How to Protect Your Trademark in the Health Care Industry

By Josh Gerben, Esq.

The health care industry is one of the fastest growing industries in the world. There is always a need for quality medical care and the industry is getting more and more crowded with new companies trying to make a splash and old companies trying to make sure that they are not getting ‘crowded out’ of the marketplace. If you have decided to go into the health care industry and start your own company, you should make sure that your company name and any product or service names are protected by a federally registered trademark.

Why is a trademark important to a health care industry professional?

You can have the highest-quality products or services anywhere in the United States, but if you are not effectively marketing, then potential clients and their families will never hear of you and it will be extremely difficult to grow your business. Effective marketing takes time, talent, and money and one aspect of marketing is creating a “brand” for your business that will catch potential clients’ eyes and will be memorable in the long term.

This is where trademarks come in. A trademark is anything that represents your business. Traditionally, we think of business names (“Johnson & Johnson”), logos (“the Red Cross logo”) and slogans, but trademarks can also be the “look and feel” of your website, a sound, or even, in some cases a color. Trademarks represent the quality of your business, your customer service, and your business’s overall ethos. From a practical standpoint, your trademark is also how customers will find you and what they’ll refer to you as when telling others about your services.

Trademark law protects a trademark owner from the use of a confusingly similar trademark for related goods and services. This means that once you’ve established trademark rights in a word or phrase, a competitor would not be able to use a confusingly similar name to yours. This allows you to spend the money marketing and promoting your company without worrying about a competitor benefiting from your hard work.

What if someone is already using my name for similar services?

If someone is already using a distinctive name that is similar to the one you want to use for similar services, then it is possible that they can stop you from using or registering your trademark with the United States Patent and Trademark Office.

For example, let’s say you developed your trademark “Eden’s Helping Hands” for home health care services. You invest thousands of dollars into a website and advertising to get your business started. Within the three months, you are wildly successful, have clients in more than one state and have inquiries about franchising from investors. However, if you did not do a comprehensive search and analysis of the trademark, then you may be at a significant risk of liability.

Let’s say that a home nursing program “Eden Nursing” has been using the trademark for several years and has a federal registration in the word “Eden Nursing.” They see your advertising and send you a cease-and-desist letter, demanding that you stop all use of the “Eden” mark immediately. They would be in a strong legal position to enforce their trademark rights against you, as they likely have prior rights in the word “Eden” that are superior to your own. This means that you may have wasted thousands of dollars in advertising, be forced to select a new name, deal with legal fees, and potentially deal with soured investors who do not want to invest in a company who may have legal troubles looming over the company’s head.

While this is merely a fictional example, there are multiple examples in the healthcare industry of trademark disputes. For example, in 2013, an eye doctor’s office became entangled in a dispute with Bausch & Lomb over use of the phrase “See Better Live Better” and BlueCross BlueShield regularly challenges the use of blue crosses and shields in the medical and insurance industries. In 2014, defendants in a trademark infringement case were forced to stop using the name “Hospice Fund of America” for hospice care. The disputes likely cost the companies tens of thousands, maybe even hundreds of thousands of dollars to deal with, emphasizing the need to know what is already out there and to seek federal protection for your trademark.

It is essential for business owners to know the risks of using certain words or phrases as the name of their business and the only real way to analyze the potential risks is through a comprehensive search and trademark analysis conducted by a trademark attorney. The search will look for any trademark that is similar in sight, sound, meaning or overall commercial impression to the trademark you would like to use for related goods and services. An exact search of your trademark is not enough to analyze your potential risk. For example, if your trademark was BLEU SHIELD and you typed that into the USPTO’s TESS database, you would get a message saying:

“No TESS records were found to match the criteria of your query.”

An experienced trademark attorney would know that BLEU SHIELD is phonetically identical to BLUE SHIELD, and would do a search based on that (in addition to other BLUE, BLEU, and SHIELD marks), in order to give a legal opinion on the trademark’s potential risks.

Once a trademark search is completed, then, if you accept the inherent risks, then you should register your trademark with the USPTO. You can register your trademark for specific goods and services in 47 different “classes” or general categories. This is another place where your personalized legal strategy is important. Draft the ID too narrow, you may open the door for a somewhat distant competitor to register and use a similar trademark for similar goods. For example, let’s say you are an in-home nursing provider who also provides family counseling services for the loved ones of an elderly client. If you only apply for “in-home nursing services” then it’s possible that someone else may register a similar name for, say, “counseling services,” if you aren’t closely monitoring the USPTO. However, if you draft your list of goods and services too broadly, you may get rejected for being too vague, or you may unintentionally open your application up to comparison with goods and services that are not related to your core nursing services, resulting in a rejection from the USPTO. Either way, it is important to have a strong strategy for drafting the goods and services in the application.

Once you apply, it is a nine-month process for the USPTO to review your application and register the trademark. However, once you apply, your application will be reviewed before anyone else who applies after you. This is called your “federal priority date.” There are also certain milestones in the process. Within 3-4 months, the USPTO government attorney will review your application and provide its decision (or ask additional questions) on whether it approves your registration. Within 3-4 months after that, you will know if any third-parties are opposing your application for registration. Finally, in 3-4 months, if everything is approved, then your registration will issue.

What is required after a trademark registration is obtained?

Trademark registration is just the start of an ongoing process towards protecting and maintaining your trademark. If third-parties begin using similar names to yours for related goods and services, the strength of your trademark decreases and the scope of your protection gets more narrow. If you are not actively monitoring the marketplace and the USPTO database, then you could suddenly find yourself having a difficult time protecting your trademark against third-party use.

From a business perspective, damage to a trademark can be “irreparable.” If your work van breaks down, you may lose money, but ultimately you won’t likely suffer permanent harm. But imagine someone has a bad experience with a nursing home, for example, that has a similar name to yours. If they tell their friends about the bad experience, or post bad reviews online, then it could be mistaken for you. You would have no control over your brand and it would be almost impossible to repair the harm done.

Once you obtain a trademark registration, you should monitor the marketplace (and the USPTO database) to ensure that no one else has started using a similar name that is likely to cause confusion. If you find similar trademarks, make sure to discuss the matter with an attorney for an enforcement plan that makes sense with your specific matter and your budget.

Conclusion

Trademarks are a business’s public face and are the short-hand for all aspects of the business in the minds of consumers. Especially in a competitive industry like the health care industry, an effective trademark can make the difference between a slow, failing businesses and a growing, vibrant business. If you opened a health-care business or are planning to open one, you should evaluate, register and protect your trademark to protect your valuable intellectual property. An experienced trademark attorney can provide a protection and enforcement plan that fits with your health-care company’s needs and budget.

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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.