What’s in a Name? Learn How Trademarks Can Protect Your Practice
By Corporate Relations and Business Strategy Staff
The name of your practice, as well as the logo and slogan you use in your practice brochure and other marketing materials, are an important part of your professional image. This article provides a basic overview of trademarks and how you can establish and protect your legal right to use the tools that identify your services in the marketplace.
What Is a Trademark?
A trademark is any word, phrase, symbol or design that you use to identify your products or services and differentiate them from products and services offered by others. Although technically, “trademarks” are used for products and “service marks” are used for services, the term “trademark” is commonly used in both cases. Owning a trademark can give you the legal right under federal and state law to prevent others from using your trademark to promote their services.
As a psychologist in independent practice or who owns a group practice, consulting firm or community-based agency, you may wonder why you would ever need to think about trademarks. Consider, however, the repercussions (and expense) of having to change your signs, letterhead, advertisements and directory listings because you inadvertently used a competitor’s slogan and were accused of trademark infringement. Similarly, think about what would happen if a new practitioner moved into your neighborhood, started using the name of your practice and was getting referrals based on the good name and reputation you spent years building.
Three Levels of Protection
Common law. Trademark rights originate upon use of the word, phrase, symbol or design in the advertising and sale of products or services. Therefore, even if you have not registered for a trademark, you may still have some protection. However, due to the limited protection available under common law, many businesses opt to register their trademarks at the state or federal level.
State registration. If you operate your practice and use your trademarks in a single state, you might decide to register your trademarks with your state government. State trademark registration provides official notice to competitors that you are claiming the right to use your trademark in the state in which your practice operates. In most states, the trademark registry is part of the secretary of state’s office.
Federal registration. The most effective way to protect your rights is to register your trademark with the federal government. If your practice is truly local, you may not be eligible to register your trademark nationally, but if you provide services in multiple states or use a trademark on the internet, federal trademark registration provides nationwide notice of claim to your trademark and evidence of your trademark ownership.
Registering for a Trademark
Step 1. Develop a trademark that reflects your professional image. This might include a memorable name, a distinctive logo or a catchy slogan that captures your core message. Be sure your trademark is consistent with your overall business plan and advertising strategy.
Step 2. Regardless of whether you plan to register your trademark at the state level or with the federal government, you should conduct a search that includes federal and state trademark registrations, as well as common law usage to make sure someone else doesn’t already have the rights to use your trademark. A little time and money now can prevent bigger headaches and expenses later. If you are conducting a preliminary search yourself, be sure to review the following sources of information:
Local phone books and business directories
Professional association publications and directories
Your local chamber of commerce
Your state’s corporate database and trademark registry
Your county’s database of fictitious business names
The Internet — be sure to search using several major search engines
Internet domain name search — use a tool such as InterNIC’s “Whois” search available online
NOTE: In many cases, especially if you plan to file a federal registration, a professional trademark search may be advised. A trademark attorney or trademark research firm can conduct a comprehensive search that includes common law references which may require special expertise to identify and evaluate.
Step 3. Submit an application. For a state registration, contact your secretary of state’s office and request the appropriate forms or download them from your state government’s website. For a federal registration, the U.S. Patent and Trademark Office now accepts online applications via their Trademark Electronic Application System (TEAS).
NOTE: Although you are not required to hire an attorney to assist you with your trademark application, you are responsible for observing and complying with all substantive and procedural issues and requirements. Therefore, consulting with an attorney experienced in trademark law may be advisable.
A Guide to the Symbols
The symbol “TM” or “SM” following your practice name, logo or slogan indicates that you are claiming trademark or service mark rights, respectively. Although you do not need a state or federal registration to use these symbols, they may strengthen your common law protection. The use of the symbol “®,” however, indicates a federally registered trademark and can only be used if you have registered your trademark with the U.S. Patent and Trademark Office.
Elias, S. (2003). Trademark: Legal Care for Your Business & Product Name (6th Ed.). Nolo: Berkley, California. Available online from Amazon.com
PLEASE NOTE: The information in this article does not constitute legal advice and should not be used as a substitute for obtaining personal legal advice and consultation prior to making decisions regarding your individual circumstances.