The IPOPHL Director-General upheld Oppositions filed by Mayo Foundation for Medical Education and Research (“Mayo Foundation”) against trademark applications filed by Maayo Medical Clinic Corporation (“Maayo Medical”) for MAAYO MEDICAL CLINIC, MAAYO MEDICAL CENTER, MAAYO WELLNESS, and MAAYO HEALTHCARE.
Mayo Foundation is the owner of the MAYO CLINIC mark and secured registration of the “MAYO” mark with the IPOPHL in 1996 for printed materials, namely, medical journals, health care, newsletters, patient education brochures, and medical and health related books and information. On the other hand, Maayo Medical’s trademark applications filed in 2014 for its MAAYO marks covered health and medical services.
In Decisions dated 15 December 2020 in Appeal Nos. 14-2019-0011 to 14-2019-0014, the IPOPHL Director-General ruled that Mayo Foundation’s trademark registration for “MAYO” for printed materials, namely, medical journals, health care, newsletters, patient education brochures, and medical and health related books and information are closely related to Maayo Medical’s health and medical/medical care services. Since “MAAYO” resembles “MAYO”, it is very likely that the purchasing public may be deceived or be confused that these marks are owned by the same persons. The likelihood of confusion that may arise from the use of the marks is strengthened by the similarity in the goods and services covered. It was also not farfetched that Maayo Medical knew of Maayo Foundation’s goods and services in the market.
The Director-General held that Maayo Medical has millions of terms and combinations of letters and designs available for its use on its services. Why it insists on using “MAAYO” that is visually and aurally identical to the “MAYO” mark betrays its intention to take advantage of the goodwill generated by Maayo Foundation’s mark. As registered owner of “MAYO”, Maayo Foundation can prevent other persons from using a trademark that resembles its mark as to be likely to deceive or to cause confusion.
There were no appeals from the Decisions. The Decisions have attained finality.
Disclosure: We represented Maayo Foundation for Medical Education and Research in these cases.