Pharmaceutical trademarks—USA—Q&A guide

The following Life Sciences practice note provides comprehensive and up to date legal information covering:

  • Pharmaceutical trademarks—USA—Q&A guide
  • 1. What is the primary law governing trademarks in your jurisdiction?
  • 2. Which agency is responsible for the grant and registration of pharmaceutical trademarks?
  • 3. What are the relevant national and international regulatory bodies and requirements that need to be considered when clearing a pharmaceutical trademark?
  • 4. What non-traditional trademarks are available in your jurisdiction and how are they registered?
  • 5. Does your jurisdiction allow the registration of cannabis-derived products?
  • 6. What are the rules governing parallel imports of pharmaceutical goods?
  • 7. What strategies are available to police and enforce against parallel imports?
  • 8. What types of legal or administrative proceedings are available to enforce against infringing products?
  • 9. What are the available remedies for infringement?
  • More...

Pharmaceutical trademarks—USA—Q&A guide

This Practice Note contains a jurisdiction-specific Q&A guide to pharmaceutical trademarks in USA published as part of the Lexology Getting the Deal Through series by Law Business Research (published: February 2021).

Authors: Brinks Gilson & Lione—Virginia Wolk Marino; Fan Cheng

1. What is the primary law governing trademarks in your jurisdiction?

Trademarks in the United States are primarily governed by the federal Lanham Act (15 U.S.C. § 1051 et seq). Both registered and unregistered marks are granted varying degrees of nationwide protection under the Lanham Act. Trademarks are, likewise, protected under state common law and statutes, and trademarks may also be registered at the state level.

2. Which agency is responsible for the grant and registration of pharmaceutical trademarks?

The United States Patent and Trademark Office (USPTO) is responsible for the grant and registration of trademarks at a federal level, including pharmaceutical trademarks. Pharmaceutical trademarks may also be registered at the state level, via the state's Secretary of State Office, though applicants should keep in mind that the protection associated with a state registration is limited geographically and is less robust than the protection of a federal registration. 

The USPTO recently instituted a requirement that all foreign-domiciled trademark applicants and registrants, as well as foreign-domiciled parties to Trademark Trial and Appeal Board proceedings, must be represented by an attorney who is licensed to practise law in the

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