Bethany A. Stokes and David J. Dykeman A carefully selected and maintained trademark can be a val

Bethany A. Stokes and David J. Dykeman

A carefully selected and maintained trademark can be a valuable business asset for medical device innovators. A medical device company’s trademarks, whether words, phrases or symbols and other distinctive aspects closely associated with the product, should be fully protected as part of a long-term branding strategy. In the June issue of Medical Product Outsourcing, we outlined several trademark tips for choosing the best product name for a medical device as part of a company’s brand strategy. In this article, we will outline steps for developing an effective trademark policing and enforcement policy to protect a company’s brand as a valuable asset.

Savvy medical device companies approach active policing of their trademarks as a vital part of an overall branding strategy. Maintaining strong trademarks not only helps effectively sell products, but also allows a company to maintain the value of its brand. An effective trademark strategy is not simply a matter of selecting the right mark, but also requires ongoing maintenance and monitoring in the form of protection and policing of trademarks.

Failure to properly police a trademark can lead to a company’s trademark rights being limited or lost. Trademark rights can be lost in several ways including: abandonment of the mark, improper licensing of the mark, and genericism of the mark. If a company discontinues use of the trademark for a period of time, it may lead to abandonment of the mark and loss of rights. Additionally, when a company licenses its trademarks to a third party but does not maintain any control over use by the third party, trademark rights also can be lost.

A company’s own misuse of its trademarks as well as a failure to police against misuse of the mark by third parties can lead to a mark becoming a generic word and no longer functioning as a trademark. A famous example of trademark that subsequently lost legal protection by becoming the generic name of a medical product is aspirin, which originally was filed as a trademark for acetylsalicylic acid by Bayer AG. Over time, consumers began referring to the product itself as aspirin instead of aspirin branded acetylsalicylic acid. Diligent trademark policing could have helped aspirin avoid becoming generic and losing its trademark protection.

A trademark also risks losing its value when used by a third party without a proper license or permission of the trademark owner. Medical device companies that do not properly protect their trademarks can be in danger of losing trademark rights and may encounter serious problems when trying to maximize the value of their brand through commercialization, partnering and financing transactions. An insufficient trademark policing program can damage a company’s ability to effectively commercialize its products, diminish value to potential investors and partners, and create unnecessary legal risks.

Realizing that trademarks are an important business asset, medical device companies need to be vigilant about improper and infringing uses of their trademarks. The failure to stop infringing uses by third parties can result in the loss of trademark rights. A comprehensive trademark policing and enforcement strategy should be developed and implemented by prudent companies. Below are several tips for policing and protecting trademarks for medical device companies.