If you were to ask a person on the street who filed the most USPTO trademark applications – the pharmaceutical industry or sewing supply manufacturers, they would probably answer the former. And they would be correct. No surprises there. But what is interesting is that trademark applications filed in the USPTO under Nice class 26 (sewing supplies) have a success rate of 56.38%. That is higher than applications under class 5 (pharmaceuticals) which are approved 47.68% of the time.
One would assume that given the pharmaceutical industry is the third biggest trademark filer with the USPTO, it would have more success in application approval than, for example, the tobacco industry which is experiencing rapid decline. But in fact, class 34 (smokers’ articles) applications have a 49.30% success rate.
This data poses the question – does industry experience in trademark filing increase the likelihood of success with the USPTO?
Clearing and registering pharmaceutical trademarks in the United States
One thing is for sure – if you are filing in the USPTO under class 5, you had better know what you’re doing. In the United States the powerful Food and Drug Administration (FDA) must approve all pharmaceutical and generic names of drugs (the latter cannot be trademarked). This is a separate process from the trademark application and can take some time to complete. This makes the entire process more challenging than in other classes.
Furthermore, when it comes to drug trademarks, the USPTO applies a strict test related to the prospect of confusion. The consequences of one medicine being confused with another could be catastrophic so the extra caution is welcome. However, it does mean that the sophistication of the consumer is assumed from the standard of an ordinary patient, which increases the risk of having a trademark application rejected.
To make things even more interesting, the FDA only compares proposed product names against its own register. This can lead to tricky situations, if another company with a junior trademark right achieved FDA approval first for the relevant product name.
Trademarking a clothing brand
Class 25, which covers clothing, accounts for more filings than class 5, but the success rate is similar (50.13%). However, there is significantly less complexity in obtaining a trademark for a clothing brand when compared to a drug.
To register a clothing brand, the name and logo must be unique, not only in terms of other existing marks, but also common words, phrases, and designs. This is where preliminary search and clearance search tools become invaluable.
Filers also need to demonstrate that the trademark is “in use”. If the fashion line is still being developed, a submission can be filed as an “intent to use” application. This is to prevent people ‘sitting’ on trademarks and selling them at an inflated price as can occur with website domain names.
Fashion brands must contend with ornamental refusal. This is where the USPTO refuses an application on the grounds the sample and/or other records used in the application show evidence that the mark is merely ornamental rather than a distinctive mark for the purposes of brand identity. Ornamental refusal is a common reason applications under class 25 fail.
Less means more
Figures, as outlined in our recent eBook entitled “Top 200 USPTO Representatives in 2018”, suggest that the experience in filing trademarks and sophistication of a particular industry does not necessarily translate to an increase in application success. For example, there are very few USPTO trademark applications under class 15 (musical instruments), but there is a 60.08% success rate for filings.
What the data does show is that the less competitive trademark applications are within a particular industry, the more likely a company is to be successful. Classes 17 (rubber goods), 6 (metal goods), and 37 (construction and repair), all have over a 65% approval rate, even though the number of applications within these classes is modest.
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