–Susan Perera, Attorney

One aspect of trademark law that we haven’t discussed here at DuetsBlog is FDA approval of trademarks for pharmaceuticals.  While there are certainly many benefits to federal trademark protection (and we would recommend seeking federal registration as the best way to solidify the broadest rights in your mark) trademark owners can choose to rely on common law rights rather than seeking federal registration of a trademark.

However, in the field of pharmaceuticals, FDA approval of a trademark is required prior to use.  Further, the fact that a trademark has been approved by the USPTO does not mean that the FDA will likewise approve the mark.  While the USPTO focuses its review on the likelihood of confusion between a proposed mark and prior filed trademark applications and registrations, the FDA is concerned with reducing medication errors which could be related to the similar sound and appearance of drug names but also similarities to drug ingredients, as well as names that may exaggerate the efficacy of a drug.  Accordingly, traditional trademark clearance may not clearly identify whether a trademark for a potential drug will be allowed.

Watch for future posts about the FDA trademark approval process.