The business of medicine has changed over the past few decades and now, with the widespread use of social media by medical and dental practices, branding is more important than ever. I have several clients with fantastic and creative names and logos which they widely promote across the country.
When choosing a name for a practice, many physicians use the internet to check name availability or ask their lawyer or accountant to check the name database of the Secretary of State (or equivalent agency) for the state in which they are located.
Unfortunately, this type of search for a name and/or logo may be insufficient. I frequently have clients who receive demands from third parties to cease using a name or logo deemed to be infringing on the rights of another party after they have invested a substantial amount in their branding. This is usually for more “creative” names as opposed to generic names.
Even clients that use a marketing or branding consultant cannot assume that their chosen name or logo is risk-free. The cost for a practice to completely rebrand if they lose (or realize they are going to lose after consulting counsel) can be significant, so it is best to minimize this risk when possible. This means that a search of the Principal Register of US trademarks is recommended when choosing a name, ideally by someone who is familiar with these searches.
If your practice is thinking of a new name, logo, or slogan, it is important to consider federal vs state trademark registration. In general, the best way to protect your practice’s brand is to register the name, logo, and slogan. However, in the United States, you are not required to register your trademarks to obtain protectable rights. You can also establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration.
However, owning a trademark registration does provide a number of benefits, especially if someone tries to use the same or similar mark later or tries to challenge your use of the mark. A federal registration provides a practice with a nationwide right to exclusive use. To the extent that there may be common law users in different states, federal registration could protect expansion of the registrant’s business. In theory, a federal trademark is also a bar to anyone who comes after the practice and tries to use the same mark or a mark that is too similar.
The benefits of federal trademark registration over common law rights alone include:
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A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration
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Public notice of your claim of ownership of the mark
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The ability to record the US registration with US Customs and Border Protection to prevent importation of infringing foreign goods
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The ability to bring an action concerning the mark in federal court
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The right to seek treble (3x) damages in certain cases
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Use of the US registration as a basis to obtain registration in foreign countries
A practice may also seek state registration in a state where it is using the trademark. The cost is usually reasonable, and the process is quick. However, this registration does not protect against use by others in states where the practice does not operate, so a state registration can be a shortsighted choice for practices that may wish to expand or have a national presence on social media. It also will not protect against a claimant with a federal trademark for the same (or similar enough) name or logo.
Practices that elect to adopt a name or mark that they know or suspect another party may have some rights to are always taking a risk. Any knowledge of a senior user’s rights in a trademark prevents any “good faith adoption” defense. In addition, practices that assume an out-of-state user will not care if it adopts the same or similar name may regret that assumption, especially given the widespread use of social media and the growing expansion of many practices across state lines.
It is true that many competitors adopt similar marks in markets that are geographically remote from one another. In this case, the “first in time is first in right” axiom will usually hold. Each party is free to use the trademark until there is a “likelihood” of confusion (actual confusion is not necessary for a party to enforce its rights). Still, being a practice on the losing side of that argument can be expensive and should be avoided whenever possible.
When choosing a practice name or logo, it is ideal to take the time (and spend the money) to check on name availability. Consulting with a trademark attorney in advance is more cost-effective than fighting a legal battle down the road over the practice’s name.
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About Ericka Adler
Ericka L. Adler, JD, LL.M, is a shareholder and health law practice group manager for Chicago-based law firm
Roetzel. She has nearly 25 years representing individual providers, physician groups, and other healthcare entities, focusing on regulatory and transactional healthcare law. Adler is also skilled in compliance counseling, handling mergers, sales and acquisitions of healthcare entities, and has deep experience with Stark, Anti-Kickback Statute, and other challenges facing healthcare professionals.
She also works with providers in HIPAA, fraud and abuse, billing audits, government investigations, and contract disputes.