Digital Health5 Critical Trademark Strategies for Digital Health Startups

Josh Gerben Josh Gerben3 months ago14 min

If you are running a digital health start-up, ensuring the health of your company’s brand should be a top priority. Ensuring the names, logos and slogans for your company and products are protected will be critical to the long-term health of your organization.  Here are five critical steps that I recommend you consider when selecting and protecting your trademarks.

Step 1: Choose a Strong Mark from the Start

A company’s trademark is often the first interaction a person has with the brand.  A strong mark will both encourage brand recognition and protect against infringement.  Therefore, the process to choose a strong trademark should be thoughtful and deliberate.  Trademarks can be divided into the following categories, based on strength:

  • Generic words depict a general product or service, and are too commonly used to be registered by the USPTO. An example of a generic digital health mark would be Health App.
  • Descriptive marks “describe” a product or service. An example of this would be “Diabetes Tracker” for an app that tracks blood sugar and other diabetic symptoms.  Descriptive trademarks receive very little protection because they are not truly unique marks.
  • Suggestive marks simply hint at the product or service being offered. Fitbit would be considered a suggestive mark.  While these marks may offer more protection, you could run into more trademark disputes, as others may choose similar suggestive language, like Fit Bot or Fit Band.
  • Arbitrary marks are words that are commonly used, but not in conjunction with the goods or services offered. The prescription service Blink Health is an example of an arbitrary mark.  While these marks are much stronger than the previous marks, they often require more marketing and consumer education about the goods or services being offered.
  • Fanciful marks offer the strongest protection. These are invented terms with no relation to the product or service they represent.  The diet app Noom is an example of a fanciful mark.  Like arbitrary marks, these require more consumer education and marketing, but will establish stronger brand recognition.

Step 2: Conduct a Comprehensive Trademark Search

After a strong trademark has been chosen for your digital health startup, you will need to complete a comprehensive trademark search.  This search should determine whether your mark, or a confusingly similar one, is already in use by another business.  It may be frustrating to learn the mark you’ve invested time in creating may infringe on another business, but it is best to learn this before you submit your trademark application and pay your filing fees.  If you learn that your mark is in fact in use, you will have the ability to make the necessary changes prior to applying with the USPTO.

To ensure that your trademark search reveals all potential concerns, it is best to work with an experienced trademark attorney.  Most entrepreneurs in the digital health sector are technology experts, and because of this, many may opt to take the do-it-yourself approach when it comes to conducting the trademark search.  Unfortunately, a DIY search could cost you both time and money in the long run.  This is because legal sites and basic online searches typically only reveal exact matches to a trademark.  Most trademark disputes, on the other hand, do not arise from exact matches, but rather from any mark that could be confused with an existing mark.  On the contrary, the trademark search software available to most trademark attorneys is much more sophisticated, revealing not only exact matches, but similar matches to your business name, logo, slogan, or anything you wish to trademark.

Step 3: Register Your Trademark with the USPTO

Once a comprehensive trademark search has been conducted, the next step in protecting your trademark is to register with the USPTO.  While simply using your mark will provide some common law protections, they are extremely limited and may only apply to the small region where the business is located.  For digital health companies, these geographic limitations could greatly impact your growth.  The only way to receive the presumption of nationwide validity is to register your trademark with the USPTO.

As the owner of a digital health startup, you should consider registering your trademark as soon as possible.  The date on which you file with the USPTO will become your national priority date, and no other business will be able to register a confusingly similar mark after this date.  For entrepreneurs in the digital health industry, where there’s no shortage of companies rushing to claim the next big idea, being the first to register is essential to protecting your brand.  Don’t wait until you’ve got a fully functional product before you consider trademark protections.  Start the process as soon as you’ve decided upon a unique mark.

Step 4: Consider International Registration

Digital health companies are global by design.  While a federal trademark registration provides valuable trademark protections within the United States, it does not protect against infringement internationally.  In order to protect your trademark internationally, you must register your trademark in other countries.  From developers to researchers, you may likely be doing business overseas already, and you will certainly gain international customers once you hit the market.   Develop an international trademark strategy that focuses on the countries your digital health company currently reaches, and the places you hope to reach in the future.  You will also want to consider registration in first-to-file countries like China and India, where bad faith registrations are common.

Fortunately, the process to register a trademark internationally isn’t as difficult as you might think, especially once you’ve already filed with the USPTO.  If you plan to register in only a few countries outside the U.S., you may want to file an application directly with each country’s trademark office.  If your strategic plan includes multiple international registrations, you may might want to consider using the Madrid Protocol, an international treaty that allows you to complete a single application, and then apply it to more than 90 member countries.  While the Madrid Protocol streamlines the application process, it does not guarantee approval.  That decision is made on a country-by-country basis.

Step 5: Maintain Your Trademark Registration

In order to protect your registered trademark, you must actively police it.  While the USPTO registers trademarks, it is important to note that they do not enforce the exclusivity of their use.  That is the responsibility of the trademark owner.  This can be a time-consuming task, but many trademark attorneys will provide monitoring services, and they will alert you to any possible infringement that may be detected.  Your attorney will also assess the situation and determine how best to proceed.  Often, a cease-and-desist letter is all that is needed to put an infringer on notice, however, in some cases, a more formal legal proceeding may be needed.

In addition to policing your mark, you must also maintain it through consistent use and renewal.  Be sure to continue using the mark as it appears on your federal registration, and meet renewal deadlines set by the USPTO.  For new trademark owners, your first renewal will need to be submitted between the fifth and sixth year of registration, and then again between the ninth and tenth year.  After that, your trademark will need to be renewed every ten years.  It is critical to be aware of these dates and to start the process to renew well before the deadline.  Failure to renew in a timely manner could lead to the cancellation of the trademark.

Protecting Your Digital Health Startup with a Trademark

There are many things to consider as you start your digital health company, from development to implementation, but trademark protection should be at the top of the list.  In order to protect the brand you’ve worked hard to create, you must create a strong mark and conduct a comprehensive search to ensure the mark isn’t already in use.  Next, register with the USPTO to gain the presumption of nationwide validity and legal protections against infringement.  As a digital company, you should consider international registration as well.  Finally, be sure to actively police your mark, and renew it on time to maintain trademark protections for as long as you continue to use the mark.

This post has been sponsored by Gerben Law Firm PLLC

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Josh Gerben

Josh Gerben

Josh Gerben is the founder of Gerben Law Firm, PLLC, a U.S based trademark law firm that has secured over 4,000 federal trademark registrations for clients since 2008. Trademark lawyer Josh Gerben has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more. As a business consultant and speaker, Josh also has a passion for helping other law firms start, manage, and grow their practice.

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