Imagine a name that has just been created with the hope that someday it will be a registered trademark. Let’s call it Flurdaxol. Flurdaxol is the someday name of a someday oncology drug. That means it will be registered in Class 5, where all pharmaceuticals are. Obviously, you want to make sure that Flurdaxol is not already the exact name of an existing drug. Also, you want to make sure that it is not close to another name of any drug already on the market or registered by someone else. You want Flurdaxol to pass FDA regulatory scrutiny and not get “dinged” with an infringement claim.
To continue with our hypothetical mark research, we find the name Filoxal. Is this too close to our new potential mark Flurdaxol to constitute a potential conflict? Maybe, but what we are going to explore below is Filoxal’s descriptions of goods and services that have a lesser, but still material and relevant weight to any potential infringement claim. What could Filoxal’s goods/services say and what does what it says mean for Flurdaxol?
There are typically four kinds of pharmaceutical goods/services:
- A specific description of the product and exactly what it treats.
Example: A pharmaceutical preparation used in the oncology to treat tumors.
These goods/services would mean Filoxal is a potential conflict as it is attached to a product with a specific purpose close to our new compound.
- A generic description that gives basic information:
Example: Pharmaceutical preparations and substances.
These goods/services are so non-descript that there is a chance that it is a registered mark, but is not yet in use or attached to a product. More research will be necessary to verify. But Flurdaxol has a better chance under these goods/services.
- A placeholder that lists a variety of possible uses that could be different from one another.
Example: Analgesic preparation; anti-infective preparation; immunological preparation; antiviral preparation; antiemetic; used for treating phlegm, urinary incontinence, diabetes, cardiovascular disease and abnormality, cerebrovascular disease and abnormality, anxiety, depression, insomnia, cognitive impairment
This could mean the owner of Filoxal has multiple drugs that treat multiple disorders and Filoxal is being considered as the name for one of those drugs. It does not necessarily mean it will be used. But that intention is a danger to our new mark. Flurdaxol could be contested and rejected by FDA or the USPTO.
- The “boilerplate” international class 5 goods/services
Example: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
This just means they have registered the name and it may or may not be in use or attached to a product and further research will need to be conducted to be sure. Flurdaxol has a shot with these goods/services.
Pharmaceutical names must be distinct from each other to avoid confusion. While the names themselves hold the most important weight in determining any potential conflict, the goods/services can tell you what the possible status of use is for any mark with which it might conflict. In “First to File” countries –most countries outside of the US and Canada– companies will register names in order to hold them for later use or to sell the rights for a profit. Sometimes, a company will register a name and never use it and be willing to sell the name to another company or to exchange it for a name or names they like. Most of the time it is better not to risk it and just go with a name that has a lesser risk.