The Importance of Trademark Prescreening in Pharmaceutical Naming Projects
Naming a pharmaceutical product is a complex and critical task that extends far beyond creativity and branding. In the pharmaceutical industry, trademark prescreening is an essential step to ensure that your chosen name is not only distinctive but also legally available. The consequences of overlooking this step can be severe, including regulatory setbacks, legal disputes, and costly rebranding efforts. Not conducting trademark research before name reviews can be detrimental to the core team and executives who become familiar with or even attached to a name that should not have been presented.
What is Trademark Prescreening?
Trademark prescreening involves a detailed search to determine whether a proposed drug name is available for use and registration as a trademark. This search should be conducted early in the name creation process to avoid potentially problematic name candidates moving forward and should be conducted in parallel to regulatory prescreening, which focuses on identifying potential conflicts in submitting your potential name for regulatory approval.
Why is Trademark Prescreening Crucial for Pharmaceutical Branding?
Avoiding Legal Conflicts: Pharmaceutical products are categorized under trademark class 5 by the United States Patent and Trademark Office (USPTO), which includes over 8.9 million active trademarks in that class (5) alone. The pharmaceutical industry is highly competitive, and companies are quick to defend their trademarks. A name too similar to an existing trademarked drug can lead to legal challenges, including costly lawsuits and injunctions. Prescreening helps ensure your chosen name is unique and legally defensible.
Preventing Medication Errors: Confusing drug names can have serious consequences for patient safety. Trademark prescreening supplements your regulatory review in evaluating how a name sounds and looks in comparison to existing drug names to improve patient safety and prevent medication errors.
Global Brand Use: Pharmaceutical companies often operate in multiple countries, meaning you’ll need to navigate the terrain of various global trademark and regulatory authorities. Trademark prescreening ensures that the chosen name is not only available but also acceptable in all intended markets, preventing costly rebranding efforts in the future.
Streamlined Process: Reviewing names that are already taken can cause unnecessary fatigue and become time consuming. Trademark prescreening optimizes timing for successful names so brand teams have more time to develop visual positions and communications components for launch readiness.
The Trademark Prescreening Process for Pharmaceuticals
1. Define Your Trademark Strategy: By defining the classes and regions in which you plan to register your mark, you can ensure your trademark prescreen is focused and comprehensive.
2. Preliminary Trademark Search: During the initial name generation, conduct a search in trademark databases, focusing on the appropriate databases (trademark class and region) for your asset. This helps identify any obvious conflicts with existing trademarks in the pharmaceutical brand name space. We recommend utilizing an attorney-level tool like Corsearch or Saegis for your preliminary search or working with an agency that has upfront trademark and regulatory prescreening built into their creative process. However, if you’re looking for free tools to supplement this process, see our blog: 5 Free Tools to Supercharge Your Pharmaceutical Naming Efforts.
3. Phonetic and Orthographic Evaluation: As you review names, pay attention not only to the trademark class but also to the proximity of the goods and services and the phonetic and orthographic similarity of any conflicting names.
Phonetic Similarity: Do the names sound similar when pronounced aloud?
Orthographic Similarity: Do the names look similar? Pay attention to upstrokes and downstrokes. An l and a b, for example, may not sound similar but could be confused in a handwritten prescription.
4. Legal Consultation: Once you have your top list of name candidates, it’s important to work with a trademark attorney who specializes in pharmaceuticals to conduct a comprehensive trademark search and evaluate the name’s registrability. They can also provide guidance on navigating international trademark laws and regulations.
Conclusion
In the pharmaceutical industry, where the stakes are incredibly high, trademark prescreening is a non-negotiable step in the name creation process. It’s not just about creating a name that resonates with healthcare providers and patients; it’s about ensuring that the name is legally available, safe, and compliant with regulatory standards. By conducting thorough trademark prescreening, you can avoid costly legal disputes, reduce the risk of regulatory rejection, and protect your investment in bringing a new drug to market.
When it comes to naming pharmaceuticals, due diligence in trademark prescreening isn’t just good practice—it’s essential for success.