Adoption of Pharmaceutical Trademarks for Approval: Navigating Differing Standards at the FDA and USPTO

A live 90-minute premium CLE video webinar with interactive Q&A


Tuesday, October 26, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, October 1, 2021

or call 1-800-926-7926

This CLE course will guide IP counsel on the complexities of the pharmaceutical trademark adoption process to support a successful launch of a company's new pharmaceutical product. In particular, the panel will discuss the challenges inherent in pharmaceutical brand development and approval, an overview of the pharmaceutical trademark adoption process from brainstorming to clearance, as well as the FDA trademark review process, and best practices to minimize the risk of rejection.

Description

While all potential trademarks face challenges in development and registration, adoption of brand names for new pharmaceutical drugs and biologics is one of the unique challenges faced by pharmaceutical companies. Brand names need to strike a balance between patient safety and product appropriateness. Development of a proprietary name is a creative endeavor yet often involves a formal process requiring collaboration of multiple disciplines. And, proposed proprietary names must go through a significant amount of due diligence based on regulatory, linguistic, and legal evaluations. From a marketing perspective, the brand name should be memorable, impactful, distinctive, and able to function as a global brand. But, from a legal standpoint, the proposed name must be available for trademark use, registrable with the U.S. Trademark Office and abroad, and meet the FDA's stringent regulatory requirements, as well as those of international regulators. Clearing all of these hurdles is necessary in order for a company to achieve its goal of a successful product launch.

The FDA and the USPTO, two independent government agencies, with two fundamentally different purposes and goals, oversee the approval of pharmaceutical trademarks using two very different review approaches, each independent of one another. In particular, the FDA focuses on patient health and safety concerns to avoid medication error. The USPTO focuses on likelihood of confusion as to source. FDA trademark approval is mandatory to use a brand name. USPTO trademark registration is not a prerequisite to use of a brand name but most pharmaceutical companies seek registration to protect their investment and goodwill in their brand names.

Listen as our authoritative panel examines the challenges and complexities of the pharmaceutical trademark adoption process, including the differing approaches to trademark review by the FDA and the USPTO and how to minimize the impact between the two. The panel will also walk through the pharmaceutical trademark adoption process, including selection and clearance, as well as the FDA trademark review process. Finally, the panel will discuss best practices to minimize the risk of rejection.

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Outline

  1. Challenges to pharmaceutical trademark development and approval
  2. Differing approaches to trademark review by the USPTO and the FDA
  3. Overview of the pharmaceutical trademark adoption process
  4. Overview of the FDA trademark review process
  5. Best practices for adopting and clearing pharmaceutical trademarks and reducing the risk of rejection

Benefits

The panel will review these and other priority issues:

  • What unique challenges do pharmaceutical companies face in seeking to adopt trademarks for pharmaceuticals and biologics?
  • What are the differences between the FDA trademark review process and the USPTO trademark review process, why, and what are the consequences?
  • What best practices should companies employ for adopting and clearing pharmaceutical trademarks?

Faculty

Tannen, Ilene
Ilene B. Tannen

Of Counsel
Jones Day

Ms. Tannen specializes in trademark and copyright law and practices in the firm’s global Trademarks, Unfair...  |  Read More

Piergrossi, Scott
Scott Piergrossi

President
Creative Brand Institute

Mr. Piergrossi serves as executive creative director for the company’s global brand naming projects and is...  |  Read More

Attend on October 26

Early Discount (through 10/01/21)

Cannot Attend October 26?

Early Discount (through 10/01/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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