To obtain a federal trademark registration, one must apply by filing an application in the US Patent and Trademark Office.14 The application must include, among other things, the date of first use, a sample use, and a verified statement that the
mark is being used in commerce and that no other person has the right to use the mark.15 If the application is accepted as meeting the requirements for registration and not confusingly similar to an existing trademark,
it will be published for opposition. An opposition may be filed by anyone who believes he or she would be damaged by the granting
of the registration. If no successful opposition is filed, a certificate of registration will be issued.16
The two key components of trademark infringement are: (1) the trademark is protectable, and (2) the allegedly infringing mark
is likely to confuse consumers as to source or sponsorship of the product.17 The ultimate inquiry in trademark infringement cases is whether, considering all circumstances, a likelihood exists that
consumers will be confused by the similar marks. Courts have identified several factors as guidelines for evaluating the likelihood
of confusion, including (1) strength of the mark, (2) similarity of the two marks, (3) relatedness of the goods or services,
(4) evidence of actual confusion in the marketplace, (5) marketing channels used, (6) likely degree of customer care or sophistication,
(7) intent in selecting a similar mark, and (8) likelihood of expansion of product lines. It is the totality of the facts
in a given case that is dispositive.18 Various courts and commentators have listed additional considerations, and have given particular weight to certain factors,
depending on the specific circumstances.19
Trends and Tips
Developing the best branding campaign involves market research, professional advertising, and legal assistance. One should
not underestimate the importance of trademarks and advertising in today's competitive marketplace. Recent trends include direct
marketing to consumers through mass media (rather than narrower marketing to medical professionals) and increased use of the
Internet. Knowing and understanding one's market, one's target customers, and one's competitors, plus the legal procedures
for trademark protection and applicable Food and Drug Administration (FDA) and Federal Trade Commission (FTC) rules, is critical
to developing a trademark and advertising strategy.
References and Notes
1. The Copyright Clause of the US Constitution provides Congress with authority "To promote the Progress of Science and useful
Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."
US Const Art I, §8 cl 8.
2. The following works are generally not entitled to copyright protection: titles, names, short phrases or slogans, mere variations
of typographic ornamentation, lettering or coloring, and mere listings of ingredients or contents.
3. Before 1978, federal copyright rights were generally secured by the act of publication with notice of copyright, assuming
compliance with all other relevant statutory conditions.
4. While registration is not required, registration has a number of statutory advantages.
5. Special deposit requirements exist for computer programs and other works, such that proprietary materials can be redacted
and trade secrets protected under certain circumstances.
6. Statutory damages can range from $750 to $30,000; however, where the infringement was willful, a court may increase the
award up to $150,000.
7. For drug labels, copyright protection may be limited. The Hatch-Waxman Amendments to the Federal Food, Drug, and Cosmetic
Act require generic drug sellers to use the label approved by the FDA; accordingly, copyright liability does not attach.
See SmithKline Beecham Consumer Healthcare, LP v Watson Pharmaceuticals, Inc, 211 F3d 21 (2d Cir 2000).
8. The Lanham Act is the common name for the Trademark Act of 1946, as amended, 15 USC §1051, et seq.
9. Federal trademark registration lasts for 10 years, subject to indefinite 10-year renewals. States vary as to the terms
of trademark registrations and requirements.
10. Through extensive use and advertising, such terms may take on a "secondary" meaning as a source identifier.