11. Similarly, product features that are functional are not subject to protection as a trademark. Functional features
are protectable, if at all, under the patent laws.
12. The ® symbol can be used only with registered trademarks. The TM symbol can be used with unregistered marks. Use of these
symbols is not required but recommended.
13. Federal registration is critical to any program to protect the rights of a trademark owner. Without it, a third party
may obtain federal registration of the mark, thereby significantly limiting one's rights. Federal registration also gives
rise to several important statutory rights, and can be important in terms of establishing nationwide priority to use the mark.
14. The technical requirements of application and renewal are set forth in Section 1(a) of the Lanham Act, 15 USC §1051, et
seq, and in: Hannon, ME. Trademark Manual of Examination Procedures (TMEP). 3rd ed. Washington, DC: US Government Printing
15. Federal applications for registration under certain circumstances may be available based upon intent to use a mark, rather
than actual use of the mark in commerce, which can be important for priority and notice purposes.
16. Drug names face additional requirements, including review by the FDA.
17. Other important causes of action include trademark dilution for famous marks, false advertising claims under federal and
state law, and unfair competition claims. Additionally, pharmaceutical manufacturers must understand detailed regulations
and oversight by the FDA and FTC regarding advertising of drugs, dietary supplements, and cosmetics.
18. There have been suggestions that greater care should be taken to avoid confusion in connection with medication and pharmaceutical
names, given the potentially severe consequences of confusion. See Morgenstern Chem Co v GD Searle & Co, 253 F2d 390, 393 (3d Cir 1958) ("In the field of medical products, it is particularly important that great care be taken
to prevent any possibility of confusion in the use of trade-marks" [citations omitted]). See also Syntex Labs, Inc v Norwich Pharmacal Co, 437 F2d 566, 569 (2d Cir 1971) (confusion of drugs could result in physical harm to the consuming public, "[h]ence a stricter
standard in order to prevent the likelihood of confusion seems desirable"); 5 J Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition §23:32 (4th ed 2004) ("proper to require lesser quantum of proof of confusing similarity for drugs and
medicinal preparations"); 3A Louis Altman, Callman on Unfair Competition, Trademarks & Monopolies §21:10 & nn 121-132 (4th
ed 2004) (collecting authorities).
19. Examples of recent infringement actions related to pharmaceuticals include the following: Trovan Limited v Pfizer Inc, 107 Fed Appx 788 (9th Cir 2004) (producer of electronic tracking devices for veterinarians sued Pfizer for marketing antibiotics
under its name "Trovan;" held consumer confusion unlikely given goods unrelated, different marketing channels, and purchaser
care); Kos Pharmaceuticals, Inc v Andrx Corp, 369 F3d 700 (3d Cir 2004) (injunction ordered in action by owner of mark "Advicor" used for anticholesterol drug against
competitor's use of "Altocor" mark for similar drug); Eli Lilly & Co v Natural Answers, Inc, 233 F3d 456 (7th Cir 2000) (injunction ordered against use of mark "Herbrozac" for a herbal "mood elevator" due to likelihood
of confusion and dilution of "Prozac" mark); Pfizer, Inc v Y2K Shipping & Trading, Inc, 70 USPQ2d 1592 (EDNY 2004) (holding mark "Triagra" for "herbs for erectile dysfunction" sold over the Internet infringed Pfizer's
Perry J. Viscounty, J.D., is a partner and global co-chair of the Intellectual Property, Media, and Technology practice of Latham & Watkins LLP, 650
Town Center Drive, 20th Floor, Costa Mesa, California 92626, 714.755.8288, fax 714.755.8290, email@example.com
Amos E. Hartston, J.D. is a litigation associate at Latham & Watkins LLP, 633 West Fifth Street, Suite 4000, Los Angeles, California 90071, 213.891.8315,
fax 213.891.8763, firstname.lastname@example.org
Heather Mayer is a litigation associate at Latham & Watkins LLP, 633 West Fifth Street, Suite 4000, Los Angeles, California 90071, 213.891.7869,
fax 213.891.8763, email@example.com