Look Before You Leap: Why You Need To Conduct a Thorough Trademark Search Before Building Your Practice's Brand
Your dental practice isn’t the only one in town, far from it. In order to start, build, or grow your practice, you need to distinguish it from all of the other options that potential patients may be considering. You can provide the best patient experience, offer the best dental care, and ask existing patients to sing your praises on review sites or elsewhere. All of these are, of course, foundational for any successful practice. But if you truly want to raise your practice’s profile and build awareness among consumers, establishing a distinct, creative, and memorable “brand” is indispensable. And the centerpieces of any brand are a name and/or a logo, both of which constitute trademarks.
For a dental practice, a strong trademarked name or logo can become one of its most valuable assets. But if you aren’t careful when branding your practice, and your brand is substantially similar to an existing trademark held by another practice or even a business in a separate field, that valuable asset can quickly become a costly liability.
Imagine that you’ve invested thousands of dollars and hours building consumer knowledge of your practice’s brand only to discover that your name or logo is substantially similar to a name or logo another practice in your area has been using for years. Not only may you lose your rights to use your name and logo, but you will also have to spend significant sums defending yourself from infringement claims and may even have to pay damages to the aggrieved party. This is why it is so important to first invest in due diligence, such as a complete trademark search, before proceeding with any branding effort.
Conversely, you wouldn’t want another practice infringing upon or diluting the strength of your established trademark by using the same or similar marks for their practice. By conducting a full trademark search before you adopt a brand and then registering your marks with the U.S. Patent and Trademark Office (USPTO), you can both avoid infringing on someone else’s mark and take advantage of the significant legal rights, protections, and remedies provided to owners of registered marks.
Trademark Registration and “Likelihood of Confusion”
Along with patents, copyrights, and trade secrets, trademarks are a form of intellectual property. Trademarks such as company and product names, logos, slogans, and taglines identify and distinguish businesses, goods, and services from others in the marketplace.
Like any valuable asset, a trademark requires protection to preserve its value and prevent others from exploiting, damaging, or diminishing it. That is why federal trademark registration is essential for any practice trying to establish itself and its brand.
But the USPTO won’t accept every proposed trademark in an application for registration. There are numerous bases for denying a trademark application, but the most fundamental and common reason for denial is because the proposed mark creates a “likelihood of confusion” with another registered mark.
When the USPTO receives a trademark application, an attorney at the office will examine the registrability of the proposed mark by, among other things, searching USPTO records to determine whether there is any conflict between the applied-for mark and a mark that is either registered or pending in the USPTO.
Section 2(d) of the Lanham Act (the federal law that governs trademarks) provides that the USPTO may refuse to register a mark "which so resembles” a registered or pending mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…"
“Likelihood of confusion” sufficient to deny registration exists when marks are so similar and relate to the same or similar goods or services they are used with that consumers would mistakenly conclude they come from the same source. For example, registering “Apple Dental Associates” is unlikely to be problematic vis-a-vis tech behemoth Apple, but it might be if another dental practice in your area was named “Apple Dentistry.”
This is why any practice considering adopting or applying for a new mark should invest in a comprehensive trademark search to look for similar marks before investing the time, money, and effort on a trademark likely to hit the likelihood of confusion wall at the USPTO.
The Value of Trademark Registration
No law requires you to obtain a federal trademark registration before using a name or logo for your practice. The risk of infringing on someone else’s marks aside, you are free to put your unregistered brand out in the world. But registering your mark with the USPTO provides valuable advantages and is strongly recommended for any practice building its brand. These advantages include:
- Deterrence of infringement. A federally-registered trademark is listed in the publicly available USPTO database of registered and pending trademarks. Seeing that a mark is registered can deter other parties from adopting a confusingly similar mark and reduce the likelihood of infringement.
- Presumption of ownership. A federal registration creates a legal presumption of ownership of the trademark and the right to use it.
- Applying before actual use of the mark. You can file a federal trademark application even before publicly using the mark so long as you have a bona fide intent to do so in the future. Filing an application on an "intent to use" basis allows you to get the ball rolling on registering your mark and securing an earlier filing date.
- Access to federal court. The owner of a registered mark can pursue infringement and other claims in federal court.
- Use of federal trademark symbols. A federal registration allows an owner to use the federal trademark registration symbol, ®, with the mark, which may act as a deterrent to potential infringers.
If you are a dental practice owner and need assistance with trademark searches or registration as part of your efforts to build your brand, please contact Grogan Hesse & Uditsky today at (630) 833-5533 or contact us online to arrange for your free initial consultation.
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