A proper trademark search should be the starting point of any healthcare branding campaign.
A trademark is any name, symbol, or slogan used in connection with the marketing of goods and services. Trademarks, also known as brand names, serve to differentiate the goods and services of one company from those of its competitors. In the marketing of healthcare, trademarks play a vital role in creating value and goodwill for hospitals and related providers. To determine whether a trademark is available for registration and use, the following steps should be followed:
- Conduct a trademark search. A trademark search consists of an examination of the U.S. Patent and Trademark Office records, state trademark registrations, and common law unregistered uses of the proposed mark.
- Review the search results. A qualified trademark attorney should review the search results to determine whether there may be any risks in proceeding. Such dangers may include pre-existing registrations or prior uses that may be confusingly similar to the proposed mark. At this time, it should also be determined whether the desired trademark may be denied registration for other reasons. Examples include that the mark is merely descriptive of the goods or services or that it does not function as a trademark.
- Conduct marketplace investigations. If the trademark search results reveal third-party registrations or uses that are of concern, a discrete marketplace investigation into whether the third-party is currently using the trademark should be undertaken. A good place to start is to review the third-party’s website and publicly available materials to determine the extent and scope of its use.
- Prepare the trademark application. Trademark applications filed with the U.S. Patent and Trademark Office are generally based on either use of the mark in commerce or an intent to use the mark in commerce. An intent to use application is ideal for healthcare providers that are in the brand conception stage and wish to reserve its rights in the trademark prior to launch.
- File and monitor. Once the trademark application is filed, the USPTO will review the application for substantive and procedural requirements. It will also conduct a search of the US Patent and Trademark Office records to determine if there are any grounds to initially refuse registration. If the trademark application is initially refused registration, the applicant can file a response to the Office Action within six months of the initial refusal.
- Establish proof of use. Once the application is approved for registration, it will be published in the Official Gazette of the U.S. Patent and Trademark Office. If no third-party objects to the application within the 30 days for doing so, a notice of allowance will issue. If the application was based on use, it will proceed to registration. If it was based on an intent to use, the applicant must submit a statement of use attaching a specimen of use of the mark on the applied for goods and services. Once the statement of use is accepted, the application will then mature to registration.