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.

The trademark protection of health brands is often overlooked by health providers and marketers of health and wellness solutions. Trademarks are any name, slogan, or symbol used to distinguish the goods or services of a company.   In the health products and services sectors, trademarks are searched, approved, and registered for a wide-variety of products and services, including:

Healthcare

  • Hospitals
  • Health Systems
  • Urgent Care Clinics
  • Digital Health Apps
  • Physician Networks
  • Medical supplies
  • Pharmacies
  • Counseling
  • Chiropractors
  • Alternative health
  • Health Financing
  • Health Insurance
  • Long Term Care
  • Home Care

Health And Wellness Products

  • Vitamins and supplements
  • Food and Beverages
  • Personal Care
  • Beauty
  • Aromatherapy
  • Books and publications
  • Athletic Wear and Apparel
  • Athletic Equipment
  • Fitness Centers
  • Spiritual wellness
  • Travel
  • Occupational wellness, including ergonomic solutions
  • Environmental wellness
  • Home appliances

In each of the above examples, trademarks play a vital role in ensuring the company’s own health and well-being.  Trademark clearance and registration of health brands is the first step when considering the launch of new products or services.   Here’s why:

Brand name protection.  Each year, health providers invest millions of dollars into the development and promotion of their brands.  Quite often, brand owners fail to properly secure and register its trademarks.  The result is that in certain cases, the selected trademark could be susceptible to possible infringement or dilution by competitors.  When this happens, not only does the value of the brand diminish, but legal expenses increase due to the necessity to enforce the company’s trademark rights.

Business Risk and Infringement.  Trademark infringement occurs when a trademark of a junior user is confusingly similar to that of a senior user for the same or highly related goods or services.   Claims of trademark infringement can often be avoided through a proper trademark search and registration process.

Business Disruption.   When a company is accused of trademark infringement, one of the unfortunate results is that it may be forced to cease use of the allegedly infringing name.  In the healthcare field, this may also include the necessity of destroying product or service lines that feature the name.  Examples may include on-site signage, printed marketing and promotional materials, and employee-facing training materials.

Recommendations:   If your company does not have a trademark clearance and registration process in place it is not too late to start.   For further information about trademark protection of health brands, feel free to contact the author.