Josh Gerben, Principal, Gerben Law Firm, PLLC01.28.16
The names of your medical product business and your products themselves are the heart of your company. These names allow physicians and other service providers to specifically request your business and your products be used in any given situation. That being said, in order to protect your names, it is critical that you do not forget to protect them with a federal trademark registration. Moreover, if you build a brand around a name that cannot qualify for federal trademark registration—either because another company is already using it or the name is not unique enough to garner trademark protection—you could be putting your entire business at risk.
While the trademark process isn’t exactly brain surgery, it is more complex than you might think. Following are three of the most common mistakes we’ve seen medtech companies make in the trademark process and how your brand can avoid them.
1. Moving Forward with a Name Based on Your Own Trademark Search
As you’re developing your medical product brand and brainstorming product names, it’s important that you keep the name’s trademark availability in mind. And while a search on the United States Patent and Trademark Office (USPTO) website may be a good start in quickly eliminating names that are already registered, don’t make the mistake of moving forward with a name without investing in further research. The reality is that you could be putting your medtech business and your brand at risk if you make branding decisions based on the results of a DIY trademark search.
Imagine this situation: You’re seriously considering the name “Cathcare” for a new line of catheter products, so you visit the USPTO website and perform a search for that name. When no search results appear, you decide to move forward with the name for your brand, spending money to develop marketing materials and packaging as well as filing a trademark application on the name. However, what your search didn’t (and couldn’t) show you is that there’s already a business in your industry that owns the trademark for “Kathcare,” and by using the “Cathcare” name, there’s a good chance you’re infringing on their registered trademark. Because these names are confusingly similar, the USPTO would likely deny your trademark application. And not only could the other company force you to stop using the name and rebrand all of your materials, but you may also be responsible for damages.
To avoid situations like the one described above, your best choice is to retain the services of a trademark attorney to help you perform your search and file your application. Trademark attorneys have professional-level trademark search software that can help you sidestep registration issues, and they know the types of name issues that the average businessperson would likely overlook. Protect the brand you’re working hard to build by getting professional help early in the process.
2. Ignoring an Office Action
Sometimes, the trademark application process goes smoothly—all of your Is are dotted and your Ts are crossed and you move from application to registration without a hitch. But on other occasions, the U.S. Government’s Examining Attorney for your trademark application may need clarification or more information about your application request, or may actually deny your application. In these situations, the USPTO will send what’s known as an Office Action notice—and from the date it’s issued, you have exactly six months to respond.
Whether you need to fix an administrative detail on your application, tweak a technical requirement, or file an appeal for a trademark denial, it must happen within the six-month timeframe—and the USPTO doesn’t send any reminders that your time is running out. Applicants that don’t respond within the allotted time lose their filing fee, and your application will be considered abandoned, causing you to have to start from scratch if you want to try again.
To keep the trademark process moving forward, be certain to respond to any Office Action notices in a timely manner.
3. Failing to Maintain and Renew Your Trademark
After you successfully register a trademark for your product name, you must continue using it in business or you may lose the rights to the name. So if you register a trademark for your new topical skin adhesive and then, after six months on the market, need to put sales on hold for months or years for whatever reason, realize that you may be putting your trademark in jeopardy of being cancelled.
Additionally, it’s important that you understand the registration schedule associated with trademarks, and renew your registration accordingly. To keep your trademark current, you must renew it twice in the first decade after your initial registration—between the fifth and sixth year and then again between the ninth and tenth year. Then, you’ll need to renew the registration every ten years. If you neglect to renew your trademark, the USPTO can consider it abandoned and end up cancelling it, making the name available for someone else to use and causing you to start from the beginning with a trademark application if you want to try and claim rights to the name again.
Protect Your Brand by Avoiding Trademark Troubles
As you’re considering names for your medical products, keep these trademark tips top of mind. Work with a trademark attorney to perform a professional-level name search prior to deciding on a name, and to help you with the application process. If you decide to file a trademark application on your own, make sure you quickly respond to any Office Action notices, and that you file the renewals necessary to keep your trademark active. By avoiding these common trademark troubles, you’ll be setting your medical product brand up for continued success.
Josh Gerben is the principal of the Gerben Law Firm, PLLC, a firm that focuses specifically on trademark law and services. Gerben Law works with business across the U.S. and the world looking to protect their assets both online and offline. You can learn more about Josh on his blog.
While the trademark process isn’t exactly brain surgery, it is more complex than you might think. Following are three of the most common mistakes we’ve seen medtech companies make in the trademark process and how your brand can avoid them.
1. Moving Forward with a Name Based on Your Own Trademark Search
As you’re developing your medical product brand and brainstorming product names, it’s important that you keep the name’s trademark availability in mind. And while a search on the United States Patent and Trademark Office (USPTO) website may be a good start in quickly eliminating names that are already registered, don’t make the mistake of moving forward with a name without investing in further research. The reality is that you could be putting your medtech business and your brand at risk if you make branding decisions based on the results of a DIY trademark search.
Imagine this situation: You’re seriously considering the name “Cathcare” for a new line of catheter products, so you visit the USPTO website and perform a search for that name. When no search results appear, you decide to move forward with the name for your brand, spending money to develop marketing materials and packaging as well as filing a trademark application on the name. However, what your search didn’t (and couldn’t) show you is that there’s already a business in your industry that owns the trademark for “Kathcare,” and by using the “Cathcare” name, there’s a good chance you’re infringing on their registered trademark. Because these names are confusingly similar, the USPTO would likely deny your trademark application. And not only could the other company force you to stop using the name and rebrand all of your materials, but you may also be responsible for damages.
To avoid situations like the one described above, your best choice is to retain the services of a trademark attorney to help you perform your search and file your application. Trademark attorneys have professional-level trademark search software that can help you sidestep registration issues, and they know the types of name issues that the average businessperson would likely overlook. Protect the brand you’re working hard to build by getting professional help early in the process.
2. Ignoring an Office Action
Sometimes, the trademark application process goes smoothly—all of your Is are dotted and your Ts are crossed and you move from application to registration without a hitch. But on other occasions, the U.S. Government’s Examining Attorney for your trademark application may need clarification or more information about your application request, or may actually deny your application. In these situations, the USPTO will send what’s known as an Office Action notice—and from the date it’s issued, you have exactly six months to respond.
Whether you need to fix an administrative detail on your application, tweak a technical requirement, or file an appeal for a trademark denial, it must happen within the six-month timeframe—and the USPTO doesn’t send any reminders that your time is running out. Applicants that don’t respond within the allotted time lose their filing fee, and your application will be considered abandoned, causing you to have to start from scratch if you want to try again.
To keep the trademark process moving forward, be certain to respond to any Office Action notices in a timely manner.
3. Failing to Maintain and Renew Your Trademark
After you successfully register a trademark for your product name, you must continue using it in business or you may lose the rights to the name. So if you register a trademark for your new topical skin adhesive and then, after six months on the market, need to put sales on hold for months or years for whatever reason, realize that you may be putting your trademark in jeopardy of being cancelled.
Additionally, it’s important that you understand the registration schedule associated with trademarks, and renew your registration accordingly. To keep your trademark current, you must renew it twice in the first decade after your initial registration—between the fifth and sixth year and then again between the ninth and tenth year. Then, you’ll need to renew the registration every ten years. If you neglect to renew your trademark, the USPTO can consider it abandoned and end up cancelling it, making the name available for someone else to use and causing you to start from the beginning with a trademark application if you want to try and claim rights to the name again.
Protect Your Brand by Avoiding Trademark Troubles
As you’re considering names for your medical products, keep these trademark tips top of mind. Work with a trademark attorney to perform a professional-level name search prior to deciding on a name, and to help you with the application process. If you decide to file a trademark application on your own, make sure you quickly respond to any Office Action notices, and that you file the renewals necessary to keep your trademark active. By avoiding these common trademark troubles, you’ll be setting your medical product brand up for continued success.
Josh Gerben is the principal of the Gerben Law Firm, PLLC, a firm that focuses specifically on trademark law and services. Gerben Law works with business across the U.S. and the world looking to protect their assets both online and offline. You can learn more about Josh on his blog.