A recent appeal of a trademark application refusal shows the importance of filing proper specimens of use.

The matter, In Re Sciton, Inc., was an appeal filed by the owner of two applications to register the mark SCITON (in standard characters and composite design mark form) for various medical services related to cosmetic skin treatments and procedures.  The appeal was heard before the U.S. Trademark Trial and Appeal Board.

The Examining Attorney rejected both specimens for the mark on the grounds that the specimens did not “show a direct association between the applied-for mark and the services in the application.”   Applicant filed two specimens with each of its applications: (1)  a white paper entitled “Laser-Assisted Lipolysis Using ProLipo PLUS™,” by plastic surgeon Marc J. Salzman; and (2) a printout from the “Treatments” section of its website at sciton.com.

USPTO practice states that service mark specimens must show use of the mark in connection with the applied for services.  This requires that potential purchasers would perceive the mark to identify the applicant’s services as well as the Applicant as the source via a direct association.   A specimen that merely shows the mark alone without reference or association to the services is unacceptable.  This is true even if the mark and a reference to the services appear in the same specimen..  What is critical is for the mark to be used to identify  both the services and Applicant as the source of the services.

In this case, the Board found that while both specimens showed the subject SCITON Marks, neither specimen indicated that the Applicant provided any medical or cosmetic services itself.  Instead, the specimens reflected that the Applicant is a medical device company that furnishes devices to doctors.  Put simply, the Applicant’s services for which it applied did not reflect the Applicant’s actual business.  Here, if the Applicant applied for medical device goods and submitted a proper specimen that showed the mark being used in association with the goods, then a trademark registration would have most likely issued.   But it did not.  As the Board succinctly concluded:

“there is nothing on any specimen that refers to, or even suggests, that there is a SCITON medical/cosmetic service.”

The refusal to register the SCITON Marks due to the fact that the specimens failed to show a direct association between either form of the Mark and the services identified in the trademark application was affirmed,

Editor’s Note:  Applicant’s need to accurately identify its goods or services .  The proper time to do so is in conjunction with preparing and filing the trademark application.  A helpful list of trademark classification of healthcare goods and services may be found in our article here.

A recent trademark opposition decision shows that protecting your nutritional supplement trademark is good for overall brand health.

In Tom Miles v. Five Star Gourmet Foods, Inc.,  the Applicant (Five Star) sought to register the mark ENERGY2GO for fresh and packaged meals and snacks consisting primarily of vegetables, fruits, meats, cheese, and grains in International Classes 29 and 30.   The Opposer, Tom Miles, filed a notice of opposition based on its prior registrations of the marks NRG2GO and ENERGY 2 BURN for dietary and nutritional supplements for endurance sports, and nutritional supplements in the form of foods powder in International Class 5.   The grounds for the opposition was a likelihood of confusion pursuant to Section 2(d) of the Trademark Act.   In analyzing whether a likelihood of confusion exists, the Board focused on a comparison between the Opposer’s NRG2GO registration and the Applicant’s ENERGY2GO Mark, since the NRG2GO Mark is closest to Applicant’s Mark.

In ruling for the Opposer, the Board made the following observations and findings:

Ruling.  The Board sustain the opposition and the refusal to register Applicant’s Mark.  This was based primarily on the finding that the NRG2GO and ENERGY2GO marks were highly similar and the relatedness of the goods.

Editor’s Note.    A nutritional supplement trademark for seemingly unrelated products (nutritional supplements and prepackaged foods) can nonetheless be related for likelihood of confusion purposes.  Here, since the nutritional supplements were in the form of foods powder and the Applicant’s Mark was for prepared foods, this fact seemed to be controlling.

Healthcare CMOs have a valuable ally when seeking to justify their marketing budgets.  In a word, their brands.

According to a recent article in Modern Healthcare,  revenue shortfalls in regional health systems are acute due to COVID-19.  One of the recommended remedies to this financial illness is to diversify sources of revenue.  There is no better place to start than to strengthen and maximize the power of your brands.

For years, it has been known that the intangible assets of companies have a higher book value than tangible assets.  Intangible assets are comprised of numerous things, such as trademarks, copyrights, and patents.  The cumulative sum of all of these is consumer goodwill – otherwise known as brand equity.  When a CMO and her team make identifying and securing intellectual assets a priority, then additional revenue opportunities will follow.

Where to begin.   Great health systems know that the responsibility for their brands lie not within the marketing department alone.  Instead, brand strategy must be embraced and implemented across the entire organization, including human resources, medical staff and administration, finance, legal, and PR and communications.  This include outside partners.  Here’s how you can get started to harnessing the power of your organization’s brand assets.

1.   Start a Brand Assets Group.  A Brand Assets Group “(BAG”) is a cross-departmental team tasked with four responsibilities:

Further information on how to start a Brand Assets Group and its objectives was discussed in our previous article here.

2.   Educate your team.  To gain a better understanding of the role your brand’s assets play in supporting your mission, education and training is key.   An effective education and training program should include the following components:

3.   Seek out brand monetization opportunities.   Many regional health brands have tremendous name recognition and goodwill.  This can translate into alternative, non-traditional ways to monetize the popularity of their brands.   The most common ways are through trademark licensing and certification mark programs.  Both are tactics for the health system to lend the popularity of its brands to non-competing, yet complimentary products and services.   This can result in not only incremental revenue streams, but for a way to increase new customer acquisition, increase loyalty, and increase referrals.   This can be done without dedicating more money to these necessary, yet expensive marketing cost areas.

Conclusion:   Your brand and its various components can provide marketing teams with the leverage they need to play a more important role in health system planning and strategy.  Instead of looking at the health marketing budget as a cost-center, an effective brand protection and monetization program can translate the perception of the marketing department in the eyes of their stakeholders and board members.

Legal note:  Copyright compliance programs and training are vital to mitigating your marketing risks.

Understanding copyright basics is an important component of an effective health care marketing strategy.

A proper copyright compliance program will include an understanding of what you can protect, what requires a license, and how to avoid infringement.

1.  What you can protect.    A copyright is a type of intellectual property, which includes patent, trademark, and trade secrets.  Copyright protects original works of authorship that can be fixed in a tangible form.  Copyright protection does not extend to methods, ideas,  or concepts.  It does, however, protect the original expression of such ideas.  It also grants the author the exclusive rights to make copies, reproduce the work, and make derivative versions.

Examples of copyrightable material may include:

The Copyright Act does not apply to works prepared by the U.S. government or their agencies.  These works are in the public domain, free to use by anyone.  Copyright law also does not protect words, slogans, or simple geometric shapes or patterns.

2.   What you need to license.   Simply put, all original expressions of creative works  are eligible for copyright protection.  In the health care marketing world, this may include all of the items described in section 1 above.   Therefore, if you are using a third-party’s materials without their permission, then your company may be subject to a claim for copyright infringement.   As such, before using any third-party materials in connection with marketing and promotional efforts, you should be sure to satisfy the following questions:

3.  How to avoid infringement.  There are several scenarios that are common in healthcare marketing that can lead to claims of copyright infringement.  These include when:

To avoid these types of risk, it is a important to establish a copyright clearance policy that makes sure that you secure all rights in and to those works that you commission on your health system’s behalf, as well as put in place protocols for licensing third-party content.

Conclusion.   The penalties for copyright infringement can negatively impact a health care brand’s reputation and associated goodwill.  Infringement can also expose the brand to liability for attorney’s fees and monetary damages.   This is why formal, employee compliance training should occur on a yearly basis, and that adequate protocols and procedures are in place.

Editor’s note.  To learn more about employee training options, contact us.

Your Brands are your #1 Most Valuable Asset

In the COVID-19 world,  revenue and profit margins are down and competition is fierce.  Now is time to identify and leverage more value from the the #1 financial asset on your books: your brand.

A hospital’s brand is not merely its name, but an indicator of source that differentiates its service lines, products, marketing, and people from those of its competitors.

If you want to build your healthcare system’s brand, you need to first identify and protect all of the components that make it so valuable.  It all starts with identifying brand assets that are often overlooked, not identified, and not protected.  Once done, then a system should be put in place to register these brand assets with the U.S. Patent and Trademark Office and U.S. Copyright Office.

Done right, health branding can result in lower customer acquisition costs, increased consumer loyalty, and improved margins.  But if healthcare organizations fail to clear brand names, protect copyrightable subject matter, or do not implement HIPAA marketing and related compliance training, their brand equity could quickly suffer from injury to brand reputation.  This is in addition to monetary judgments and attorney’s fees that could result from unaddressed marketing risks.

Here are some things to remember about why you should focus on your healthcare brand protection and monetization efforts:

Health brands represent valuable goodwill.  Your health brand is an intangible asset. In the healthcare context, a brand includes health system and facility names, service line campaign names, slogans, and logos.  It also includes marketing copy, images, and proprietary research, products and services.  A healthy brand is the result of cumulative goodwill cultivated at great cost and expense to an organization.

Health brands can be damaged.   Healthcare brands, like other brands, are not immune to injury to reputation.  In the health marketing context, this often is the result of failure to follow HIPAA marketing rules, trademark and copyright clearance, or making unsubstantiated advertising claims. Damage to a health brand is not just about attorney’s fees and monetary damages; it is about potential injury to your reputation.

Brand Health is your responsibility.   The health of your brand is the responsibility of all members of the healthcare organization; including their outside agencies, and everyone who has contact or who influences an organization’s customers and communities.  Brand is the unified theory of everything; the context of how your organization acts and communicates with the general consuming public and your community.

The greatest thing of value on your healthcare systems’ balance sheet it your BRAND.

Hospital marketing budgets are tight as a result of COVID-19 disruptions.   Margins are thin.  So healthcare executives continue to explore new ways to capture lost revenue streams.  While there are no easy answers, creating a hospital brand licensing program can help achieve several financial goals.

Why License?  According to the American Hospital Association (AHA), hospital and health systems losses due to COVID-19 totaled $202.6 billion.  Even strong health system brands have not been immune.  When the Mayo Clinic had to stop all non-emergency procedures last March, it resulted in millions of dollars of revenue losses each day.   Lesser know healthcare brands such as regional health systems and hospitals face an even greater hurdle in returning to pre-pandemic profitability levels.   That is why licensing has an appeal to healthcare strategists.

What is hospital brand licensing?   Brand licensing is a means to leverage the cumulative goodwill that is built-up in your hospital’s reputation over the years.  Specifically, brand licensing is when you lease or rent your intangible assets (your brand names and other marketing collateral) to third-parties.   This includes your reputation for excellence among the relevant consuming public.  For healthcare systems, brand licensing is an attractive alternative to system-owned clinics or physician practices that require a substantial capital investment.

The elements of a brand licensing program include:

A.   Identify your brand assets.   A hospital’s brand assets, otherwise known as intellectual property, are extremely valuable.  These include brand names, logos, images, marketing content, service line campaigns, and patient and employee testimonials.   A brand licensing program starts with identifying all of the elements of your brand portfolio that can be legally protected and help to differentiate you from your competitors.

B.   Establish rights ownership.   Most hospitals hire outside agencies to create and manage their branding assets and marketing campaigns.   Yet a majority of health organizations do not own their own creative assets.  This is true, even though they paid handsomely for the work.   Why?  Because by default of law,  the outside agency is the owner unless a work for hire agreement or assignment of such rights is put in place.  Similarly, you should also identify those elements of your brand and marketing campaigns that are not your own and you did not hire someone to create.  Use of this category of creative assets generally require permission from the rights owner in the form of  authorization or license.

C.   Implement a brand assets registration program.   Healthcare organizations often make the grave mistake of not registering their major branding assets with the U.S. Patent and Trademark Office and U.S. Copyright Office.  The failure to do so not only may result in diminished book value, but result in potential theft from competitors.   To begin, identify your major branding assets based on contribution to  your organization’s identity, reputation, and goodwill.   Second, identify assets that have been created specifically for individual service line campaigns.   Once this is done, a branding assets registration program can be implemented and assets captured on an on-going basis.  Additional tips may be found here.

In our next article, we will discuss the benefits of brand licensing for healthcare systems and how to seek the right partners in your regional community.   While your hospital marketing budget remains a challenge, now is the time to start leveraging the power of your brand.

Note:  To find our more about how you can establish a brand protection and licensing program for your healthcare organization, contact us.

Healthcare brand valuation remains a high priority to healthcare organizations during COVID-19.   The first step is to understand the inherent value of the intellectual assets that comprise your brand.

Brand assets defined.   Brand assets consist of a healthcare organization’s creative output, each component of which holds economic value.  Just like real estate, automobiles, jewelry, or other forms of tangible property, healthcare brands are valued assets as well.  Specifically, healthcare brands are categorized as intangible assets.  Unlike real property assets, brands cannot be touched or seen.  Yet similar to real property,  brands can be created, increase in value,  licensed, bought, and sold.  Brands can also be used as collateral for loans.  So why not seek to leverage the equity that lays untapped in your healthcare brands?  This is what several companies have already done in non-healthcare sectors.  Leading healthcare organizations are doing the same.

Brand assets elements.   Your healthcare brand is the sum of all of its intangible parts.  This includes:

Most valuable of all?  The aggregate consumer trust and goodwill associated with your branding efforts.

What’s your brand’s value?   Healthcare brand valuation beings with assets identification and capture.  Several studies have shown that the value of a company’s intangible assets are valued higher that its real property holdings, including buildings and inventory.   Why?  Because a brand’s value includes its associated goodwill among the relevant consuming public.  Think of it!  Your balance sheet may be holding more assets than you ever thought possible.  Now is the time to identify, protect, and extract your health brand’s value.

In the celebrated book, Rembrandts in the Attic, the authors illustrated how IBM and other companies leveraged the value of overlooked intellectual assets to create incremental revenue streams.  This strategy is also effective to maintain competitive advantage.  To do so, healthcare organizations must first identify what they own that is eligible for intellectual property protection.  Second, they must institute a program to protect it.  Creating a dedicated team is a good place to start.

Brand Assets Group.   A Brand Assets Group (BAG) is a cross-departmental team tasked with four major responsibilities, namely to:

Your BAG should be comprised of people in various departments who are responsible for various components of your brand.   These typically include representatives from various internal and external stakeholder groups:  Each BAG member should be trained on how to identify, capture, and monetize your branding assets.  They should also know which components of your overall brand’s health they are responsible for, and how they fit into your holistic brand protection, risk, and monetization continuum.

Conclusion:  Just like other financial assets, the management of branding assets require a cross-departmental team that works together.  The goal is to safeguard and maximize the attributes of these assets for the benefit of the healthcare organization.   Creating a Brand Assets Group can help achieve your strategic and financial goals.

Editor’s Note:  Brand assets protections for hospitals is the subject of one of our previous articles found here.  To discuss how to design and implement a Brand Assets Group for your team, contact us.

A recent trademark opposition case shows that a trademark disclaimer can make a difference.

In Foundation Medicine, Inc. v. Alfred F. Czap, the Applicant sought registration of the trademark FOUNDATIONAL MEDICINE REVIEW for journals in the field of medicine.    Foundation Medicine, Inc. opposed the application.  In doing so, it relied on two prior registrations of FOUNDATION MEDICINE.  One was for the word mark and the other was with a design logo.    The services identified in the word mark registration included the electronic storage of medical data and healthcare information for healthcare professionals.  The services in the design logo registration were for an online portal featuring links to medical and scientific research in the field of cancer treatment and diagnosis.

Trademark disclaimer rule.  The Applicant had to disclaim exclusive rights to the term “medicine review.”   The Opposer, in both of its pleaded registrations, had to disclaim the term “medicine.”  When a party disclaims certain words in a trademark, it means that it does not seek to claim exclusive rights to the word.  This is for public policy purposes.  Disclaimers recognize the need for competitors to use common words to describe their goods or services.    Disclaimers are often required when an applicant seeks registration for a compound mark that contains descriptive words.

Likelihood of confusion analysis.  For purposes of providing a likelihood of confusion between trademarks, the Board looks at the protected elements of each parties’ mark.  In the case of a disclaimer, what is compared are the remaining non-disclaimed elements.  Here, the dominant portion of Foundation Medicine’s pleaded registrations was the word “FOUNDATION.”   Since the Applicant had to disclaim exclusive rights in “medicine review,” the  protectable portion of its mark was the word “FOUNDATIONAL.”

Conclusion. In any likelihood of confusion case, two of the most important factors are the similarity of the marks and similarity of the services.  The Board concluded that Applicant’s services and Opposer’s services overlap.  Specifically, Opposer’s pleaded trademarks included providing “medical data/information to healthcare professionals.”  Applicant’s services included “providing on-line, non-downloadable articles in the field of medicine and healthcare.”  Since the dominant portions of the parties’ respective marks were “Foundation” and “Foundational” and the goods and services overlapped, this was sufficient for the Board to rule in favor of Foundation Medicine, Inc.  Judgment entered in its favor and the opposition was sustained.

Editor’s Note.   Brand protection is vital for healthcare organizations.   For further health trademark protection tips, please refer to this article.

Your hospital branding assets are the most valued asset on your balance sheet.

Consumer companies have long known the advantages of having a strong brand.  Healthcare systems are starting to appreciate this too.  Creating and building a strong healthcare brand generally has three major economic benefits:

With health systems facing increasing competition and lower margins, it is essential to identify and capture all of your hospital branding assets.  By doing so, you can convert some of your marketing expenditures into value.  Brand

Where to start.   To identify and capture more of your hospital branding assets, first take an inventory of all your brand identity and marketing output.   Assets and materials eligible for protection can include:

Process.   Be sure that you own your intellectual assets and not your vendors.   Of equal importance is to make sure that you are not infringing the intellectual property rights of others when instituting marketing campaigns.

Conclusion.  The key to a strong hospital brand starts with proper brand identification and protection procedures.  Making sure that your hospital has a brand protection program in place can make the difference.

Hospital marketing lawsuits can often be avoided.  But many hospitals do not have adequate brand and marketing risk management because they think they either don’t need it or cannot afford it.  Not having proper risk prevention training and policies can be costly to you and your health care organization.

Here are some recent cases where hospitals were involved in lawsuits regarding their branding and marketing activities:

Case #1.  A Florida health system was sued for deceptive advertising as part of a medical negligence action that resulted in the death of a patient from bariatric surgery.  The hospital had advertised in its marketing materials that it was awarded the American Society Bariatric Surgery Seal of Excellence.  To be eligible to receive the certification, doctors must have performed 50 bariatric surgeries and completed 20 hours of continuing education.  The physician who performed the surgery that resulted in the patient’s death had only performed 21 bariatric surgical procedures.

Case #2.   A Midwestern health system was sued for trademark infringement by a national healthcare insurance company for using a specific color in its geometric-shaped logo.  The total cost (aside from attorney’s fees) to change all signage and other branding and marketing collateral was estimated at $2-3 MM. This very same insurance company routinely sends cease and desist letters to other healthcare providers across the country threatening further legal action if the claimed color is not removed from their logo and other marketing collateral.

Case #3.   A medical billing and electronic health records software company in Georgia successfully opposed a trademark application of a primary care and mental health care provider in Florida that was using the same name, albeit for different healthcare related services.   The case, which went to trial, was heard before the U.S. Trademark Trial and Appeal Board.  The cost?  According to recent statistics, the average attorney’s fees of a fully contested trademark opposition proceeding is $ 125,000 or more.

Case #4.   One of the largest healthcare software companies in the world brought an action for copyright infringement against a Tennessee healthcare system.  The software provider had granted the 126-hospital system a bundle of paid licenses for the use of its software. Pursuant to the terms of the license agreement, the licensee was prohibited from distributing or sublicensing any of the software. As part of its divesture of various hospitals, the defendant continued to facilitate the use of the licensed software by the sold hospitals.   When the software company sought to conduct an independent audit of the licenses, the healthcare system did not fully cooperate with the accounting, leading in part to the lawsuit.

Case #5.   A Wisconsin children’s hospital received a cease and desist letter from a pediatric practice that was using a similar, geographic trademark.   This resulted in a U.S. district court lawsuit as well as a trademark opposition before the U.S. Trademark Trial and Appeal Board.

Hospital Marketing Advisory.   To help mitigate your hospital marketing lawsuits risks, it is recommended that you conduct a health marketing checkup of all of your branding and marketing assets every year.