The mark has been chosen, the trademark search was clear, and it has been decided that the mark should be registered. The next step in the process is straightforward – file an intent to use (ITU) trademark application.
It is not necessary or recommended to wait until the mark has been used to file the application. An application can be filed based on your bone fide intent to use the mark in the future. The application will not register until after use begins. Once use begins, a separate statement is filed claiming this use. After the application is approved by the Examiner and has been published for opposition, a Notice of Allowance will issue. The applicant then has 6 months to file either a statement of use, or to request a 6-month extension of time. A total of 5 extensions of time can be requested – up to a total of 3 years after the date the Notice of Allowance issues. If use has not begun after the expiration of the 5th extension of time, the application will abandon as a matter of law.
The benefit of filing an ITU application is that once use begins and the application is registered the owner can claim a constructive date of first use as of the filing date of the application. This could add months or years to the start date of your rights. There are some additional costs and filing fees associated with the filing of the use statement and/or extensions of time to file the use statement; however these are offset by the right to claim an earlier starting point for your rights.
After choosing the mark itself, an important part of the registration process is crafting the identification of goods or services. You want the identification to be both broad and specific. If the mark will be used as an overall mark for your entire organization, the identification may be straightforward “hospitals and medical services.” If the mark will be used for a specialized service offering, it may be necessary to develop a more specific identification. Continue Reading
Husch Blackwell welcomed two healthcare associates in recent months.
Jarrod W. Pearson joined our Denver office as a Healthcare Associate with more than four years’ experience practicing healthcare law in Colorado. Jarrod represents hospitals, medical centers, physicians, nurses and others in the industry as they grapple with an evolving compliance and regulatory environment. To read the full release, click here.
Jason Husgen joined our St. Louis, Mo., office as a Healthcare Litigation Associate, where he represents medical professionals, healthcare providers, and pharmaceutical companies in litigation matters and advises them on compliance issues. Prior to joining Husch Blackwell, Jason served as a law clerk for the Hon. Jean C. Hamilton of the U.S. District Court, Eastern District of Missouri. To read the full release, click here.
Welcome, Jarrod and Jason!
Once you have selected a trademark and it has been cleared for use, you should consider filing an application to register the mark with the United States Patent and Trademark Office (USPTO). There are a few questions that might come to mind when this recommendation is made:
Why should I register my trademark?
When should I register a trademark?
Which of my trademarks should I register?
These questions are addressed below.
Why should I register my trademark?
Trademark rights in the United States are, after all, based on use of the mark in commerce and not on registration. A registration is not required to use a mark, obtain rights in a mark, or to sue for trademark infringement. Why then would you spend valuable marketing dollars on obtaining and subsequently maintaining a Federal Trademark Registration? There are a number of good reasons to proceed with a registration.
First, yes – you can obtain common law trademark rights in a mark simply through use. However, your common law rights will be limited to the geographic location where you have had actual use. A trademark registration will automatically expand your rights geographically to include the entire United States, except for any areas where there is a prior user on the day the mark is registered. What does that mean? Continue Reading
The jury in the Tuomey case (U.S. ex rel. Drakeford v. Tuomey Healthcare Systems, Inc.) returned a verdict in favor of the government yesterday, May 8, 2013. As is well known, this is the re-trial of a case centered on a series of employment agreements that Tuomey Healthcare entered to allegedly capture referrals from a number of physicians to the hospital’s ambulatory surgery center. The jury found the hospital liable for violating both the Stark Law and the False Claims Act. The jury further found that 21,730 claims were filed by the hospital in violation of the False Claims Act and the total monetary value of those claims was $39,313,065. Under the False Claims Act, the federal government can recover from $5,500 up to $11,000 per false claim and up to 3 times the monetary value of those claims. That results in potential liability for Tuomey ranging from $119,515,000 to $239,030,000 on the per claim penalty plus up to $117,939,195 under the treble damages provision. In other words, Tuomey faces potential penalties of up to $356,969,195 on this verdict. To put this in perspective, Tuomey Healthcare’s Form 990 for the fiscal year ending September 30, 2011 showed net assets of $123,540,611.
This verdict has significant implications not only for Tuomey Healthcare, but also for the entire healthcare industry. Look for additional posts examining the details of the case and the implications of this decision in the coming weeks. For additional information, please contact David Pursell or Brian Bewley.
You can access the Jury Verdict Form here: Tuomey Verdict.
Mark D. Welker and Scott A. Behrens, Husch Blackwell attorneys in our Employee Benefits and Executive Compensation group, recently addressed key questions employers should ask themselves about Healthcare Reform. Existing guidance in this area is complicated, confusing, and incomplete in many respects. To access the key questions and examples of basic compliance hurdles and planning strategies, click here.
Once a proposed mark has been chosen, it is always a good idea to have your trademark attorney conduct a trademark search. Even you are not aware of any other hospitals or medical centers using the mark that does not mean that there are none. The search will look for marks that are “confusingly similar” to the mark being searched or are likely to cause confusion in the consuming public. We will discuss the concept of confusing similarity and likelihood of confusion in the context of trademark infringement in a later post.
During the searching process there will again be a difference between descriptive or suggestive marks and fanciful or arbitrary marks. The more descriptive the mark the more likely it is already in use in some manner by at least one other company. Many times a descriptive or highly suggestive word or phrase may be in use by several different entities around the country for the same or similar goods or services. Each use may be slightly different, thereby allowing each of them to co-exist. In this case each descriptive mark will have at best a narrow scope of protectability, perhaps limited to the exact mark for your exact services. In some cases, if the mark is being used by several entities, it may be that the mark is also available for your use, but you will not be able to protect that mark from later use by yet another entity. Also, you may be advised that there is risk associated with use of the mark simply due to the number of prior users, any of whom may choose to object to your new use of the mark.
With suggestive marks, the protection is for the mark, or any confusingly similar marks, but not for the “theme” of the mark. For example, a search for the mark “Service with a Heart” for cardiac care services may find several slightly different versions of this mark in use for similar services – You are the Heart of Our Business; Our Nurses Are All Heart; We Will Handle Your Heart with TLC etc. These marks all use the theme of having the word Heart in the mark; but they are not likely to be found to be confusingly similar to each other, even for the same services. Continue Reading
Husch Blackwell attorney Molly Kurt recently addressed this question in a review of cases in which OFCCP has attempted to assert jurisdiction over hospitals as covered federal subcontractors. Most recently, the U.S. District Court for the District of Columbia issued UPMC Braddock et al. v. Harris, in which the district court affirmed the decision of the U.S. Department of Labor’s Administrative Review Board, finding that the hospital is a covered federal subcontractor. The U.S. Department of Labor’s Office of Federal Contract Compliance Programs (OFCCP) enforces Executive Order 11246, which requires equal employment and affirmative action for federal contractors and “covered subcontractors.” Covered subcontractor status attaches when the subcontractor either 1) stands in the shoes of the direct contractor, or 2) provides services that are necessary to the performance of the direct contract. The OFCCP has repeatedly tried to use “covered subcontractor” status to assert jurisdiction over hospitals that provide medical care through a subcontract with a government contractor. UPMC Braddock represents the agency’s latest attempt to broadly define the scope of its jurisdiction.
To learn more about these cases and whether your hospital may be subject to the requirements, you can read the full article here.
Selecting a strong trademark is the key to being able to protect the trademark. As we discussed last week, the first and central step in branding is selecting your facility’s trademarks, which promote a provider’s reputation, helping it stand out among its competition. When choosing a name for a product or service, the inherent strength of mark should be considered, as this will affect many things going forward from the cost of a search to your ability to stop others from using similar names.
There are five categories of marks, each of which comes with its own level of legal protection. From least to most protected, they are:
- GENERIC: Names like “emergency room” or “doctors” – these cannot be trademarked.
- DESCRIPTIVE: Descriptive marks immediately provide information about the service or product. These types of marks can be protected but only if they have acquired distinctiveness through use in commerce. Descriptive marks include laudatory marks (“Best Dental”); geographic marks (“North Shore Hospital”); and surnames (“Williams Orthopedics”).
- SUGGESTIVE: These marks indirectly provide information about the goods and services requiring the consumer to make a mental step or connection to determine what the services are (“Service with a Heart” for a cardiac center; “Papoose” or “Joey” for pediatric services). Suggestive marks are immediately protectable; however the scope of that protection is not as broad as for arbitrary or fanciful marks.
- ARBITRARY: These marks, like “Apple” or “Amazon,” are real words but there is no connection between the words’ meaning and the services or products it is used for. These marks enjoy broad, strong protection.
- FANCIFUL: These marks are made-up words, like “Xerox,” “Google,” or “Viagra,” created specifically to be used to identify the source or origin of certain goods or services. These are the most strongly protected marks.
Hospitals and other healthcare facilities have traditionally been named with geographic designations or with the name of a famous person or in other ways that would be considered “descriptive.” These names, after long years of use are quite likely to have acquired “secondary meaning” so they are now protectable trademarks. Many such marks have become quite famous and will enjoy strong trademark protection despite their humble beginnings. Therefore, the hospital will have the ability to police and control use by competitors of similar names. However, it is unlikely that the hospital will be able to control all use of the descriptive elements of its name and trademark.
On April 16, in a win for Purdue Pharma, the maker of OxyContin, the FDA issued a decision approving updated labeling for Purdue’s reformulated, abuse-resistant OxyContin tablets. The decision places drug makers on notice that the FDA will not accept or approve any abbreviated new drug applications (generics) that rely upon the agency’s December 1995 approval of Purdue’s original OxyContin formulation.
The FDA’s decision was issued just as Purdue was set to lose its patent on the original formulation of OxyContin. Loss of this patent would have opened the opioid-painkiller market to competition from generic drug makers. But now, going forward, new applications for generic “copycat” forms of the drug must meet Purdue’s approved, abuse-resistant standard, without infringing upon Purdue’s patent for reformulated OxyContin, which lasts until 2025.
Concern over abuse of the well-known painkiller was central to the FDA’s decision. The agency explained, in a press release accompanying its decision: Purdue’s “labeling indicates that the [reformulated] product has physical and chemical properties that are expected to make abuse via injection difficult and to reduce abuse via the intranasal route (snorting).” The press release further stated that: The original formulation of OxyContin “was abused, often following manipulation intended to defeat its extended-release properties. Such manipulation causes the drug to be released more rapidly, which increases the risk of serious adverse events, including overdose and death.”
According to the New York Times, the FDA’s decision was pushed by some state attorneys general, as well as pain treatment experts, who argued that the release of generic versions of OxyContin would feed street demand for the narcotic. Critics, however, have argued that the decision will result in higher prices for OxyContin, as the reformulated drug will not face generic competition. Continue Reading
“Branding” is one of the most popular buzz words in the advertising and marketing arena. But what does it mean to have a “brand” and what should you be willing to do to create and maintain your “brand”? In today’s technology-driven economy, even the local hospital and primary care physician’s office have to compete for business. Therefore a provider’s ”brand” and its brand strategy should be viewed as an investment in the provider’s public image and reputation. Further, the importance of a coherent and consist brand message and brand strategy in the provider’s success should not be undervalued or ignored.
A complete branding strategy involves a number of considerations and requires communication and coordination between hospital management and administrative personnel, the marketing department, and legal counsel. This post is the first in a series on branding strategies for healthcare facilities, and we will address these various considerations over the next weeks.
The first and central step in branding is selecting your facility’s trademarks. Trademarks are the name(s), phrase(s), and/or logo(s) that identify and represent your facility, its services, and mission to the public and are the foundation for the facility’s overall branding and marketing strategy. Selection of the hospital’s trademarks and logo should be guided by the vision of the hospital, its mission, and/or its value statement.
In addition to the main name of a facility, which may not have been changed in many years, a hospital or other facility may use trademarks for specific services areas or to promote an area of expertise. When choosing a trademark for a specific service, consider the demographics of the potential consumers for the service. For example, the trademark and logos used for the hospital pediatric services might be different than one used for its senior care services.
Our Insight. Your Advantage. A strong trademark acts to promote a provider’s reputation, helping it stand out among its competition. Without a distinct and recognizable trademark, even the most extensive marketing plan will have little chance of separating your facility and its services from the competition. Healthcare providers should evaluate new and existing trademarks for both a provider’s main facility and other distinct service lines to ensure that the trademarks are providing a strong foundation for the provider’s overall branding and marketing strategy.
Here are the other installments in this series: