Bethany A. Stokes and David J. Dykeman Choosing the right brand for a new medical device is becom

Bethany A. Stokes and David J. Dykeman

Choosing the right brand for a new medical device is becoming increasingly important in a world where having the right name for a product can make the difference between a blockbuster hit and a flop. The pharmaceutical industry has long recognized the importance of good branding, and the idea that a good product name leads to increased consumer recognition and increased profits. However, many medical device companies have been slow to realize the importance of choosing a good brand name for their products.

Historically, medical devices were named for the doctors and inventors who developed the devices. Well-known inventors whose devices were named for them include the Jarvik artificial heart introduced in 1982, named for its pioneer Dr. Robert Jarvik, and the Fogarty balloon catheter introduced in 1965, named for prolific medical device inventor Dr. Thomas Fogarty. Many in the medical device industry believed that the high-tech nature of medical devices and the sophistication of the customers obviated the need for good branding. The trend to name devices after the inventors continued until recently when modern medicine began to reach the masses, and the medical industry slowly started to realize the importance of brand strategy.

One of the first device categories that used the new branding strategy was the cardiac stent that became a breakthrough product in the late 1980s, and now is used in 1 million angioplasty procedures each year. Although the first stents were named for their inventors, in 2003 Johnson & Johnson introduced a drug-coated stent named Cypher. Around the same time, Boston Scientific introduced the Taxus Express II stent. Both drug-eluting stents became blockbuster successes in the marketplace. Boston Scientific’s Taxus stent is coated in a drug made from the Yew tree, whose scientific name is Taxus baccata. The clinical trials were named Taxus I and Taxus II and thus, Boston Scientific chose to link the clinical trials to the product brand. As exemplified by the Taxus stent, medical device names often are chosen to resonate with the physicians who use the product, rather than the patient who ultimately benefits.

As these recent examples show, many medical device companies now are aware of the importance of choosing the right name for the product as part of a good branding strategy. This strategy includes not only a name that will help sell the product, but a name that can be protected by registered trademarks around the world and is further strengthened by accompanying websites. Several trademark tips for choosing the best brand name for a medical device as part of a company’s brand strategy are outlined here.

1. Conduct a Thorough Trademark Search
The first and most important step is to conduct a trademark clearance search. Such searches help determine if a proposed trademark is available for use and registration and ensure the proposed use of the trademark does not violate the trademark rights of others or violate any consumer protection laws.

A trademark attorney first should determine that the mark is not generic or too descriptive, both of which are bars to federal trademark registration. Additionally, a deceptive trademark that mischaracterizes or misleads consumers about the related goods and services can violate consumer protection laws and should be avoided. After a trademark attorney clears the proposed mark as not being generic, too descriptive or deceptive, a preliminary search can be conducted on the United States Patent and Trademark Office database and key state trademark registries if desired. This preliminary search, commonly referred to as a “knock-out” search, will determine if there are identical or close marks already being used for related goods or services.

If the preliminary search does not uncover any obvious bars to registration of the proposed trademark, a full trademark search can be conducted. Full trademark searches are done through professional searching companies, are broader in scope and can include foreign countries if desired. Full trademark searches typically include both state and federal trademark registers, industry databases and publications, Internet domain name registries, newspaper publications and trade names databases. Full trademark searches cannot be relied on to identify every potentially relevant use of identical or similar marks, however, they are the most comprehensive searches available and are recommended prior to filing a trademark application or investing large amounts of money on a marketing campaign.

After performing the appropriate trademark clearance searches, a trademark attorney will identify which references are relevant and assess the risks of moving forward with a proposed mark. Potential risks are identified by considering many factors including: the similarity or dissimilarity of the marks; relatedness of the goods and services; similarity or dissimilarity of the channels of trade; the number and nature of similar marks used for similar goods or services; the sophistication of purchaser and the care with which the purchasing decision is made.

While it is commonly known that the U.S. Food & Drug Administration (FDA) regulates drugs and devices, it is less known that as part of this oversight, the FDA can regulate the names of both drugs and devices. The main purpose of this FDA oversight is to prevent confusingly similar names for drugs, which can lead to medication errors and can be extremely dangerous for patients. With medical devices, although there is no formal evaluation process conducted by the FDA as there is with drugs, the FDA nonetheless can reject a device for having a misleading name. Thus, it is important to conduct a thorough clearance search to determine that a proposed mark is not generic, too descriptive or deceptive, but also to make sure the proposed name is not confusingly similar to a device that already is on the market.

2. Buy Corresponding Domain Names
Once a proposed mark has been cleared, it is critical to make sure the related domain names are available. Medical device companies should look to buy multiple domain name extensions related to the proposed trademark, including not only the .com, but also the .net, .org and other related domain extensions that may be relevant.

In addition, companies should consider buying defensive domain name registrations that include the company name or trademark along with a negative term. For example, companysucks.com or companyproductssux.com are common domain names to buy for defensive purposes. With the new .xxx top-level domain name recently approved by the Internet Corporation for Assigned Names and Numbers, companies should consider purchasing company.xxx or trademark.xxx. When a company registers the .xxx domain name for a company or product name, it prevents others from doing so and can prevent inappropriate content from being associated with the company. It is important to note that each domain name carries periodic expenses to maintain the registration, so companies must be prudent to find the balance between protecting their trademarks through domain names with domain name expenditures.

3. Consider Foreign Translations and Foreign Character Marks
As the medical device marketplace becomes more international, another important consideration when choosing a trademark for a medical device is the foreign translations of the proposed mark. Trademarks usually are chosen because they have a favorable association with the product or consumer, however once a mark is translated to a foreign language, the customs, religion and history of that language may change the favorable association found in one culture to a unfavorable association in another. One example is when Continental Tires entered the Taiwanese market and selected a trademark pronounced Da Lu Luen Tai.“Da Lu” is a term for mainland China, and at the time, goods from mainland China had the perception of not being high quality. The trademark as translated was perceived as “Mainland China Tires,” which provided a negative connotation to consumers, thus hurting sales of the product in Taiwan.

Another issue to consider is filing the foreign character equivalents of your medical device trademark. China, like many foreign countries, has a first-to-file system for trademark registration and China does not require use of the mark for registration. Thus, whoever files the registration first has exclusive rights in China and even well-known brands have difficulty overcoming a prior registration that was filed for their trademark by a third party before the brand owner’s trademark application. The rise of trademark squatters in China is a growing problem for U.S. companies trying to enter the emerging Chinese market. Even if your company has no present intention to sell to China or other foreign countries, consider filing in these countries to beat the trademark squatters.

4. Consult a Trademark Attorney Early
Trademark disputes are expensive and can drain valuable monetary and time resources from companies with little or no economic upside. Even if a company wins a trademark dispute, it only wins the right to continue to use the name and monetary damages are unusual except for egregious cases. Founders of early stage companies often get “married” to a proposed trademark before engaging a trademark attorney and conducting a trademark clearance search and then continue to pursue the mark even in the face of potential red flags.

Rebranding is very expensive, especially if a trademark lawsuit is involved and a company is forced to change the name of a product and destroy all marking literature before it is even distributed to the public. This is a costly and inefficient way to begin building a brand strategy. Thus, it is beneficial to invest time and money early in the process with a trademark attorney to make sure the proposed trademark is chosen wisely with the least likelihood of dispute down the road.

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These trademark tips can guide a company when choosing the right brand for its medical device to increase consumer recognition and profits that can lead to a blockbuster hit. Prudent companies will engage a trademark attorney early to ensure a thorough trademark search is conducted, the corresponding domain names are secured, and foreign translations and equivalents are considered when choosing the best brand name for a new medical device.