An effective trademark compliance policy may be good for your health.

Each year, healthcare providers are named unwitting defendants in trademark infringement suits in the U.S. district courts.  The same holds true for trademark opposition and cancellation proceedings brought before the U.S. Trademark Trial and Appeal Board.  So what is the good news?  Many lawsuits can be avoided through proper education and trademark compliance training.

By way of example, the National Institute of Health (NIH) has written trademark compliance policies and guidelines for its employees.  This U.S. government agency knows the importance of trademark rights and how to protect its vast array of brand names used in connection with its various services.  Equally important is its awareness of the risks that trademark infringement can bring, including disruption to public marketing and promotional initiatives.

So if you’re a health system or other healthcare provider, it’s a good idea to implement a trademark education and compliance program for employees.  General areas that should be included in a trademark compliance program are:

  • trademark definitions and concepts
  • explanation of the trademark clearance process
  • how to search, clear, and apply to register trademarks
  • trademark use guidelines
  • what is trademark fair use and what is not
  • employee roles, responsibilities, and procedure
  • creative and marketing vendor responsibilities and procedures
  • trademark usage in digital marketing, including paid search

In addition to the above, annual risk and compliance training should take place with all employees and key vendors that have responsibility for brand assets, marketing, and promotions.  Health systems literally spend millions of dollars a year in brand marketing and promotional efforts.  Making brand compliance an integral part of your compliance and risk strategy can help protect your valuable brand investments and mitigate your risks.

An ounce of prevention is indeed worth a pound of cure.

Editor’s Note:   To discuss your trademark compliance policy or how to design and implement one, please contact us.  

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.

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:

  1.  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.
  2.  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.
  3.  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.
  4.   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.
  5.   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.
  6.   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.