Clearing and obtaining rights to pharmaceutical trademarks presents unique challenges unlike those associated with trademarks used in other fields. In addition to navigating the U.S. Patent & Trademark Office, the pharmaceutical trademark lawyer must counsel his or her client regarding the FDA regulatory hurdles that go along with securing a chosen product name. After all, it does the client no good to successfully secure a Notice of Allowance if the FDA ultimately rejects the trademark during its drug name review process. And the FDA gives no deference to U.S. Patent & Trademark Office decisions on registrability of trademarks. This is why it is critical to be mindful of both the U.S. Patent & Trademark Office’s approach and the FDA’s approach to approving chosen pharmaceutical trademarks.
Here are some quick points and tips (not by any means an exhaustive list) to keep in mind as you navigate the pharmaceutical trademark minefield:
- You may submit up to two trademark names at a time to the FDA for approval, a process which takes approximately 3 years
- Be careful about names that imply efficacy, risk, indication, superiority, or that are overly fanciful
- Handwriting Analysis: Be mindful of potential confusing similarity between trademarks when they are handwritten, even if they are otherwise visually different when typewritten, or phonetically different; we all know that doctors are not known for having the best penmanship!
- Verbal pronunciation analysis: even if 2 respective trademarks are visually distinguishable, if they sound the same when spoken verbally, this will weigh against ultimate approval
- You may very well need to consider the trademark registration process and drug approval process in a foreign country if the product will be marketed and sold internationally; for example, the regulatory agency for the evaluation of medicinal products in the European Union is EMEA (European Medicines Agency). EMEA has its own process and rejects approximately 50% of proposed trademark names
Our team here at Lombard & Geliebter LLP has extensive experience representing pharmaceutical companies in connection with their trademark matters. If you have any questions relating to the pharmaceutical trademark law, please call Mathew Lombard or Darren Geliebter at 212-551-1755 or reach us by email: firstname.lastname@example.org.