Bethany A. Stokes and David J. Dykeman10.08.12
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.
1. Prevent Internal Misuse
An initial step to ensuring third parties and consumers recognize a medical device company’s trademark rights is to make certain that the company uses its own trademarks properly. First, a company needs to ensure all employees, in all departments of the company, understand how a trademark should be used in connection with the products covered by that particular trademark. Examples of proper trademark use include: (1) always using a trademark as an adjective and never as a noun or verb; (2) using a mark consistently; and (3) always properly identifying the mark with the appropriate trademark symbol.
A trademark should be used as an adjective, and should never be used as a plural or in the possessive form. For example, Johnson & Johnson’s trademarked Cypher stent should be referred to as, “The hospital would like to order 20 Cypher stents,” and not as, “The hospital would like to order twenty Cyphers.” Additionally, if a company uses a specific style such as all capital letters or a specific font or color when representing its trademark, employees should note the specific style to ensure it is always used consistently. Another important aspect of proper trademark use is identifying the mark with the “TM” symbol for unregistered trademarks and the ® for registered trademarks when used in connection with the company’s products covered by that mark. Medical device companies should develop Trademark Use Policies requiring that all employees adhere to these guidelines when using the company’s trademarks in marketing, sales, and other contact with consumers.
Additionally, employees that work in sales and marketing should be encouraged to police company trademarks they encounter in the marketplace. These employees often are at the front lines not only for ensuring a company’s mark is being properly used, but for also identifying potential infringing acts by competitors. Medical device companies should educate employees who are attending trade shows, reviewing industry publications, and interacting with competitors, and encourage all employees to report any potential misuse or trademark infringement.
Companies also should actively review all collateral materials, such as advertising, press releases, labels, product packaging and other consumer communications before public release and anytime a new trademark is introduced or changes are made. These steps will help companies protect against internal trademark misuse and maintain strong trademarks.
2. Watching Services and Clearance Reports
Another way medtech trademark owners can identify potential trademark infringement is by subscribing to a third-party trademark watching service. Trademark watching services identify and analyze newly published trademark applications and send timely notices of any identical and confusingly similar marks to the trademark owner. A trademark attorney can provide this service as well as work with third party vendors to carefully tailor the watching service to a medical device company’s needs. Trademark watching services are designed to detect any conflicting trademark applications as soon as they are publicly available and can be limited to the United States or include foreign countries.
Another good practice to identify potential infringing activity is to order periodic trademark clearance search reports. Search reports typically are used when a company is deciding on the availability of a mark prior to application. However, this also can be a helpful tool in monitoring the marketplace for possible infringement of a company’s trademark. The same third-party vendors that offer watching services also can provide clearance search reports to medtech companies as needed. However, because clearance search reports can include a large amount of information from a wide variety of sources, these reports can be difficult to navigate. Prudent companies should engage trademark counsel to identify the types of report and frequency needed, as well as help summarize and prioritize any potential infringements identified in a clearance report.
3. Searching the Internet
The ubiquity of the Internet and proliferation of search engines and social media have made prevention of unauthorized trademark use more critical, and, at the same time, more complicated. The Internet presents numerous opportunities for unauthorized use of a trademark: through ad words, domain name registrations or in online content. Web monitoring services are an easy and efficient way to reveal online trademark abuse. Third-party monitoring services can comprehensively inspect and assess all digital content on the Internet including domain names, social media sites and ad words. Medtech companies also can use automated online searches, such as Google Alert, to monitor where and when their trademarks are used on the Internet.
As an alternative, companies that choose not to use a website monitoring service can still use search engines to periodically identify uses of their trademarks online. Companies that decide to search online themselves should be careful to include a variety of search terms, search for common misspellings and phonetic equivalents, and check social media sites in addition to websites.
Conducting online searches through the use of search engines will not identify newly filed trademark applications or domain name registrations. However, conducting online searches in conjunction with subscribing to a watching service and ordering clearance search reports will provide opportunities to identify potential misuse and infringements of their trademarks. Although not every use of a trademark can be controlled, keeping track of potential unauthorized uses of the medtech company’s trademarks is important to protect the goodwill associated with the brand and the legal validity of the trademarks.
4. Monitoring Mobile Appsand Other Media
The Internet has changed the playing field for trademark owners to monitor their marks. Now, the increasing popularity of mobile applications (apps) for smart phones has shifted the playing field once again and medical device companies need to carefully monitor this evolving area. Millions of consumers with mobile phones and tablets have made the mobile app market the next big thing for a variety of businesses, but this also has created additional problems for trademark owners. Consumers download mobile and Internet apps for social networking, gaming, travel, weather and, most recently, to track and monitor their health. Copyrighted content in mobile apps is most often the biggest concern for companies, but trademark protected company names, product names and logos also frequently are misused in mobile apps, often without the trademark owner’s consent. The rising number of medical mobile apps for diagnosis and treatment compliance has increased the risk of potential copyright infringement and trademark infringement.
Many app developers that incorporate other companies’ trademarks include disclaimers in the description of the apps, typically if the trademark owner is officially affiliated with the apps. However, not all uses of a company’s trademark will be covered by these notices and disclaimers, especially if the company is not an affiliate or has not given permission to include its trademarks. Even when disclaimers are included, they are unlikely to remedy all likelihood of confusion issues, as consumers who download apps may not see the disclaimers.
Another area of concern regarding mobile apps, beyond the potential for trademark infringement, is the growing prevalence of Internet hacking, data theft, and counterfeit software. Unauthorized or illegitimate mobile application versions (i.e., counterfeit software posing as valid apps) may be offered on platforms where they should not exist or even be on the same platform as valid apps, and these apps may contain viruses that infect user electronic devices and stored content and even present HIPAA (Health Insurance Portability and Accountability Act) privacy concerns. If a consumer downloads an app it believes is from a well-known and trusted company, and in turn, the consumer is a victim of hacking, data theft or merely receiving an inferior product, the goodwill of the brand can be tainted. Monitoring mobile app stores is a good way to identify trademark infringement and dilution for medical device companies that provide health software.
Companies also should monitor trademark misuse by the media and consumer publications. If a publication uses a company’s trademark inappropriately, whether generically or without the proper identification of the TM or ® symbol, the company should consider sending a letter to the publisher advising of its trademark rights and requesting the trademark misuse be corrected. It is important to include monitoring of mobile app stores, app content, and media use of its trademarks as part of its trademark policing strategy.
5. Cease-and-Desist Letters
As discussed above, there are several steps medical device companies should take to police trademarks and prevent third parties from unauthorized use of their trademarks. When a medtech company discovers that one of its trademarks is being infringed, filing a trademark infringement lawsuit should be an immediate consideration. Delays in enforcing trademarks can jeopardize the outcome of the trademark infringement litigation and should be avoided.
Whether a potential infringement is identified through monitoring by a watching service, online monitoring, or notice from an employee, often the next step is to send a cease-and-desist letter to the infringing party. A cease-and-desist letter outlines the third party’s misuse or infringement and requests the infringing use of the company’s trademark stop immediately.
A cease-and-desist letter is equivalent to a demand letter and is a cost-effective way to enforce a company’s trademark rights. A typical cease-and-desist letter usually is drafted by a trademark attorney and includes information such as the details regarding the company’s ownership of the trademark; the infringing party’s infringing use; and outlines the possible causes of action for damages and injunctive relief. Potential causes of action include trademark infringement, unfair competition, dilution and cybersquatting under federal and state laws. After the details are identified, the letter will request the infringing party cease all infringing action and also may include specified action the infringing party must take.
Cease-and-desist letters usually will request the third party cease all infringing action and respond within a specified time period. Although a prompt response may be received, cease-and-desist letters sometimes are ignored by the third party. If a third party does not respond to the letter from trademark counsel and the unauthorized trademark use continues, filing a trademark infringement lawsuit may be the next step. Before taking any action, a medical device company should consult a trademark attorney to carefully assess all options to enforce its trademark rights. Trademark disputes are expensive and can drain valuable monetary and time resources from companies with little or no economic upside other than the right to continue to use the trademark.
* * *
Medical device companies must take proactive steps to prevent internal misuse as well as unauthorized use of the marks by third parties. By instituting a comprehensive trademark policing strategy, firms can minimize the potential loss of trademark rights, and maximize the value of its trademarks as a valuable business asset.
Bethany A. Stokes is a trademark attorney in the Boston, Mass., office of Greenberg Traurig LLP and a member of the Intellectual Property and Technology practice group. Bethany’s practice involves trademark and copyright prosecution, intellectual property due diligence investigations, and licensing. Bethany can be reached at (617) 310-6098 or stokesb@gtlaw.com. David J. Dykeman is co-chair of the Intellectual Property Department in Greenberg Traurig’s Boston office. A registered patent attorney with more than 15 years of experience in patents, intellectual property and licensing, David’s practice focuses on securing strategic worldwide intellectual property protection and related business strategy for high-tech clients, with particular expertise in medical devices, life sciences, biotechnology and healthcare IT. He can be reached at (617) 310-6009 or dykemand@gtlaw.com.
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.
1. Prevent Internal Misuse
An initial step to ensuring third parties and consumers recognize a medical device company’s trademark rights is to make certain that the company uses its own trademarks properly. First, a company needs to ensure all employees, in all departments of the company, understand how a trademark should be used in connection with the products covered by that particular trademark. Examples of proper trademark use include: (1) always using a trademark as an adjective and never as a noun or verb; (2) using a mark consistently; and (3) always properly identifying the mark with the appropriate trademark symbol.
A trademark should be used as an adjective, and should never be used as a plural or in the possessive form. For example, Johnson & Johnson’s trademarked Cypher stent should be referred to as, “The hospital would like to order 20 Cypher stents,” and not as, “The hospital would like to order twenty Cyphers.” Additionally, if a company uses a specific style such as all capital letters or a specific font or color when representing its trademark, employees should note the specific style to ensure it is always used consistently. Another important aspect of proper trademark use is identifying the mark with the “TM” symbol for unregistered trademarks and the ® for registered trademarks when used in connection with the company’s products covered by that mark. Medical device companies should develop Trademark Use Policies requiring that all employees adhere to these guidelines when using the company’s trademarks in marketing, sales, and other contact with consumers.
Additionally, employees that work in sales and marketing should be encouraged to police company trademarks they encounter in the marketplace. These employees often are at the front lines not only for ensuring a company’s mark is being properly used, but for also identifying potential infringing acts by competitors. Medical device companies should educate employees who are attending trade shows, reviewing industry publications, and interacting with competitors, and encourage all employees to report any potential misuse or trademark infringement.
Companies also should actively review all collateral materials, such as advertising, press releases, labels, product packaging and other consumer communications before public release and anytime a new trademark is introduced or changes are made. These steps will help companies protect against internal trademark misuse and maintain strong trademarks.
2. Watching Services and Clearance Reports
Another way medtech trademark owners can identify potential trademark infringement is by subscribing to a third-party trademark watching service. Trademark watching services identify and analyze newly published trademark applications and send timely notices of any identical and confusingly similar marks to the trademark owner. A trademark attorney can provide this service as well as work with third party vendors to carefully tailor the watching service to a medical device company’s needs. Trademark watching services are designed to detect any conflicting trademark applications as soon as they are publicly available and can be limited to the United States or include foreign countries.
Another good practice to identify potential infringing activity is to order periodic trademark clearance search reports. Search reports typically are used when a company is deciding on the availability of a mark prior to application. However, this also can be a helpful tool in monitoring the marketplace for possible infringement of a company’s trademark. The same third-party vendors that offer watching services also can provide clearance search reports to medtech companies as needed. However, because clearance search reports can include a large amount of information from a wide variety of sources, these reports can be difficult to navigate. Prudent companies should engage trademark counsel to identify the types of report and frequency needed, as well as help summarize and prioritize any potential infringements identified in a clearance report.
3. Searching the Internet
The ubiquity of the Internet and proliferation of search engines and social media have made prevention of unauthorized trademark use more critical, and, at the same time, more complicated. The Internet presents numerous opportunities for unauthorized use of a trademark: through ad words, domain name registrations or in online content. Web monitoring services are an easy and efficient way to reveal online trademark abuse. Third-party monitoring services can comprehensively inspect and assess all digital content on the Internet including domain names, social media sites and ad words. Medtech companies also can use automated online searches, such as Google Alert, to monitor where and when their trademarks are used on the Internet.
As an alternative, companies that choose not to use a website monitoring service can still use search engines to periodically identify uses of their trademarks online. Companies that decide to search online themselves should be careful to include a variety of search terms, search for common misspellings and phonetic equivalents, and check social media sites in addition to websites.
Conducting online searches through the use of search engines will not identify newly filed trademark applications or domain name registrations. However, conducting online searches in conjunction with subscribing to a watching service and ordering clearance search reports will provide opportunities to identify potential misuse and infringements of their trademarks. Although not every use of a trademark can be controlled, keeping track of potential unauthorized uses of the medtech company’s trademarks is important to protect the goodwill associated with the brand and the legal validity of the trademarks.
4. Monitoring Mobile Appsand Other Media
The Internet has changed the playing field for trademark owners to monitor their marks. Now, the increasing popularity of mobile applications (apps) for smart phones has shifted the playing field once again and medical device companies need to carefully monitor this evolving area. Millions of consumers with mobile phones and tablets have made the mobile app market the next big thing for a variety of businesses, but this also has created additional problems for trademark owners. Consumers download mobile and Internet apps for social networking, gaming, travel, weather and, most recently, to track and monitor their health. Copyrighted content in mobile apps is most often the biggest concern for companies, but trademark protected company names, product names and logos also frequently are misused in mobile apps, often without the trademark owner’s consent. The rising number of medical mobile apps for diagnosis and treatment compliance has increased the risk of potential copyright infringement and trademark infringement.
Many app developers that incorporate other companies’ trademarks include disclaimers in the description of the apps, typically if the trademark owner is officially affiliated with the apps. However, not all uses of a company’s trademark will be covered by these notices and disclaimers, especially if the company is not an affiliate or has not given permission to include its trademarks. Even when disclaimers are included, they are unlikely to remedy all likelihood of confusion issues, as consumers who download apps may not see the disclaimers.
Another area of concern regarding mobile apps, beyond the potential for trademark infringement, is the growing prevalence of Internet hacking, data theft, and counterfeit software. Unauthorized or illegitimate mobile application versions (i.e., counterfeit software posing as valid apps) may be offered on platforms where they should not exist or even be on the same platform as valid apps, and these apps may contain viruses that infect user electronic devices and stored content and even present HIPAA (Health Insurance Portability and Accountability Act) privacy concerns. If a consumer downloads an app it believes is from a well-known and trusted company, and in turn, the consumer is a victim of hacking, data theft or merely receiving an inferior product, the goodwill of the brand can be tainted. Monitoring mobile app stores is a good way to identify trademark infringement and dilution for medical device companies that provide health software.
Companies also should monitor trademark misuse by the media and consumer publications. If a publication uses a company’s trademark inappropriately, whether generically or without the proper identification of the TM or ® symbol, the company should consider sending a letter to the publisher advising of its trademark rights and requesting the trademark misuse be corrected. It is important to include monitoring of mobile app stores, app content, and media use of its trademarks as part of its trademark policing strategy.
5. Cease-and-Desist Letters
As discussed above, there are several steps medical device companies should take to police trademarks and prevent third parties from unauthorized use of their trademarks. When a medtech company discovers that one of its trademarks is being infringed, filing a trademark infringement lawsuit should be an immediate consideration. Delays in enforcing trademarks can jeopardize the outcome of the trademark infringement litigation and should be avoided.
Whether a potential infringement is identified through monitoring by a watching service, online monitoring, or notice from an employee, often the next step is to send a cease-and-desist letter to the infringing party. A cease-and-desist letter outlines the third party’s misuse or infringement and requests the infringing use of the company’s trademark stop immediately.
A cease-and-desist letter is equivalent to a demand letter and is a cost-effective way to enforce a company’s trademark rights. A typical cease-and-desist letter usually is drafted by a trademark attorney and includes information such as the details regarding the company’s ownership of the trademark; the infringing party’s infringing use; and outlines the possible causes of action for damages and injunctive relief. Potential causes of action include trademark infringement, unfair competition, dilution and cybersquatting under federal and state laws. After the details are identified, the letter will request the infringing party cease all infringing action and also may include specified action the infringing party must take.
Cease-and-desist letters usually will request the third party cease all infringing action and respond within a specified time period. Although a prompt response may be received, cease-and-desist letters sometimes are ignored by the third party. If a third party does not respond to the letter from trademark counsel and the unauthorized trademark use continues, filing a trademark infringement lawsuit may be the next step. Before taking any action, a medical device company should consult a trademark attorney to carefully assess all options to enforce its trademark rights. Trademark disputes are expensive and can drain valuable monetary and time resources from companies with little or no economic upside other than the right to continue to use the trademark.
* * *
Medical device companies must take proactive steps to prevent internal misuse as well as unauthorized use of the marks by third parties. By instituting a comprehensive trademark policing strategy, firms can minimize the potential loss of trademark rights, and maximize the value of its trademarks as a valuable business asset.
Bethany A. Stokes is a trademark attorney in the Boston, Mass., office of Greenberg Traurig LLP and a member of the Intellectual Property and Technology practice group. Bethany’s practice involves trademark and copyright prosecution, intellectual property due diligence investigations, and licensing. Bethany can be reached at (617) 310-6098 or stokesb@gtlaw.com. David J. Dykeman is co-chair of the Intellectual Property Department in Greenberg Traurig’s Boston office. A registered patent attorney with more than 15 years of experience in patents, intellectual property and licensing, David’s practice focuses on securing strategic worldwide intellectual property protection and related business strategy for high-tech clients, with particular expertise in medical devices, life sciences, biotechnology and healthcare IT. He can be reached at (617) 310-6009 or dykemand@gtlaw.com.