Dental and Medical Counsel Blog

What to Consider When Protecting the Intellectual Property of Your Dental Practice

By Ali Oromchian Esq

Intellectual PropertyWhen seeking to protect your dental practice’s intellectual property, the technical nature of the terminology involved can seem burdensome and complex. One of the best ways to remedy any concerns related to your intellectual property is to become more familiar with this language and lingo. Being able to distinguish the differences between them is key. Primarily, you will need to know the difference between a trademark, a copyright, and a patent, and how they might interact with one another. This is important to keep in mind once you buy a dental practice or start one from scratch, as protecting your brand and its reputation is key to building and maintaining a successful practice. Secondarily, you will need to consider the importance of obtaining legal counsel who is knowledgeable in this area.

Trademark

A trademark protects a name or logo that is found on goods or used as part of a service. The term service mark may also be used, in particular for the use of the name or logo as part of a service. Trademarks and service marks are typically composed of a word or words, designs, symbols, or other language that identifies that products or services are unique and distinct from others. A trademark lasts for ten years after it is registered but can additionally be renewed every ten years. For a dental practice, an example of what you would likely trademark is the practice name or a specific phrase that you use in your advertising.

It is critical to understand that simply because you have formed or incorporated a dental business, that it does not give you trademark rights to use that practice name. Traditionally, a state only allows one entity with a specific registered name to exist within the bounds of its borders. However, that does not mean that an entity in a neighboring state might not have the same exact business name as you. In order to protect your investment and have legal rights to the use of your name, you will need to create a trademark and federally register it.

When registering your trademark, you gain the legal presumption that you own the rights to utilize your mark on the products and services that you provide in your registration documentation. If you register with a state, you only have that presumption within that state. If you federally register, it extends to the United States and its territories. A legal presumption means that it is presumed that you own the rights to your mark, but a party can come in and challenge that. In essence, registration puts the public on notice that you own the rights to your mark. This also allows you to file suit in federal court.

Registration of your trademark through the federal process includes you on the United States Patent and Trademark Office database. While this database does only search federal registrations and not state registrations, it provides a conflict-checking mechanism which prevents anyone from filing a confusingly-similar trademark. This includes trademarks with similar-sounding or similarly spelled names. In addition to registration with the federal database, registering also allows you to work with U.S. Customs and Border Protection to limit the infringement and counterfeiting of imports similar to your trademark. Related, once you have your federal registration complete, you can utilize that to obtain use of your mark in foreign countries.

Copyright

A copyright protects “original works of authorship” which arise out of any tangible medium. This is a very broad description of the types of work that are covered by a copyright; examples include artwork, literary works, and musical works, while a specific example related to your dental practice may be the design of a character who is your practice’s mascot. In addition, copyrights protect works that are both published or unpublished. This means that if you have created some artwork in the privacy of your home or studio and have never put it on public display, you still have the copyright to those works. More specifically, you have the exclusive rights to make copies, change, adapt, disseminate, perform, and display that work. 

A copyright has a range of applicable lengths which boils down to the type of medium that the work is or who created it. For example, if you are an individual who created a piece of artwork on or after January 1, 1978, your artwork is protected from the moment of its inception and lasts until seventy years after your death. If you create a joint piece of artwork on or after January 1, 1978, your artwork is protected from the moment of its inception and lasts until seventy years after the last surviving creator’s death. To make things even more complex, if a work is made for hire (i.e. you contract with someone to design something specifically for you) or if the work is anonymous or pseudonymous, the copyright exists for 95 years from the date of publication or 120 years from the date of creation, whichever of those is shorter.

In the same way that a registration is not required for trademark, it is also not required for a copyright. However, simply registering your copyright helps you build a history of your work. For instance, it denotes your copyright in the public record. Further, before suit can be filed against someone for infringement, you must register your copyright. There is also some incentive to registering sooner rather than later. For example, if you register your copyright prior to or within five years of publication, courts will recognize that registration as prima facie evidence (i.e. evidence on its face) that your copyright is valid. This simply means someone else will have to challenge that registration to prove that it is invalid. Additionally, if you register within three months after you publish your work for the first time, you can file for statutory damages and attorneys’ fees in addition to the actual damages and loss of profits that you might normally be able to claim. Lastly, registering your copyright will allow you to register with the U.S. Customs service which can assist with protecting infringed copies of your work from being imported.

Patent

A patent protects the property rights of an invention by giving those rights to the inventor. It specifically allows “the right to exclude others from making, using, offering for sale, or selling” that invention or importing same into the country. Three types of patents exist, each for a different use. Firstly, a plant patent exists solely for the purpose of the discovery, invention, or asexual reproduction of a unique variety of plant. Secondly, a utility patent exists for protecting the invention of processes, machinery, articles of manufacture, creation of matter, in any new or useful utility. Thirdly, design patents exist to protect the development of “new, original, and ornamental design” for the creation of manufacture of a product. Related to your dental practice, a new product or process would be something you would want to obtain a patent for.

A patent traditionally lasts for twenty years from the filing date of the patent when filed in the United States. The exception to this rule is when a new patent is filed but it is connected to a related patent that was filed earlier; these relate back to the date of the originally-filed patent. Any patent granted by the United States Patent and Trademark Office is only applicable to the United States and its territories. Further, once a patent is granted, the holder of the patent becomes the party who enforces their rights to the patent.

Legal Representation

The one question everyone asks themselves is “Do I need a lawyer?” The answer is a resounding “Yes!” While it is theoretically possible to go through any application process without legal representation, it would be very difficult. The application processes involved are all highly technical and most parties involved in obtaining copyrights, trademarks, and patents consult legal counsel. These can make any legal battles losing battles if you are unprepared.

Attorneys that are well-versed in intellectual property know how to navigate special databases, determine the eligibility and validity of marks prior to filing, and know how to enforce your rights on strict timelines. This will assist in avoiding recurring issues, potentially increase the likelihood that you do things right the first time and allow for the enforcement of legal claims against anyone who may infringe on your rights. There are special federal courts that hold sessions related to patents, trademarks, and copyrights, and you will need an attorney familiar with the rules in those courts to represent you. You will also need legal counsel to help you maintain your legal documents, develop video and release forms so that you can publicize your dental work, and overall keep your dental practice in good standing.

While the above concepts may seem very specific, the depth of research and the expertise needed to successfully explore this area go even further into detail. You will need to understand the basics related to copyrights, patents, and trademarks, but you will need a wealth of knowledge from legal counsel to support you further. All of these considerations will need to be made when seeking to protect your intellectual property, your dental practice and overall, in order to be successful in those avenues.

Posted on 05/16/2018 at 08:57 AM

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