Health trademarks are of vital importance to the value of healthcare brands. A recent study by Healthcare Global revealed that CVS Health was ranked the top healthcare brand in the United States based on revenue, with annual sales of $139.4 billion. Yet the availability of a health trademark for registration and use is never guaranteed. It is therefore surprising that numerous U.S. health and wellness providers fail to properly conduct a trademark clearance search prior to launching a new product or service that could be worth millions of dollars in revenue.
The United States Patent and Trademark Office recommends conducting a trademark search of existing trademarks prior to filing a trademark application.
This is how the trademark application search and application process generally works.
- Trademark search. A trademark search of the USPTO database is the first-step to determine whether a mark is available for registration and use. The search should consist of existing federal trademark applications and registrations as well as common law listings of unregistered marks that are not contained in the USPTO records.
- Trademark clearance letter. After the search is conducted, a qualified trademark attorney should review the search results for, among other things, whether the desired trademark is confusingly similar to any preexisting registrations or third-party uses. The attorney should then create a written opinion setting forth whether the proposed trademark is available for use and registration. The opinion should make recommendations on the business risk of proceeding or not proceeding. If the risk is too great, then an alternative trademark should be considered.
- Prepare and file application. Once trademark clearance is performed, the trademark application should be prepared and filed with the USPTO. Applications may be based on either use of the trademark in commerce, or if is not yet being used, an intent to use the mark. The application must comply with all other requirements, including a statement that the applicant is the rightful owner of the mark and that it does not believe that any other party has the right to use the proposed trademark.
- Trademark examination process. Every trademark application is assigned to an Examining Attorney in the USPTO. The Examiner will conduct a search of prior applications and registrations contained in the USPTO database. The Examiner will also review the application for additional procedural and substantive requirements, and may initially refuse the application based on a likelihood of confusion with a preexisting trademark application or registration.
- Additional requirements. If the Examiner initially refuses the application, the trademark attorney can submit arguments against the grounds for refusal and request that the registration issue. If the application is not refused and all other requirements are fulfilled, then the trademark will issue in due course. Each trademark registration has a term of ten years, with subsequent ten year renewal periods should all statutory requirements be met. In addition, the trademark owner will be required to file an affidavit showing continued use of the trademark in commerce between the fifth and sixth year post-registration.
Editor’s Note: A full trademark search and clearance opinion letter should be part of an overall health brand risk and compliance program. To discuss how to develop a plan, or to conduct a health trademark search, please contact the author.