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.