February 4, 2020,

The Value of Protecting Your Brand

I speak to business owners and entrepreneurs everyday about how to protect their business name, logo or slogan with a federal trademark registration. I often hear: “It’s too expensive”, “It’s not necessary for my business right now”, “I’ll do it myself” Or “I’ll do it later when my business is making more money”. My response is always the same: What is your business worth to you? Why risk losing all of you have worked hard to build by failing to protect your mark with a federal trademark registration? This is not an exaggeration: If you don’t see the value in protecting your business name, slogan, logo or product name; someone else will take your mark and they will use it to either compete with you directly or to profit from the good will and reputation that you have built in your business. Think it can’t happen to your small business? It can happen to any business, large or small. Oviedo ER vs AdventHealth Oviedo ER: There is a lawsuit currently pending in federal court in Orlando between Oviedo Medical Center, LLC, whose corporate parent is HCA Healthcare, Inc., and Adventist Health Systems/Sunbelt, Inc. This lawsuit is a dispute over the right to use the name “Oviedo ER”. The undisputed facts are that Oviedo Medical Center was using the mark “Oviedo ER” on its emergency room facility years before AdventHealth broke ground on their “AdventHealth Oviedo ER” facility in 2018. Despite the letters that were sent by attorneys for Oviedo Medical Center to AdventHealth on 11/16/18, 1/2/19 and 4/17/19, informing AdventHealth of Oviedo Medical Center’s claims to the mark “Oviedo ER” and demanding that AdventHealth cease using the name “Oviedo ER” for its facility; AdventHealth opened its “AdventHealth Oviedo ER” facility on 10/17/19. Why couldn’t Oviedo Medical Center stop AdventHealth, a direct competitor, from opening a competing facility less than 1 mile away from their location that uses “Oviedo ER” as part of its name? The answer is simple: at the time Oviedo Medical Center’s attorneys sent letters to AdventHealth, Oviedo Medical Center did not have a federal trademark registration for the mark “Oviedo ER”. How to gain rights in a trademark: It is true that a federal trademark registration is not required in order to obtain legally enforceable rights in a trademark. Rights in a trademark come from consistent and continuous use of the mark in commerce over time. The longer the mark is used, the more rights are gained. However, common law trademark rights are not nationwide but are limited to a particular geographic area. Generally this is the geographic area where you focus your advertising and marketing efforts, the area where most of your clients or customers are found or where you do most of your business. Typically, this is the geographic area where your business is physically located; your city or county for example. The benefit of a federal trademark registration is that it provides the trademark owner with the legal presumption that they are the rightful owner and exclusive user of their trademark in the entire U.S. As a result, with a federal trademark registration, you can prevent others from using the same or a confusingly similar name, slogan or symbol anywhere in the U.S., no matter where your business is physically located. The bottom line is that if you want the legal right to prevent anyone else in the U.S. from using your mark, you need to have a federal trademark registration for your mark. Oviedo Medical Center realized this (finally) and its attorneys filed applications to register its “Oviedo ER” mark with the U.S. Patent and Trademark Office (USPTO) in April 2019; prior to filing its lawsuit against AdventHealth in August 2019. On 10/15/19, Oviedo Medical Center obtained two federal trademark registrations for its “Oviedo ER” mark. The lesson is simple: If you value your mark, protect it with a federal trademark registration as soon as possible. Waiting to file a federal trademark application only makes it easier for a competitor to steal or misuse your mark. The earlier you can obtain a federal trademark registration, the easier it will be for you to protect your mark from being misused by others in the future. Don’t wait. The time is now to protect your brand with a federal trademark.