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.

This is part of a continuing series on health trademark compliance and training.  This installment reviews trademark basics and clearance considerations.

Many healthcare systems and providers still lack a basic understanding of how health trademarks are cleared, approved, and registered.  The root cause if often the failure of employee education and compliance training.   When health providers fail to properly clear the use or registration of a trademark before commencing such use, the risk to the organization almost always increases.  Here are some important things to remember.

Trademark Definitions.  A trademark is any word or symbol used to distinguish the goods or services of one party from those of another party.  A “service mark” is a trademark that is used exclusively in connection with services.  For example, CVS HEALTH may be a service mark for health and wellness education and a trademark for contact lens solution. Examples of trademarks that are eligible for protection include:

  1.   Word marks.  Word marks (without any logo or design element) often provide the broadest trademark protection.  This is because word marks can be used together with various logo or font variations at the brand owner’s discretion.  Examples include Anthem, Cleveland Clinic, Cardinal Health, and Johnson & Johnson.  When launching a new health product or service, it is often advisable to seek registration of the word mark alone in addition the word mark and combined design logo.
  2.   Logos.  Design marks are commonly referred to as logos.  These can be registered either alone (without any words) or in combination with the brand name to which it is associated.  Trademarks that incorporate logos can either be filed in black and white or in color.  Of the two, black and white affords the broadest trademark protection.
  3.   Slogans. Taglines and slogans are considered to be trademarks.  Like other forms of trademarks, taglines and slogans may be registered so long as they are not merely descriptive, generic, or cannot function as a trademark.

Trademark Search Advisory.  Prior to adopting a trademark for any goods, services, or marketing campaign, it is advisable to conduct a full search of the U.S. Patent and Trademark Office records and common law listings to determine the availability of the trademark for registration and use.  Once the trademark search is performed, it should be reviewed by a qualified health trademark attorney.  The attorney should provide a written opinion as to whether the proposed trademark is available for use and registration.   If the search results indicate a potential likelihood of confusion with a third-party trademark, then alternatives should be suggested on how to best mitigate any additional risks.

Over 3,000 trademark oppositions are filed every year with the US Trademark Trial and Appeal Board.  Many of these oppositions involve applications for health trademark products and services.  Knowing how the trademark application process works can help healthcare providers determine how to best ensure that their selected trademark will be available for use and registration.

Trademark Examination Basics.   All trademark applications filed with the United States Patent and Trademark Office (USPTO) are assigned to a Trademark Examining Attorney.  The Examiner will review the application for procedural and substantive requirements.  As part of the examination process, the Examiner will also conduct a search of the USPTO records to determine if there are any existing trademark registrations that may be deemed to be confusingly similar to the applicant’s mark.   Assuming the application has met all filing criteria and there are no problematic registrations of record, the Examiner will approve the application for publication.  Once published, any third-party who believes that it could be injured by issuance of the registration can oppose the trademark application.

Trademark Opposition Rules.   Trademark Oppositions are heard before the US Trademark Trial and Appeal Board (TTAB) the adjudicative body of the USPTO.   The various stages of a trademark opposition proceeding consist of the following:

  1. Notice of Opposition.   An opposition proceeding is commenced by filing a Notice of Opposition that sets forth the grounds for the opposition.  In cases where a likelihood of confusion is alleged, the Opposer must establish that it has standing and priority rights.
  2.  Answer.   Within 40 days of being served with the Notice of Opposition, the Applicant must file an answer.  The answer generally denies all relevant allegations contained in the notice of opposition and often included affirmative defenses.
  3.  Discovery.   After the answer is filed, the discovery phase of the proceeding commences.  This may include interrogatories, request for production of documents, and depositions.  The goal of discovery is for the parties’ to gather information and documents that would support their claims and defenses.  An effective discovery strategy can narrow the issues for trial and possibly lead to a motion for summary judgment should there be no genuine issues of material fact for the Trademark Board to consider.
  4.  Trial.   TTAB trials are conducted via written submissions, although either party has the right to request oral argument.   Submissions include a Notice of Reliance, Testimony (by way of depositions or declarations), and trial briefs.  The Board will thereafter render a written decision either granting the opposition or dismissing it.  If an opposition is upheld, then the Applicant will be refused registration.

Health Marketer Tips:  Trademark oppositions are very expensive and may present a high risk to your brand. To avoid the risk of a trademark opposition, it is highly advisable to have a trademark attorney conduct a full trademark search prior to launching a new healthcare product or service.

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.

  1.   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.
  2.  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.
  3.   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.
  4.  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.
  5.   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.

Healthcare trademarks are everywhere, encompassing a wide-range of products and services.  For healthcare providers and sellers of health and wellness solutions, knowing how the trademark system classification works may be useful.

To apply to register a trademark in the United States and elsewhere, it is necessary to list the goods or services on which you either intend to use the mark or are currently using the mark.  A list of acceptable goods and services may be found in the Nice Classification, an international classification of goods and services that is used for the registration of trademarks.

The following Nice classification classes are used to designate health products and services:

Health and Wellness Goods 

Class 3.  Personal care and beauty products, including skincare, shampoos, and cosmetics

Class 5.  Nutrition and dietary supplements

Class 9.  Software, including digital health apps, medical software, and other healthcare related software

Class 16.  Printed publications used in the field of healthcare

Class 25.  Fitness apparel, running shoes, gym bags

Class 28.   Sporting equipment, including treadmills, exercise bikes, and aerobic gear

Class 29.  dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; oils and fats for food.

Class 30.  Coffee, tea; flour and preparations made from cereals; bread, pastries and confectionery; edible ices; vinegar, sauces, condiments, and spices

Class 31.   Raw and unprocessed grains and seeds; fresh fruits and vegetables

Class 32.   Beverages, including health and energy beverages

Health and Wellness Services

Class 35.   Business management in the field of health, hospital administration, mail order of pharmaceuticals

Class 36.  Health insurance, long-term care insurance, pharmacy benefit management services

Class 41.  Health education and training, including health marketing compliance training

Class 44.   Healthcare services such as hospitals, home health, medical services, and urgent care

The above list is illustrative and non-comprehensive.  Within each class, there are many goods and services that may be health and wellness related.

Recommendation:  Prior to filing a health trademark application, a full trademark search should be conducted by a qualified trademark and marketing attorney.  This should be part of an ongoing healthcare marketing compliance strategy.  To learn how to get started, contact the author.