Florida district court finds doctor has trademark rights to his name, case has implications for use of Google Ad Words
Recently, the U.S. District Court for the Southern District of Florida issued a significant decision that adds to what is considered a limited body of national legal authority concerning whether doctors and other professionals can claim trademark rights in the use of their surnames. In this particular case, the court concluded that a Florida doctor (my client on behalf of Broad and Cassel) had trademark rights to his name and that the Google Ad Words used by a former partner in an online marketing campaign were likely to confuse patients. This case is significant for several reasons.
My client’s former partner attempted to exploit their former association by designating my client's name as a Google Ad Word. Ultimately, this move meant that patients would find a link to the former partner’s website when searching for my client. The former partner also registered six variations of my client's name as domain names so that when patients typed in, for example, "drsmith.com," they were automatically redirected to the former partner's website.
My client sued for false designation of origin, cybersquatting, false advertising, unauthorized publication of name and likeness, and unfair competition under Florida law. The judge ruled in our client’s favor on most of the claims. Of the most significance are two findings.
First, the court found that our client has trademark rights to his name. Under prevailing case law, professionals face significant challenges in protecting their names as trademarks. In this specific case, our client had used his name in the South Florida area to promote his skill and ability for nearly 20 years. The court found, in combination with his lectures, printed publications and professional marketing efforts that he had created a connection in the minds of patients and referring doctors between his name and his practice such that he could claim secondary meaning and acquired distinctiveness required for trademark protection.
Second, the court found that the Google Ad Words purchased by our client’s former partner were likely to cause confusion given that the two doctors were no longer practicing together. The appearance of the ads was confusing and gave patients the impression that the doctors were still practicing together.
Bottom line: Prior to this case, we are unaware of any reported cases concerning whether a doctor has trademark rights in his name. The body of law concerning whether professionals have trademark rights in their names is likewise not highly developed. In this digital age, this issue is increasingly becoming a hot-button issue for many professionals, and one that brand owners must be vigilant in fighting to protect their names and reputations.