The top 5 things dentists must know about trademarks

March 6, 2017
Josh Gerben
Josh Gerben

Founder of the Gerben Law Firm, PLLC, Josh Gerben is a U.S. trademark attorney who has represented clients in more than 5,000 trademark filings with the United States Patent and Trademark Office. Featured in a variety of national news outlets including FOX News, NPR and The Wall Street Journal, Josh Gerben was named one of 2016’s Top 10 trademark filers in the U.S. by World Trademark Review.

Protecting your brand identity and reputation is key.

Your dental practice’s name is your identity. You live and breathe it every day. The name of your practice is also what your patients see each time they come to your office, and, most importantly, what your patients use when referring you to their friends and family.

But if your practice name isn’t protected via a federal trademark registration, you could be putting your brand identity and reputation at risk.   

Trending article: Dentistry and the federal government 

Click through the following pages to take a closer look at the top five things dentists need to keep in mind when approaching the trademark process.

 

Business incorporation has nothing to do with trademark registration.

Many dentists make the mistake of thinking that by incorporating their dental practice, they’re automatically provided with some sort of trademark protection for their practice name-but that isn’t the case. While it is true that your state will deny your incorporation request for “Mellis Dental Associates, Inc.” if another business in your state is already incorporated using that exact name, this doesn’t mean that you’ve been granted exclusive rights to use the name within the dental industry-it just means is that no two businesses in one state can incorporate using the exact same name. Other businesses in your state can incorporate with extremely similar names (e.g. “Mellis Dentistry Associates, Inc.) and businesses across the state line or across the country can incorporate using the exact same name as your dentistry practice.

The processes of incorporating your dental practice and securing a trademark for your dental practice name are completely separate. To gain the greatest level of protection for your practice, you should strongly consider filing for federal trademark protection of your practice’s name.

 

Hire a professional to do a trademark search.

Prior to filing a trademark application, it is highly recommended you complete a trademark search. This helps to ensure that no other dentist has attempted to register a same or similar name, which could result in denial of your trademark application and/or receiving a cease and desist letter down the road. And this is one of those situations where hiring an attorney to assist you is important. The upfront investment you make can have a real difference in your end result. An experienced attorney is able to perform more comprehensive searches using specialized software that isn’t available to the masses, and also has real-world experience that can help you sidestep many of the issues that aren’t immediately apparent to the layperson.

 

Trademark your name first, then your logo.

If your practice budget allows, go ahead and file two trademark applications: one for your name and one for your logo. But if you need to scale down your trademark plans and do things separately, trademark your practice name first and then your logo. Why? By registering your practice name first, you’re garnering the highest level of protection for your brand. If you were to file for trademark of your logo first-or your logo only-you would only be protecting your brand name within the graphic context of your logo. It also means that if you designed a new logo in two years, you would need to file a brand new application for trademark protection.

In today’s world, patients are much more likely to identify your practice by name than by a logo; therefore, in most circumstances filing for just your name is recommended. But as with anything in the legal arena there can be some exceptions to this rule, so you’ll want to consult with your trademark attorney prior to making your trademark filing.

 

Keep an eye out for possible infringement.

Once you’ve obtained a registered trademark, it’s up to you as the trademark owner to make sure that no one else is infringing on it. Trademark law in the United States is clear that you can lose significant rights in your trademark if you do not monitor the marketplace and enforce your trademark rights. As a dentist, you should monitor other dental practices and companies that make dental products.

At the very least, set up internet alerts for your trademark name so that any new search results that include your name will arrive in your inbox for your review. But for greater protection, consider asking your attorney who helped with your trademark filing if he or she offers monitoring services that will search for and flag any potential infringement issues.

 

Claim your social media handles.

Are you already sharing #smiles on Instagram and tweeting oral health tips on Twitter? Or is social media not a big part of your practice’s marketing plan? No matter which way you answer, it’s imperative that your dental practice “own” the social media handles that are registered with your trademark. If you don’t, you risk confusing current or potential patients and jeopardizing your reputation and bottom line in the process.

If you aren’t already active on social media, head over to the top sites like Facebook, LinkedIn, Pinterest, Instagram, Twitter, etc. and create a social media handle for each site using your trademark. But what if another dentist is using your trademark name as his or her social media handle? Assuming you obtained federal trademark protection for your name, the social media site will likely deem you the “rightful” owner of the handle and will provide you with access to it with you having to do little more than fill out an online form that includes your federal trademark number. However, before taking any kind of legal action, you should get in touch with your trademark attorney to ensure you aren’t inadvertently opening yourself up to liability.

Obtaining a trademark for your dental practice name can have a huge impact on your long-term branding strategy. First, it is important to understand that incorporating your practice isn’t the same as registering for a trademark. Then, consider hiring a professional trademark attorney to assist you with the trademark clearance and registration process. Finally, keep an eye out for other practices that may be infringing on your trademark name, and stake your claim on social media sites. By following these tips, you’ll be ahead of the pack and ready to take advantage of all the benefits that trademark protection offers.

Founder of the Gerben Law Firm, PLLC, Josh Gerben is U.S. trademark attorney who has represented clients in more than 5,000 trademark filings with the United States Patent and Trademark Office. Featured in a variety of national news outlets including FOX News, NPR and The Wall Street Journal, Josh Gerben was named one of 2016’s Top 10 trademark filers in the US by World Trademark Review.