Physicians

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?

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

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.

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:

  1. GENERIC: Names like “emergency room” or “doctors” – these cannot be trademarked.
  2. 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”).
  3.  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.
  4.  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.
  5.  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.

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The Departments of Justice and Health and Human Services released a report last week showing that the government has achieved the highest return on investment in the 16-year history of the Health Care Fraud and Abuse (HCFAC) Program.  According to the report, for every dollar spent on healthcare-related fraud and abuse investigations in the last three years, the government recovered $7.90.

The government recovered $4.2 billion from healthcare fraud enforcement efforts in FY 2012, up from $4.1 billion in FY 2011.  The government continues to focus on reducing fraud and waste in the healthcare system.

“This was a record-breaking year for the Departments of Justice and Health and Human Services in our collaborative effort to crack down on health care fraud and protect valuable taxpayer dollars,” said Attorney General Holder.　 “In the past fiscal year, our relentless pursuit of health care fraud resulted in the disruption of an array of sophisticated fraud schemes and the recovery of more taxpayer dollars than ever before.　 This report demonstrates our serious commitment to prosecuting health care fraud and safeguarding our world-class health care programs from abuse.”

The government also touted the use of fraud-fighting tools authorized by the Affordable Care Act including enhanced screenings and enrollment requirements, increased data sharing across the government, expanded recovery efforts for overpayments and greater oversight of private insurance abuses.  Screening of all 1.5 million Medicare-enrolled providers through the new Automated Provider Screening system began in FY 2012.  The report states that nearly 150,000 ineligible providers have already been eliminated from Medicare’s billing system.