Brand Identity for Dietary Supplements Through Trademarks

Brand Identity for Dietary Supplements Through Trademarks
by Charles J. Raubicheck

It is often asked, "what's in a name?" In the world of dietarysupplements, the answer is, "Plenty." Your company can build adistinct marketing advantage by adopting, registering and promoting uniquetrademarks for new products, or a unique trade name for your business.

Within individual product categories, numerous suppliers have introduced orare positioning new products. It is a challenge for companies to distinguishtheir products from those of competitors. While marketing and advertising cancertainly serve to heighten awareness of a particular company's products, a keyfocus of source recognition is the brand name, or trademark, of a givencompany's product. Companies must examine the ways in which they can select newtrademarks and protect legal rights in them.

The selection of a trademark for a new product usually begins withconsultation within a company's marketing group. Typically, up to five desirablemarks are chosen. It is then necessary to determine whether these marks arelegally available; another company may have already adopted the same or a verysimilar mark for the same type of product and could assert prior rights,resulting in a trademark infringement claim. Thus, a comprehensive trademarksearch is advisable.

A search report will disclose both registered and unregistered marks that areidentical or similar to the searched mark for the same or similar goods. It isanalyzed to determine the availability of the candidate mark or marks. It oftenbenefits you to involve the services of a trademark attorney who is familiarwith the evaluation and interpretation of trademark search reports. He canassist in making close calls on availability. In close call situations, acompany may request a written legal opinion from the trademark attorney,advising as to why a particular mark is available for use and registration. Thiscan be used as a defense in case a chosen mark is later challenged.

Once a decision has been made to adopt a particular mark, a company can applyto register that mark--even in advance of beginning to use it--by filing atrademark application in the United States Patent and Trademark Office (PTO).These applications are typically drafted by attorneys who prosecute theapplication through to registration at the PTO. The application is prepared andfiled and is then assigned to an examiner within the PTO who will evaluate theapplication and decide whether the mark is entitled to registration.

There are several advantages to registering a trademark. A registrationgrants the owner the exclusive right to use that trademark in interstatecommerce on the particular product or products in question. This also applies toservices if a service mark is involved (e.g. advertising services, consultingservices). This is a nationwide right and cuts off rights of all junior users ofthe same or confusingly similar mark.

If you discover that another company has begun to use the same or aconfusingly similar mark to your registered mark, you can bring a trademarkinfringement action in Federal court. A registration also has importantevidentiary weight in an infringement action; the registrant simply has topresent the registration to prove secondary meaning (the distinctiveness of themark).

Finally, a registration puts other companies on notice that your company ownsthis mark as a brand name for your goods or services. Your mark will now turn upin trademark searches, which should discourage other companies from adopting itor using a confusingly similar mark.

Once a trademark application has cleared examination, either withoutobjection or by overcoming an initial objection, the mark will be published forpotential opposition by third parties. After a 30-day window, if no companyopposes, the registration is issued. If there is opposition, the proceedings aresimilar to trademark infringement proceedings.

The ownership and registration of a trademark offers legal protections and isa key marketing advantage. A strong trademark for your product, coupled with apervasive advertising or marketing program, can result in increased sales. Oneneed only consider some of the well-known brand names in the industry to see thepower a registered trademark can have.

This concept of brand recognition extends to company names, too. Trade namescan be registered in the same way as trademarks. They go through the sameapplication and registration process and have the same scope of protection, froma legal standpoint.

Charles Raubicheck is an attorney with New York-based Sidley & Austin.He may be reached at (212) 906-2000.