Name Banks and Their Role in Streamlining the Trademark Development Process

The future of pharmaceutical trademarks when bringing drugs to market faster.

Do you know how long it takes to develop a drug from molecule to market? About 10-15 years. And similar for vaccines. It’s a timely process that entails years of testing in multiple clinical trials for safety and efficacy, undergoing the regulatory approval process and manufacturing to meet public need.

However, we were able to see this long and costly timeline shorten with the quick development of COVID-19 vaccines. While it is not ideal to bring a drug/vaccine to market so quickly, the possibility of bringing drugs to market faster has us thinking: How will this affect the brand name development process, especially when it comes to securing trademarks?

And we know you have questions, too. Keep reading to discover the solve to the following concerns when it comes to trademark viability, naming and the overall success of an asset that’s been fast-tracked:

Viability
Can drugs be developed faster than trademarks registered?
Names
Will assets need to go without a brand name?
Success
Will the overall success of an asset be impacted?

Developing brand names in advance and saving them for future use is one way to help expedite the naming process without forgoing a brand name. Rather than going through a brand naming exercise for each asset, we could develop multiple names at once and bank them for a later date. Having a bank of already registered trademarks to choose from allows quickly developed products and/or future products to come to market with a brand name, all while decreasing the amount of time it takes to go through the trademarking process.

But, when considering the success of your drug in the marketplace, there is a major concern about the name banking approach: Will the banked names be the right name for a future product? Thankfully, there are a few tactics to employ that ensure the banked names still hold marketing potential:

Blank canvas

With no inherent meaning, these names can be used in a way that tells different stories. They’re generally easier to say, punchy and have an interesting flow.

Therapeutic

Therapeutic-specific names that relate to a specific therapeutic category prove especially valuable for companies that have a large pipeline in multiple therapeutic areas.

Linkage

Linkage names are names that have a similar word part or can easily be associated with a theme or category.

Market-based

Having different banks for different markets can be beneficial in some cases because it helps you take linguistic and cultural themes into consideration.

Furthermore, if you’re banking names, how do you maintain those trademarks if they aren’t in use? In the U.S., trademark owners are only afforded federal registration if their mark is being used in commerce. Not only do you have to show that you are currently using your mark, but you must show continued use in commerce to maintain the trademark registration. If the mark has not been used, but there is intention to use it in the future, an applicant can file the trademark on an intent-to-use (ITU) filing basis. According to the United States Patent and Trademark Office (USPTO), “A Statement of Use must be filed within six months of the issuance date of the Notice of Allowance, or within a previously granted extension of time to file a Statement of Use.” If the trademark is not yet being used in commerce, a trademark applicant can file a request for an extension of time to file their statement of use. Each extension lasts for six months, and there is a limit of five extensions. If at that point the name is still not being used, the application will be abandoned and would need to be refiled and undergo the same process over again. Outside of the U.S., while use does not need to be proved upon application, it does need to be proved within five years of registration, or the mark is potentially subject to cancellation.

Keep in mind: Determining the correct approach to trademark filing should be done on a case-by-case basis. In some cases, it can be more cost-efficient to maintain trademark filings than to start from scratch, but that will all depend on how many names are being maintained and if that is the right strategy for your organization. Furthermore, there is a downside to the name bank strategy. Trademark databases are brimming with names that may never be used, making it more challenging to clear names that may look or sound similar. So, what’s the right approach for your brand when it comes to navigating the future of pharmaceutical trademarks? Connect with Addison Whitney’s team of experts today to find out.

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