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Overcoming Unique Issues Regarding Trademark Searching and Filing for the Pharmaceutical Industry

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Trademarks in the pharmaceutical industry are important not only as part of a company’s intellectual property portfolio, but also as a matter of public health, and obtaining a trademark registration in the pharmaceutical industry raises unique issues and considerations that need to be carefully navigated. When selecting a new product name, formulating a clearance strategy, and filing and prosecuting applications for marks, there are processes and techniques that help avoid and, if necessary, overcome roadblocks from the Food & Drug Administration (FDA) and the U.S. Patent and Trademark Office (USPTO). Join us to learn how to efficiently make your selection, obtain clearance, and acquire a trademark registration in order to protect your pharmaceutical innovation.

During our 60-minute discussion, presenters Leo Loughlin and Davide Schiavetti from Rothwell Figg will cover the following topics:

• Initial steps in selecting pharma marks
• Conducting the most comprehensive search possible, including searching the Orange Book and Pharma in use databases
• Navigating proposed marks already on file at the FDA
• Navigating naming issues at the FDA
• Properly describing your trademark application for a new pharma product
• Overcoming initial USPTO refusals to a pharma mark
• Addressing possible challenges from third parties during publication
• Unique issues with filing proof of use at the USPTO
• AI issues that are cropping up with pharma marks

Presenters Leo Loughlin & Davide Schiavetti of Rothwell Figg:

LoughlinLeo Loughlin has over 20 years of experience assisting clients with registering and protecting trademarks through counseling, prosecution, and litigation. At the most fundamental level, Leo assists clients in developing and protecting their brands. On the development side, he assists in searching when a new brand is needed and filing for protection of that name. Once protection is obtained, he further assists the client in maintaining that protection, often through enforcement. Leo has filed well over 1,000 trademark applications both with the U.S. Patent and Trademark Office (USPTO) and abroad. He counsels both large multinational corporations and startups in a wide range of industries, including pharmaceuticals, fashion, automotive, food and beverage, software, financial services, agricultural equipment, and consumer products.

 

SchiavettiOriginally from Milan, Italy, and fluent in French, Italian, and Spanish, Davide Schiavetti specializes in counseling clients from European countries on navigating the legal trademark and copyright aspects of their entry into the North American market. Although his clientele spans the European continent, he is particularly active in representing companies from Italy. Brands he counsels in trademark law include some of Italy’s most well-known global names, such as Valentino, Ferrero, Lavazza, Soremartec, Barilla, and Fiat, among others. Davide counsels clients in trademark prosecution in the U.S. Patent and Trademark Office (USPTO) as well as litigation in both federal District Courts and the Trademark Trial and Appeal Board (TTAB).