Helped Clients Recover Over $25 Billion. Since 1979.
Helped Clients Recover Over $25 Billion. Since 1979.
We help digital health companies with two things: registering their brand names with the USPTO, and negotiating the contracts they sign with healthcare customers and software developers. Our clients include health apps, medical device brands, health plans, and companies that build software for medical practices.
Trademarks: Applications
We file trademark applications for health apps, medical devices, clinician training programs, and health plans.
Trademarks: Office Actions
When the USPTO refuses or questions an application, we prepare and file the response.
Trademarks: Statements of Use
When an intent-to-use application is allowed, we file the proof of use the USPTO needs to register the mark.
Contracts: Software Development
We draft master services agreements, statements of work, and contractor IP assignments for companies building software for healthcare customers.
Contracts: HIPAA Business Associate Agreements
We prepare and review business associate agreements for vendors that handle patients’ health information.
Can we trademark a health app’s name?
Yes, as long as it’s distinctive. It also can’t conflict with an existing mark. Names that describe the condition or treatment are often refused, so we review the choice before filing.
Our registration was cancelled after a missed filing.
A cancelled registration usually can’t be revived, but you can file new applications if you’re still using the mark. Rights from your ongoing use continue in the meantime.
We’re building software for a medical practice.
Your agreement should cover the scope of work, who owns the code, and how patient information is handled, usually through a separate HIPAA business associate agreement.
What isn’t covered here?
This page covers trademarks and contracts. We don’t handle FDA clearance or patents, and we coordinate with regulatory or patent counsel when a product needs them.
We’re based outside the U.S.
The USPTO requires foreign-domiciled applicants to file through a U.S. attorney. We handle the filing and the correspondence that follows.
Experience
David Lizerbram has practiced business law for more than two decades. Benjamin Schenk founded and runs a commercial real estate investment and asset management firm.
Trademark Depth
Our trademark practice handles health and medical brands from application through registration and renewal.
Healthcare Context
Our healthcare practice means we understand the rules a health company’s customers work under.
Case Study
A clinical researcher behind a mental health treatment program was building a mobile app for patients and clinicians. We answered the USPTO’s objections to the app’s trademark application and to a related mark for training clinicians, and both moved forward to publication. Once the app went live, we filed the proof of use the USPTO needs to register the mark.
Case Study
A health plan had lost its U.S. trademark registration after a required maintenance filing was missed, though it was still using the mark. We prepared and filed new applications for its name and its logo. Because the company is based outside the United States, it needed U.S. counsel to file.
Case Study
A company that sells pain-management and rehabilitation devices wanted to protect the brand for a new product line. We filed the application, and the USPTO approved it and published it for opposition.
Client names and identifying details are withheld. Results depend on the facts of each matter, and past results don’t guarantee a similar outcome.
The Schenk Law Firm is based in North Park, San Diego. Our trademark work covers health companies in every state and abroad.
Our full healthcare business practice.
Customer contracts and trademarks for tech companies.
Trademark searches, applications, and protection for brand names and logos.
Responses when the USPTO refuses or questions an application.
Keeping a registration alive with its maintenance filings.
Founder equity and investment rounds.
Whether you’re naming a product, answering the USPTO, or signing a healthcare customer, we can help.
Contact us today to discuss your digital health company.
Request a ConsultationIt’s a trademark application filed before the mark is in use. It reserves your priority date, and the mark registers after you file proof of use.
Under HIPAA, it’s a vendor or partner that handles protected health information for a healthcare provider or plan. A business associate agreement sets the rules for that information.
Without a written assignment, the contractor may keep rights in it. Development agreements should assign the work to the company.
Often a year or more from filing, depending on the USPTO’s backlog and whether the examiner raises any issues.