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Naming

Exploring Technology And Pharmaceutical Naming

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When it comes to naming brands, technology and pharmaceutical firms are among the busiest performers.
So we asked Mark Steiner, a nationally recognized intellectual property attorney, for his take on the good, the bad and the ugly in those fields. Steiner heads the trademark & copyright practice group at Townsend and Townsend and Crew in San Francisco.

Q: Mark, what’s your general advice to people who want to name companies and products in technology and pharmaceuticals?

When it comes to trade name and trademark selection, it is important that the company make every effort to pick a name and mark which are appealing from a marketing standpoint and protectable from a legal perspective.

As to the latter, we are looking for a mark which is distinctive. This means that the company should be creative and avoid the temptingly easy route of coming up with a mark which is descriptive of the products. The best marks are those which have no meaning whatsoever within the context of the industry: A fanciful, coined term which is a made-up word (think “Exxon” or “Kodak”) or an English word which has no relevant meaning, such as “Apple” for computers.

Such marks are most likely to be available when we conduct proper trademark searches and will afford the company broad and strong trademark rights. The mark will most likely be relatively easy to register in the United States and abroad and, if there are no other marks which are similar in appearance, sound and meaning in the industry, the company will be able to enforce its trademark rights against others who would dare come close.

Q: What are some examples of successful names in technology and pharma land?

XIENCE, SurgRx and FlowMedica for medical and surgical devices are strong names and marks. They are distinctive, registrable and enforceable against third parties.

Q: You’ve criticized “cute” names and once described Codegrok as one of the worst names you’d ever encountered. Still feel that way?

Actually, it is good that I am called upon only to look at the legal issues relating to the selection and protection of names and trademarks because I do not consider myself a marketing expert. I leave the “cute” and “catchy” decisions up to the marketing folks. If the proposed name and mark looks to be available and enforceable from a legal standpoint, I am in favor of it.

Q: We see drug names that look as if Scrabble tiles were tossed onto a table – Zixoryn or Zostrix. But other drug names such as Aleve or Allegra or Claritin have clear meanings and associations. Are some drug companies just taking the easy way out?

The names which you characterize as Scrabble tile or random are those which I mentioned earlier as fanciful and strong marks. They are made-up words which, when checked for legal availability, stand an excellent chance of being unique and distinctive.

Then again, the second category of drug names you mentioned are also coined terms which should be strong trademarks. They are actually favored by marketers because, while they are not descriptive of the drugs, they might suggest a characteristic or quality of the drug’s benefits. So, they really do not have clear meanings or associations except through advertising, publicity and consumer recognition over time. Both types of marks are strong and favored by trademark counsel.

Q: What about the practice of creating “parent/child” relationships between a company name and its products? One example would be the company Supergen and its drug Dacogen.

The concept of a “family” of names and marks is recognized in trademark law. Using your example, if there are no other “gen” suffix formatives in the relevant industry, the owner of these marks would enjoy broader legal protection for the names the longer they are unique to the industry and as the family of marks grows.

Suppose the company had several “gen” suffix marks which it had used and registered for some time. It would be very difficult to defend a competitor who would now enter the arena with a “gen” suffix mark, even if the term as a whole is different from any single mark in the trademark owner’s family.

Q: Anything wrong with straightforward, descriptive names? I’m thinking of names such as MultiPrep and OptiPrep, which are grinding/polishing equipment from Allied High Tech Products Inc.

One could debate whether the examples you cited are what trademark attorneys would consider descriptive or suggestive trademarks. But, as I mentioned earlier, a truly descriptive term is one that companies should take pains to avoid.

Marketers often desire a trademark that describes the product. That desire, when weighed against the legal benefits of marks which are not descriptive, can sometimes create tension between marketing desires and trademark law.

I tell my clients that if they are willing to be more creative from the get-go, they will enjoy tremendous benefits over the life of the product by selecting a mark which does not merely describe the product and its characteristics.

Q: If a technology company finds itself with a name that’s become old-fashioned or no longer appropriate, what should it do?

This is really a marketing question. Nevertheless, I have worked with clients who find themselves in this situation from time to time. Sometimes the existing mark can be updated by changing its appearance in terms of the logo, font or surrounding artwork. This is the best solution from a legal standpoint because then can still enjoy the many years of use of the word portion of the mark. Priority is the name of the game when it comes to competing trademark interests and it is best to bootstrap early use into an updated mark.

The alternative, of course, is to start over and select a new name and start the priority clock running through the prompt filing of trademark applications.

Q: Some companies adopt all-initial names such as TJX, SPX, TXU, AES or CNF. And a personal favorite: “JCP&L, a GPU Company.” Are these really names, or just disguises in the corporate protection program?

Multi-letter, unpronounceable marks are generally protectable, if there are no others already existing in the relevant field. There can be issues overseas, however, in trying to protect such names and marks. At best, however, the scope of protection is rather narrow.

If I can convince a client to come up with a name or mark which will allow for broader legal protection, I will encourage them to do so. Of course, an initial mark which is short for a protectable word mark is not a bad thing, if both are used and registered.

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