Clearing a Global Pharmaceutical Trademark

Pharmaceutical companies generally plan to sell their pharmaceutical products in more than one country. Ideally, they will seek a product name that can be used in every country where they plan to sell the product. When clearing potential product names, companies should carefully adopt a plan that considers timing and budget considerations, as clearing name candidates in multiple countries can be time-consuming and very expensive.

Pharmaceutical companies must ensure that the brand names they ultimately decide to file for protection are not confusingly similar to trademarks that have been filed. As such, they should be prepared to consider multiple name options at the onset, as many name candidates are likely not to survive the clearance process. The clearance process, while made more efficient by online databases that allow the search of multiple country records simultaneously, is complicated and time-consuming. In the USPTO database alone, there are currently over 165,000 active trademarks filed in Class 5, which includes mainly pharmaceuticals and other preparations for medical or veterinary purposes. In the EUTM database, there are currently over 180,000 active marks in Class 5.

A comprehensive clearance search will consider potential similarities related to visual appearance, pronunciation, and the product indication. Since most pharmaceutical trademarks are fanciful marks, comparisons will focus on the letter compositions of each mark. A thorough clearance may also include use of the POCA algorithm, which can improve the chances of not only trademark registration but also regulatory approval.

With over 30 years of experience assisting pharmaceutical companies with clearing their name candidates around the world, Brand Institute is ready to help your team create a trademark clearance strategy tailored to your needs, timeline, and budget.

By Rogelio Reyes, Esq.