2016 Special Healthcare Issue
Trademarks and Self-Named Businesses: What’s In a Name?
By: Bret A. Madole
Clients, particularly in the healthcare industry, face a challenge: how to protect your brand when your brand is dependent on your own name? Trademarks are a crucial part of any brand protection strategy. But trademark law has a strange quirk–most people can’t trademark their own surname for most purposes.
According to § 2(e)(4) of the Trademark Act, a mark that is primarily a surname should not be registered absent a showing it “has become distinctive of the applicant’s goods in commerce.” This distinctiveness is not always clear cut. Sure, brands like Dr. Scholl’s have been able to secure trademarks for a variety of classes, but it can be very challenging to show the level of distinctiveness the USPTO requires for most healthcare practices to be named after a real person.
In some ways, this is helpful. There are many physicians that have the last name “Smith,” so no single Dr. Smith can trademark the “Smith” name for providing healthcare to the exclusion of all Dr. Smiths. So, the USPTO will not grant a trademark unless you can demonstrate that your name is a source indicator for a particular class of goods or services. In other words, you must demonstrate that your own name is itself a brand. It is very challenging to develop a strong enough brand to cross this hurdle, but there are other options.
If you are interested in protecting a brand based on your name, your best bet is likely to use a design mark that incorporates your name in some fashion. This allows you both to merge your personal reputation with a recognizable symbol that you may be able to protect via registration.
If you are wondering what your options are, contact us. We would be happy to work with you to develop a brand protection strategy to help you protect your name.