The U.S. Trademark Trial and Appeal Board recently cancelled a fitness trademark registration based on abandonment.   This case serves as a reminder of the importance of proper health trademark use.

In Rise Above Fitness LLC v. Rise Above Performance Training, the Petitioner brought a cancellation action on the grounds of abandonment, fraud, and likelihood of confusion.   The Respondent was the owner of U.S. trademark registration of the mark RISE ABOVE for personal fitness training services.   Petitioner’s application for RISE ABOVE FITNESS  for fitness boot camps was refused based on the preexistence of the RISE ABOVE registration.  The Petitioner therefore had standing to bring the petition for cancellation of the RISE ABOVE registration.  Rise Above Fitness LLC filed a brief in support of its trial testimony.   Rise Above Performance Training, for some reason, did not.  Respondent did not file trial testimony or submit any evidence either.  Its belated attempt to reopen its time for doing so was denied by the Board.

In support of its case, Petitioner filed its Requests for Admissions that is served on Respondent.  The Respondent failed to answer or object to any of the admission requests.  Accordingly, the requests for admissions were deemed admitted.   The Request for Admissions contained the following admissions:

  • Admit that you have failed to exercise continuous use of Registrant’s mark since November 21, 2012.
  • Admit that you have failed to exercise continuous use of Registrant’s mark since July 9, 2013.
  • Admit that you do not have any bona fide future plans to use Registrant’s mark in connection with Registrant’s goods and services.

Since the Admission requests established a prima facie case of abandonment, and coupled with the fact that they were deemed admitted, this proved fatal to Respondent’s case.  The Board concluded that the Respondent had abandoned its rights to its trademark.  Respondent’s registration was cancelled and judgment issued in favor of Petitioner.

Attorney’s note:  This case presents an example of the dangers of failing to maintain a robust defense to a trademark cancellation proceeding.   Parties who fail to either settle the case or engage in a defense operate at their own peril.   If a petition for cancellation for abandonment has been filed against a trademark that you or your company own, you may contact us to discuss the matter.

A recent trademark opposition dispute has been decided between home healthcare competitors.  This is another in a series of recent proceedings.

Background.  In Right at Home LLC v. Love Right Home Care LLC,  the Applicant, Love Right, sought registration of the mark LOVE RIGHT HOME CARE REFERRAL AGENCY.   It disclaimed the exclusive right to  “home care referral agency” separate and apart from the entire mark as shown.   The application was for employment placement services in International Class 35.Right at Home opposed the application.  The basis of the opposition was that it was likely to cause confusion with its RIGHT AT HOME registered marks for goods in services in Classes 16, 35, 42, 44, and 45.

Analysis.  The Board analyzed the likelihood of confusion analysis under the du Pont Factors, that comprises 13 elements that Board can evaluate in determining whether a likelihood of confusion exists.  In a likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services.  Opposers always bear the burden of proof in proving likelihood of confusion.  Where as here, an Opposer relies on several marks, the Board compares the closest registered mark of Opposer with that of Applicant’s mark.   In this case, the Board compared  Opposer’s Reg. No. 4680962 for the mark THE RIGHT CARE, RIGHT AT HOME for home health care services and non-medical personal care assistance with Applicant’s mark and services.  In comparing the similarity between the parties’ goods and services, the Board is limited to an examination of the goods and services that appear in the Opposer’s registration versus the goods in Applicant’s application. The Board concluded that the parties’ services are related and overlapping in part.  Therefore, the similarity of the parties’ services factor favored Right at Home.   The Board went on to state that although it viewed the mark THE RIGHT CARE, RIGHT AT HOME to be weak, even a weak mark is entitled to protection against a very similar mark with the same or related goods.   Applicant, was also not able to show that there was prolific third-party use of similar marks such that a likelihood of confusion would be avoided.

Finally, with regard to the first du Pont factor, similarity of the marks, the Board held that it is often the first part of a mark that is most likely to be impressed on the mind of a purchaser.   Here, it held that dominant portion of the Opposer’s mark to be “RIGHT AT HOME.”  The dominant phrase in the Applicant’s mark is either “LOVE RIGHT” or “LOVE RIGHT HOME CARE.”

Conclusion.  Based upon the totality of evidence, the Board ruled that the overall dissimilarity of the parties’ marks in appearance, sound, meaning, and commercial impression were dispositive.   Therefore it would make confusion unlikely.  The Board proceeded to dismiss the Opposition and ruled in favor of Applicant.

Attorney’s note:   This case is an interesting example where one single du Pont factor can make all the difference in a Trademark Trial and Appeal Board proceeding. 

Two dental practices were the parties to a recent trademark opposition proceeding.

Background.  In Timber Dental LLC v. Tooth LLC, the Applicant “Tooth” filed a trademark application for DENTISTRY DONE DIFFERENTLY for dentist services in International Class 44.   The Applicant had to disclaim the term “”dentistry” separate and apart from the mark as shown.  The Opposer, Timber Dental filed a trademark opposition claiming  common law rights in and to the identical mark DENTISTRY DONE DIFFERENTLY.  By claiming unregistered trademark rights, the burden was on the Opposer to show two things:  priority and likelihood of confusion.

Burden of proof.  To establish priority rights, the Opposer may rely on its own trademark registration.  Alternatively, it can rely on actual use, or use analogous to trademark use.  In all instances, the Applicant has the burden to prove that its registration or use predates the first use of the Applicant.   Here, since the Opposer had to rely on its claim of priority based on common law use of the mark or use analogous to trademark use.   In doing so, the Opposer could rely on advertising brochures, catalogues, websites, or other marketing materials.  Such materials would have to support a finding that the public associates the trademark as a source indicator of the Opposer.  Moreover, a party that relies on common law priority must also establish that the mark is distinctive.

Result.  The Applicant ‘s date of first use was November 2016.  Opposer’s witness testified that its date of first use of the mark DENTISTRY DONE DIFFERENTLY dated back to the date the practice opened.  This was 2014.   Unfortunately, the advertising evidence that the Opposer introduced in support of its first use date was not use of the mark in question but rather “Family Dentistry Done Differently.”  The Board concluded that the Applicant’s mark was not the same as the Opposer’s mark.  The Opposer never amended its Notice of Opposition to allege a likelihood of confusion with FAMILY DENTISTRY DONE DIFFERENTLY.  Accordingly, the Board had no choice but to rule in favor of Applicant and dismiss the Opposition.

Attorney’s Note.  If uncorrected, procedural errors can be fatal in trademark opposition proceedings.  Examples include relying on the wrong mark, or failing to plead a proper cause of action.

A trademark infringement case was filed this week that involves a dispute between two home healthcare agencies.

The case, Acaria Inc. v. Acaria Home Health LLC, et al., is currently pending in federal district court in Colorado.  The plaintiff, Acaria, Inc., doing business as Acaria Homecare, is a home care agency located in Lakewood, Colorado.   Acaria is the owner of U.S. Trademark Reg. No. 4524982 of ACARIA HOMECARE for “home visiting nurse care; nursing care; and nursing services” in International Class 044.   The plaintiff alleges that it has been using the ACARIA HOMECARE mark in commerce since 2005.   It conducts business in the greater Denver area. The defendants conduct business under the names Acaria Healthcare and Acaria Hospice.   Acaria Healthcare describes itself as ” a leading provider in Home Health, Hospice, and Palliative care.”  The defendants’ service area covers Maricopa County, Arizona.

The parties’ respective websites are here:  http://www.acariainc.com (plaintiff) and http://www.acariahc.com (defendants).  If the Acaria plaintiff is successful, it could be entitled to a permanent injunction, monetary damages, and an award of attorney’s fees.

If you are a home healthcare agency that is adopting a new name (or currently using one), you should remember the following principles:

  1.   Conduct a trademark search.  A properly qualified trademark attorney should conduct a search of the U.S. Patent and Trademark Office records, state records, and common law listings (of unregistered trademarks that are in use in commerce).   By conducting and analyzing the search results, the attorney will be able to determine if the proposed trademark is available for registration and use.  To make such a determination, the Trademark Office looks to thirteen different factors in assessing whether a junior user’s mark is confusingly similar to an existing senior registration so as to refuse registration.
  2.   Prepare and file a trademark application.  If a trademark attorney believes that your proposed trademark is preliminarily available, she should prepare and file a trademark application with the U.S. Patent and Trademark Office.   The Examining Attorney in the USPTO assigned to review your application will conduct his own search to determine whether there are any preexisting registrations that may pose a bar to registration of your mark.  He will also determine if your application meets all other procedural and substantive requirements for registration.
  3.  Train your staff and employees.    Health marketing compliance mistakes can be costly to a healthcare company and its reputation.  Your staff should be made aware of the main areas of brand protection and risk, including HIPAA Marketing compliance principles, trademark and copyright use and misuse, and social media risks.

By implementing proactive policies and training, you will be able to effectively mitigate the risks that your  healthcare organization faces as it relates to the advertising, marketing, and promotion of your professional staff and services.

A relatively simple health marketing mistake could be costly to your and your brand.

This past week we were looking at a couple of health marketing agencies that were touting the success of their clients’ recent marketing campaigns.  One campaign for a regional hospital caught our attention.  It is an example of great marketing that could quickly go bad.

The Marketing Campaign.   The centerpiece of the hospital’s marketing campaign was a new tagline.  The tagline was meant to illustrate the innovation of the hospital’s various technologies.  The slogan was used across various marketing channels, including print, web, social, and a Super Bowl spot that aired on regional TV.   Based on some back of napkin calculations, it is estimated that total marketing spending for the entire campaign was easily in the high-six to low-seven figures.

The Diagnosis.   The tagline was never cleared nor was a trademark application filed with the U.S. Patent and Trademark Office.

Risk Factors.    The failure to conduct a trademark search could result in a third-party’s claim of trademark infringement.  If found liable, the hospital could be enjoined from using the tagline, and also be ordered to pay up to triple damages (if the infringement was willful) and potentially the plaintiff’s attorney’s fees.  In addition, the hospital could be ordered to change its marketing campaign name.  This is in addition to having to be forced to expend additional sums of money in either corrective advertising or adopting a new name and campaign.

The cost of prevention.  A full trademark search, opinion letter, and filing of the trademark with the USPTO would have been approximately $2,500.00.   If the total health marketing campaign spend was $500,000, this would have been approximately .5% of the overall budget.

The Lesson.   Healthcare brands are under increasing competition, particularly among local hospitals and clinics.  That is why marketing compliance training is becoming more and more important.   Before you or your team adopt a new name for a health marketing campaign, hospital name, or branded community outreach effort, it is advisable to conduct a full trademark search.

To discuss your healthcare branding needs, feel free to contact the author to discuss your options for prevention and protection.

The role of health marcom compliance continues to grow in importance in 2019.

The American Marketing Association defines Marcom (or Marketing Communications) as follows:

Marketing communications, or “marcom,” is an all-encompassing term, as it covers marketing practices and tactics including advertising, branding, graphic design, promotion, publicity, public relations and more.

A trend fueling the rising interest in health legal compliance and training?  The risk of lawsuits.

Health Marketing Lawsuits.   Lawsuits involving the offering of health and wellness goods and services continue unabated.   Some areas of concern to health marcom professionals include:

  • Copyright Infringement.  Health marketers often neglect to conduct proper clearance of images, articles, or copy that is owned by third-parties.  The result is often a strict liability situation. The damage?  Even non-willful infringers can be liable for statutory damages of between $750 and $30,000 per infringing copy.
  • Trademark Oppositions.  Trademark Oppositions are contested proceedings before the U.S. Trademark Trial and Appeal Board.  A trademark opposition is typically filed because an applicant did not conduct a proper trademark search and clearance prior to launching its brand or advertising campaign.   A contested trademark opposition proceeding can cost upwards of $80,000 or more in U.S. attorney’s fees.
  • Trademark Infringement.  Unlike trademark oppositions that deal with issues of registration only, actions for trademark infringement are adjudicated before the U.S. federal and state courts.  If a defendant if found liable for infringement, it can be liable for treble damages in exceptional cases as well as attorney’s fees.
  • HIPAA Marketing violations.  The HIPAA Marketing Privacy Rule addresses the use and disclosure of protected health information for marketing purposes.  It does so by defining what is “marketing” under the Rule, as well as requiring individual authorization for all uses or disclosures of PHI for marketing purposes.  There are certain exceptions.   The privacy rule also prohibits covered healthcare providers from selling protected health information to third parties for the third party’s own marketing activities, without authorization.
  • Stark Law violations.  The Stark Law prohibits physicians from making referrals for certain designated health services (DHS) payable by Medicare to an entity to which she or a family member has a financial relationship.  There are numerous DHS examples that apply to this law, including clinical lab services, physical therapy, radiology, and home health services.  Penalties include civil monetary fines of up to $15,000 per service as well as higher penalties for circumvention schemes. In addition, physicians and other entities that are in contravention of the law can forfeit their right to participate in Medicare and Medicaid provider programs.

In 2019 and beyond, health marketers will continue to utilize digital and offline technologies to grow market share.  Implementing health marcom compliance training will help to mitigate risks associated with promoting healthcare goods and services.

Joel English, Managing Partner at BVK, presented further insight on health brand architecture at the SHSMD annual conference last week in Seattle.

Brand architecture defined.  Brand architecture is how all the pieces of a brand and its value promise fits together.  Healthcare brands can include many brands components.  Joel provided the following example of a fictitious health brand ecosystem:

  • Driver Brands:  Anchor University Hospital – part of True Health
  • Strategic Brands: Anchor Medical Group
  • Endorser Role: True Health
  • Silver Bullet:  Anchor Burn Care
  • Sub Brands:  Anchor Health Plan;  Anchor Visiting Nurses

Types of brand architecture.

  • Branded House.  The main, driver brand that drives other brand business units.  An example is Virgin and Virgin Mobile.
  • Hybrid Brands.   Both the main (endorser) brand and the sub brand play a driver role.  An example is Marriott, which has Residence Inn (by Marriott) and Courtyard (by Marriott).
  • House of Brands.   A house of brands is where there is an umbrella brand that owns several subordinate, individual brands.  An example is Unilever and all of its various consumer brands.

No matter what brand architecture is selected, it is advisable for health care systems and providers to take the following steps as an integral part of its naming taxonomy.

Trademark clearance.   For all names, slogans, and logos that will be used, a full trademark search should be conducted.  A proper search includes a search of the USPTO records as well as common law, unregistered third-party uses.  Why?  Because under U.S. law, trademark rights vest at use, not registration.  Therefore, a competitor could sue you for trademark infringement based on a federal registration or its own unregistered trademark use.

Apply for registration.   A determination should be made whether the trademarks to be adopted or used constitute protectable trademark matter.  If a qualified trademark attorney determines this is the case and that the search revealed no problematic third-party trademarks, then a federal trademark application should be prepared and filed.   Note that U.S. applications may be based on either existing use or a bona-fide intention to use in situations where the trademark and associated goods or services are still in development. 

Develop Brand Usage Guidelines.   Proper brand usage guidelines serve two purposes:  brand uniformity and legal protection and compliance.   Both are equally important to the well-being of a healthcare brand.

Editor’s Note:  To discuss brand clearance and protection for your health care brands, you may contact James Hastings at Collen.

The SHSMD annual conference continues with a great health brand communications presentation by Joel English, Managing Partner of BVK.  Joel succinctly shared the most important thing that every health marketer should know:

The valuation of a healthcare system’s brand is the highest asset on its balance sheet.

Here are some things to remember in protecting the integrity of your healthcare brand:

Health brands are goodwill.  Your health brand is an intangible asset. In the healthcare context, a brand includes health system and facility names, marketing campaign names, slogans, and logos.  It also includes marketing copy, images, and proprietary research, products and services.  A healthy brand is the result of cumulative goodwill cultivated at great cost and expense to an organization.

Health brands can be injured.   Healthcare brands, like other brands, are not immune to damage.  In the health marketing context, this often is the result of failure to follow HIPAA marketing rules, trademark and copyright clearance, or making unsubstantiated advertising claims.  So damage to a health brand is not just about attorney’s fees and monetary damages; it is about potential injury to your reputation.

Brand Health is your responsibility.   According to Joel, a brand is the responsibility of all members of the healthcare organization; including their outside agencies, and everyone who has contact or who influences an organization’s customers and communities.  Brand is the unified theory of everything; the context of how we act and communicate.

Editor’s Note:  Healthcare brands spends millions of dollars per year on marketing and advertising.  The overall goal of such efforts is to strengthen and differentiate the brand among relevant consumers.  Done right, health brand marketing can result in greater revenue and improved brand equity.  But if healthcare organizations fail to clear brand names or implement HIPAA marketing and related compliance training, their brand equity could quickly suffer from injury to brand reputation.  This is in addition to potential six-or seven figure monetary damages and attorney’s fees that could result from unaddressed marketing risks.

SHSMD 2018 continues with David Marlowe, CEO of Strategic Marketing Concepts, who provided an excellent presentation entitled Healthcare Marketing Plans That Work.

As a former President of SHSMD and health marketing expert and author, he provides practical insight. According to David, a good health marketing plan should include the following elements:

  • Executive Summary.   This is an overview of strategic plan priorities and goals.
  • Market Audit.   These are the key factors that influence the marketing situation facing the healthcare organization, service, or program.  It’s not just about data – its about good information.
  • Market Position.  Who you are and what differentiates your brand from your competitors.
  • Market Strategies.  Proposed strategies and initiatives for next 1-2 years.
  • Market Objectives.  An explanation of what you are trying to achieve as an organization.
  • Market Actions. The specific things you are going to do in the next year.

Here are some of David’s additional observations:

Does your organization have health marketing function policies in place and are they enforced?

  • Marketing is strategy.   Health marketing goals must be integrated into the business plan.  Yet, many healthcare systems and providers do not even include specific marketing goals as part of their formal strategy.
  • Content is what counts.  A health marketing plan needs to involve the entire organization.  The most effective plans are broad and holistic, including operations, management, and financial.   Involve every key internal client when planning.
  • Marketing must be measurable.   The days of wanting to improve brand reputation and visibility are past.  Looking at what is coming and how to prepare for it is one of the purposes of a good marketing plan.

An effective health marketing plan should include marketing compliance employee and vendor training.

Editor’s Note:  The David Marlowe publication, Healthcare Marketing Plans that Work, is now available for purchase at the SHMD Conference or on the SHMD website.

SHSMD 2018 is now under way in Seattle, Washington.

The Society for Healthcare Strategy & Market Development (SHSMD),  is a professional membership group of the American Hospital Association.   The annual conference brings together health marketing and strategic leaders from healthcare systems, providers, and consulting companies nationwide.

This morning’s Healthcare Marketing Credentials session features faculty member Rob Klein of Klein & Partners.  Rob’s company provides health marketing research and customer insight to help his clients make informed marketing decisions.  Two of Rob’s insights emphasized the importance of health marketing compliance in marketing and strategy management:

I care about the health of the brand.  If you make a bad marketing decision, you can lose your job.

Here’s some of our own observations on Rob’s thoughts:

Brand health is legal health.  Great marketing plans do not begin with great ideas alone.  Why?  Because great ideas sometimes put your health marketing efforts at great legal risk.  What do we mean by risk?   Things like:

  • Copyright infringement.  Failure to secure rights to images, or distributing copies of proprietary research or publications without a proper license.
  • Trademark infringement.  Commencing a health marketing campaign with a new brand name or slogan without a proper trademark search, clearance, or registration.
  • Consumer Class actions.   Certain law firms seek-out health marketing violations that are ripe for class action lawsuits.  Marketing violations that can quickly escalate into major law suits include violations of the Telephone Consumer Protection Act (TCPA); HIPAA Marketing Laws; and CAN-SPAM Act.

Take an ounce of [legal] prevention.  The median hospital marketing department annual budget is $3.1 million, according to a survey by Klein & Partners and Greystone.net.  Yet our own observations of marketing compliance practices indicates that very few marketers invest part of their overall budget in brand marketing clearance, protection, and risk-mitigation.  This is despite the fact that failure to properly implement marketing compliance training and programs could result in losses that are equal to or greater than a hospital’s annual marketing budget.   An exaggeration?  Hardly.   Many health care marketers have unfortunately realized such losses through a combination of attorney’s fees, monetary damages, corrective advertising, and injury brand reputation.

Thanks to SHSMD and speakers like Rob Klein for running a great conference.

Marketing Compliance Advisory.   Health marketing compliance training and guidelines should be part of every healthcare marketing plan.  To discuss how to implement one in your organization, contact James Hastings, Editor.