Protecting Yourself, Being the Bad Guy

I recently had a protracted discussion with some friends and acquaintances regarding this case.  It involves the unfortunate circumstance of a very noble non-profit organization losing a trademark infringement suit to a private veterinary clinic and being forced to rename itself.  I’ll address a few aspects of this suit, explain why the plaintiff did what they did, and offer advice for how to avoid similar circumstances.

The parties in question are the trademark holder, “Heartland Animal Clinic” (“HAC”), and “Heartland SPCA” (“HSPCA”).  Both provide veterinary services, with the former operating as a private clinic and the latter as a non-profit, charitable organization.  The suit arises because HAC feels, rightly so, that they have invested in their name and deserve the rights afforded under trademark law to prevent others from using that name.  HAC began using its name before HSPCA, and thus, unless there is another vet using a name similar to HAC’s, HAC likely can claim trademark protection.

A trademark can only be obtained when the mark is used in commerce.  When that mark is obtained, it is limited to those goods and services for which it has been used commercially.  In this instance, HAC’s mark is limited to veterinary services.  It just so happens that HSPCA not only uses a similar name, but is also engaged in providing veterinary services.

Every good-hearted person will feel some distaste with this situation and ask “How can HAC act so insensitively to such a noble institution such as HSPCA?”  The unfortunate truth is, if HAC wants to have a defensible trademark, they have no choice except to go after HSPCA.  If HAC were seen to permit HSPCA to use such a similar name for their business, HAC would not be “policing” their trademark, meaning keeping other people from using the same or similar marks.  A trademark’s value is in its ability to identify a particular entity with a particular mark.  If a mark becomes associated with more than one entity, it loses its value and can no longer be protected by trademark law.  In this instance, if the term “Heartland” were to become associated with both HAC and HSPCA, HAC could hardly claim “Heartland” was unique to them in the veterinary services world.  Therefore, HAC must choose between going after everyone and going after no one.  When viewed from this perspective, HAC’s actions seem more understandable.

In my view, the fault in this situation rests squarely with HSPCA.  Please hear me out before closing this page.  Before HSPCA adopted its new name, HAC was happily conducting its business and building its reputation and its brand.  It is a safe assumption that a quick online search would have revealed HAC’s existence.  When deciding on a new name, HSPCA could have conducted such an online search and learned about HAC.  At that point, HSPCA could have gone to HAC and asked for permission to use “Heartland.”  HAC would have almost certainly said no, given the litigation that has occurred.  But, at least both sides could have avoided the expense, headache and heartache of litigation that has arisen as a consequence of HSPCA’s uninformed choices.

A lesson to be learned is that whenever you are entering the marketplace, be it by starting a new business or releasing a new product, you would be well served by searching the USPTO database for registered trademarks as well as the Secretary of State website for your state for any state trademark registrations.  Foregoing these, simply conducting an online search could reveal conflicts with names you have been thinking of, and save yourself from lots of trouble later on.