Selecting a strong trademark is the key to being able to protect the trademark. As we discussed last week, the first and central step in branding is selecting your facility’s trademarks, which promote a provider’s reputation, helping it stand out among its competition. When choosing a name for a product or service, the inherent strength of mark should be considered, as this will affect many things going forward from the cost of a search to your ability to stop others from using similar names.
There are five categories of marks, each of which comes with its own level of legal protection. From least to most protected, they are:
- GENERIC: Names like “emergency room” or “doctors” – these cannot be trademarked.
- DESCRIPTIVE: Descriptive marks immediately provide information about the service or product. These types of marks can be protected but only if they have acquired distinctiveness through use in commerce. Descriptive marks include laudatory marks (“Best Dental”); geographic marks (“North Shore Hospital”); and surnames (“Williams Orthopedics”).
- SUGGESTIVE: These marks indirectly provide information about the goods and services requiring the consumer to make a mental step or connection to determine what the services are (“Service with a Heart” for a cardiac center; “Papoose” or “Joey” for pediatric services). Suggestive marks are immediately protectable; however the scope of that protection is not as broad as for arbitrary or fanciful marks.
- ARBITRARY: These marks, like “Apple” or “Amazon,” are real words but there is no connection between the words’ meaning and the services or products it is used for. These marks enjoy broad, strong protection.
- FANCIFUL: These marks are made-up words, like “Xerox,” “Google,” or “Viagra,” created specifically to be used to identify the source or origin of certain goods or services. These are the most strongly protected marks.
Hospitals and other healthcare facilities have traditionally been named with geographic designations or with the name of a famous person or in other ways that would be considered “descriptive.” These names, after long years of use are quite likely to have acquired “secondary meaning” so they are now protectable trademarks. Many such marks have become quite famous and will enjoy strong trademark protection despite their humble beginnings. Therefore, the hospital will have the ability to police and control use by competitors of similar names. However, it is unlikely that the hospital will be able to control all use of the descriptive elements of its name and trademark.
Further, when use of a descriptive or highly suggestive mark is new, the ultimate strength of the mark may be in the hands of third parties. If others adopt the same or similar mark before your mark has achieved secondary meaning (often set at 5 years of “substantially exclusive and continuous use in commerce”), then you may never be able to claim secondary meaning and your ability to police your mark may be limited. Why then does anyone choose a descriptive or highly suggestive mark? The first instinct of marketing is often to pick a descriptive or suggestive mark because it provides your customers with important information about the services.
In contrast, an arbitrary or fanciful mark will immediately enjoy strong protection against use by others but it will mean nothing to your customers. You will have to provide them with additional information regarding the services. An arbitrary or fanciful mark may require more time and expense to introduce the mark and to educate consumers regarding the meaning of the mark.
Our Insight. Your Advantage. We often recommend a combined approach to choosing trademarks. For the primary mark, choose as distinctive a mark as possible, and then couple it with a descriptive tagline. Somewhat of a reverse strategy is that if your hospital has retained the same descriptive or geographic name for many years, that name can be combined with an arbitrary or fanciful mark to promote new service areas or to appeal to a specific demographic. Combined with a descriptive tagline or with the primary hospital name, these arbitrary or fanciful marks may enjoy a fast track to being recognized as indicators of the source or origin of your services.