of the registration cannot be challenged by third-parties.
It is presently between the fifth and sixth years after the date of registration of ARMC’s trademark. As such, ARMC is now required to file the Declaration of Use with the Patent Office to maintain its trademark. Additionally, because all of the elements of incontestability exists, ARMC may also file a Declaration of Incontestability. This would provide ARMC additional protections against third-party challenges to the trademark.
Approval of the recommended item would authorize the Director of ARMC or its designee to electronically execute and submit a combined declaration of use and declaration of incontestability with the Patent Office.
It is recommended that the Board of Supervisors approve this item to ensure that the trademark is maintained as it provides a brand to ARMC that supports the objectives of resident safety, health and social service wellness.
PROCUREMENT
Not applicable.
REVIEW BY OTHERS
This item has been reviewed by County Counsel (Charles Phan, Deputy County Counsel, 387-5289) on April 26, 2021; ARMC Finance (Chen Wu, Budget and Finance Officer, 580-3165) on April 26, 2021; Finance (Yael Verduzco, Administrative Analyst, 387-5285) on April 28, 2021; and County Finance and Administration (Matthew Erickson, County Chief Finance Officer, 387-5423) on May 2, 2021.