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The Zest

Med spa, IV therapy and wellness clinic names: trademarking in Class 44

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Med spa, IV therapy and wellness clinic services are filed in Class 44, the class for medical care, health spa services, and hygienic and beauty care. The refusals to expect are a conflict with a similar name for related services, descriptive words like "med spa" or "IV" that you'll likely have to disclaim, place names, and a specimen problem if you file before you open. Any products you sell under the name, like supplements or skincare, are separate classes.

What does Class 44 cover?

The class heading in the Nice Classification, which the USPTO uses, starts with "Medical services" and includes "hygienic and beauty care for human beings or animals." The explanatory note says Class 44 includes "mainly medical care, including alternative medicine," along with health spa services and "dietary and nutritional advice."

The entries on the Class 44 list that med spas and clinics tend to use include:

  • medical clinic services
  • health spa services
  • beauty salon services
  • massage
  • plastic surgery
  • alternative medicine services
  • aromatherapy services
  • telemedicine services
  • dietary and nutritional advice

There's no entry for IV therapy on that list. That doesn't move it out of Class 44. It means you describe the service yourself, in plain words. The TMEP, the manual USPTO examining attorneys follow, requires an identification that is "specific, definite, clear, accurate, and concise." A vague phrase like "wellness services" won't get through.

What doesn't go in Class 44?

Two things trip up clinics. First, the Class 44 note excludes "health clubs for physical exercise," which go in Class 41. If your clinic also runs fitness classes, that's another class.

Second, the goods you sell. The Class 5 heading covers pharmaceuticals and "dietary supplements," and the Class 3 heading covers "non-medicated cosmetics and toiletry preparations." A clinic that sells its own vitamin line or aftercare skincare under the clinic name needs those classes too. I explain how to word each one in the article on goods and services descriptions.

The most common refusal for any name is likelihood of confusion under § 2(d). The TMEP calls the similarity of the marks and the relatedness of the goods or services the key considerations. The services don't have to be identical. They only need to be related "in some manner," or marketed in a way that could lead to a mistaken belief that they come from the same source.

For med spas this matters because the category overlaps so much. A day spa, a dermatology practice, a salon and an IV lounge can all sit near each other in a shopper's mind. The TMEP also recognizes that goods and services can be related, so a skincare registration can come up against a med spa application.

Refusal two: descriptive words in the name

Clinic names tend to say what the clinic does. Under § 2(e)(1), the USPTO refuses names that are "merely descriptive," meaning they describe "an ingredient, quality, characteristic, function, feature, purpose, or use" of the services or "immediately convey" that information.

Words like "med spa," "IV," "drip," "hydration" and "aesthetics" tell a patient what the service is. On their own, they're likely to be refused. Inside a longer name, the USPTO typically requires a disclaimer of descriptive or generic wording. The TMEP describes a disclaimer as giving up exclusive rights in the disclaimed wording apart from the mark as shown.

Here is the part that surprises people. After the disclaimer, your protection rests on whatever else is in the name. If the rest of the name is strong, that's fine. If the rest is a city name or another descriptive word, there may not be much left.

Refusal three: the place name

Lots of clinics name themselves after a neighborhood or city. The TMEP's test for a geographically descriptive mark under § 2(e)(2) asks whether the primary significance of the mark is "a generally known geographic location," whether the services come from that place, and whether purchasers would believe they do. When a clinic operates in the place it's named for, that association "may ordinarily be presumed." I wrote more about this in the article on geographic names.

Refusal four: filing before you open

A Class 44 application based on use requires services you're actually rendering. The TMEP says announcing a future service, including taking advance reservations, is not service mark use. It cites Aycock Engineering v. Airflite, where the Federal Circuit said mere preparations to use a mark aren't enough. A "coming soon" page also signals that the services aren't in use yet.

If you're still building out the space, the intent-to-use basis is the right fit. You file now, then show use once patients are coming in. The specimen at that point has to show a "direct association between the mark and the services," like a webpage or brochure that uses the name in offering the services. I explain what works in the article on specimens.

What this means for your clinic

Before you file, check your name against each of these:

  1. Is anyone using a similar name for spa, beauty, medical or skincare goods or services?
  2. Which words in the name just describe the service, and what's left if those are disclaimed?
  3. Does the name include a place where you operate?
  4. Are you open yet, or should this be an intent-to-use filing?
  5. Do you sell products under the name that need their own classes?

If you're naming a med spa or clinic and want to see how the search and Class 44 filing work, the packages are laid out on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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