5 Steps to Obtain a Trademark for the Name of a Medical Practice

By Josh Gerben, Esq.

As a service provider in the medical industry, your name and reputation are likely to go a long way toward the success of your practice. A trademark can help you protect the integrity of both of those things by ensuring that you’re the only person, group, or organization that can use that name. A trademark is your best protection against inadvertent confusion with another medical practice or doctor’s office, as well as against purposeful attempts by other health care providers to trade on your good name. Moreover, registering your trademark with the United States Patent & Trademark Office is a safeguard for you against accidentally infringing on an existing mark – a situation where you would need to then change the name of your practice and lose any good will that it had acquired. Although the government affords some trademark protection simply on the basis of use, it’s in your best interest to register your mark with the USPTO, for that reason, and several others. Let’s look at the trademark process and what protections you get.

Select a name

Once you make the decision to establish your own medical practice (on your own or as a group), you’ll want to decide on a name. Steer clear of names considered generic in the medical industry, and try to go beyond a name that merely describes your practice (e.g. Philadelphia Cardiology Group).  You want it to be clear what your practice does, but you also want a level of distinction and uniqueness to your name – it’ll stand a much better chance of obtaining a meaningful trademark registration. The use of a last name is acceptable, and, should still be protected with a trademark. filing.  Too many times a professional such as a doctor assumes that because he or she is using their given name that they would not be infringing on someone else’s trademark, or, that they do not need to obtain a trademark registration.

Research the desired name of your medical practice

As mentioned above, a key part of the trademark process is ensuring that you’re not infringing on an already-registered mark of another doctor or medical practice. It’s a time consuming process, but it’s to your great benefit – changing the name of a business once it’s already involved in commerce is inconvenient and can be detrimental to your success. The research process involves checking the USPTO Principal Register for medical service providers of any type – not just your specific area of practice – including names that may sound or look similar to yours. The key thing to remember about trademarks are that they’re intended to prevent confusion, so you’ll need to go beyond just looking for exact matches. You’ll also need to make sure that there aren’t existing practices that aren’t registered with the USPTO – they’ll still be protected, provided they were doing business first.

Retain a trademark attorney

A trademark attorney with experience researching and successfully registering marks can be a great help in the research process – and in getting your application successfully through. The USPTO offers a public research tool through its website, but it’s not much stronger than a standard search engine – it won’t help you find those similarly-named medical practices that can cause your application to be denied. Trademark attorneys with a track record of success will have access to much more powerful tools with search capabilities designed to filter through marks the way the USPTO examining attorney will, once you submit your application. They’ll be able to look for things like differences in spacing of words, spelling similarities, and any of the other small differences that can be major problems in your trademark application if they should arise.

File your trademark application

Once you have satisfactorily determined that the medical practice name you wish to trademark will have a good chance of being deemed acceptable, it’s time to do the paperwork. You can get an application from the USPTO website, and it’s critically important to fill it out completely and accurately. This is another area where a trademark attorney can assist to give you a better chance of success, and to help the process move along efficiently. One of the biggest reasons that a trademark application will be held up or returned to you for clarification is errors or omissions on the application.

Follow up on your trademark 

After you file your trademark application, you can expect to wait six to eight months for it to be approved (and it’ll likely be at the longer end of that). This allows time for your application to move through the USPTO queue (which gets tens of thousands of applications each month) and undergo a thorough research process by an examining attorney, who will check for any potential conflicts with existing marks. But once that process is done, you’ll have an approved trademark for your medical practice. Up until approval, you can include the small letters “SM” (for “service mark”) after your name, and once it’s approved, you’ll use the small circled “R” to indicate a registered trademark. This acts as an additional protection against future infringements – it serves as notice that you’ve gone through the trademarking process. You will want to stay aware of any potential infringements that come up, purposefully or not, and notify either the infringing party, the USPTO, or both, in order to put a stop to it and enjoy the full protections of your registered trademark.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.