INTA: pharma panel and keyword panel

INTA Industry Breakout: Trademark Challenges and Opportunities in the Pharmaceutical World

Moderator: Maria J. Fernandez Marques, Pfizer Gmbh (Germany)

Christopher Hanes, GlaxoSmithKline (United States)

Branding clinical trials: benefits in making the physician like the drug/recall it later.  Acronyms used to assist recall.  Ask yourself: will the brand be used to recruit patients?  Where/in what countries?  Have to consider this in context of TM search. Also consider whether brand will be used with education services as well.

Once investigational product receives approval, more opportunities.  Benefits include facilitating engagement with medical community—allows company to participate in developing scientific understanding with leading experts.  Also provides access to patients/better patient compliance.  Also helps payors if patients benefit.

Branding diagnostic tools—some of them are more on the descriptive side; consider whether they qualify as source IDers.  Also consider copyright issues in developing test; sometimes developed with external scientists.  Consider copyright with respect to consent to use the materials.  Sometimes materials are validated based on presentation: permission may be conditioned on verbatim use.

Disease awareness websites directed at consumers offer other branding opportunities: can give general info about various treatment options along with info about conditions/diseases.  Mobile apps are increasingly important: e.g., help migraine patients track their own conditions.  TheUsInLupus site: support network, not talking about products specifically.  Health education resources: targeted at organizations or individuals. 

Generic strategies: alternatives: company name plus generic term; umbrella brand for multiple products; single name for each product. 

Ulrich Reese, Clifford Chance (Germany)

Pitfalls: Pharma TMs play a critical role in product life cycle. Need different brands preapproval, postapproval, and after patent expires.  All must take into account business aspects as well as regulatory framework. 

Main regulatory principles for may/most markets: prohibition on premarketing nonapproved products.  Prohibition on confusing brands and on promoting prescription drugs to the general public (many countries including EU).  Prohibition on abusing a dominant position impeding generic competition: beware antitrust.  Take into account rules on generic substitution for prescriptions.

Branding clinical trials connects product to a trial.  But you don’t want to take an invalid head start.  Are you barred from communicating about data being produced?  Yes and no. May  not market, but may communicate scientific information, media, investor advisories.  Linedrawing must be case by case.  General rule: product related information should be nonpromotional in nature, tone and content; should be targeted to special interest group like doctors; focused on what is necessary to satisfy particular requests for info.  Intent is relevant.

What does that mean for branding clinical trials?  Can be illegal if trial brand is used as a proxy for the marketed product or is designed to promote product instead of facilitating scientific communication.  Room for reasonable/balanced use exists.

Name choice: note extra constraints—invented name shouldn’t have misleading therapeutic connotations; shouldn’t be likely to be confused with another drug generic or brand name when handwritten, etc.  Written from consumer protection perspective to avoid medication errors.  Invented name must not be too similar to the generic.  Very complicated to satisfy all constraints.

Limited room for communicating with non-healthcare professionals. Branding information is forbidden.

After loss of exclusivity: most countries have rules on substitution.  Doctors may be under obligation to prescribe a generic.  Even if doctor prescribes original, pharmacist may be under obligation to substitute a generic.  What about texture or appearance?  May be unable to enforce rights in that too in order to further substitutability.  Mitigate risk of substitution by pricing/rebate schemes for payors; market communication on sensitive product characteristics (small differences can be important for things like narcotics and other dose-critical drugs; differences in bioavailability); strong footprint of original (payors may like to tell people that they cover the original).  Antitrust authorities will be watching closely, though.

Hanes: in searching, be sensitive to differences in Class 5: a traditional supplement won’t necessarily pose much of a barrier.  But search must expand to cover services as well. 

Reese: you will always find TMs that come near your choice; 60% will be turned down on that ground; 50% of the remainder will be turned down in the regulatory process. Need plan B, C, and D.

Competitor’s Use of Keyword Advertising and Search Engine Optimization (SEO): Hey!  They’re Using My Trademarks!   

Moderator: Brian Isaac, Smart & Biggar/Fetherstonhaugh (Canada)

Have to consider how to rank high on organic results as well as monitor sponsored results. 

John Ramsey, Rosetta Stone Ltd. (United States)

Company quickly realized it needed to deal with TM online.  In ongoing litigation with Google over much of what we’re talking about, so constrained by that.  Keyword: how folks try to find you and how other folks try to take advantage of your brand.

Brand owners invest in affinity, trust, recognition; brand owners are forced to bid against everyone else to get their sponsored links to appear.  If you have lots of rogue/pirate sites, in addition to confusion/traffic diversion, you have incremental increase in your own bid cost.  Must police paid and organic search results.  Harm is already done from our perspective if an ad sells counterfeits.  That traffic and the experience they have at that site impacts their experience looking for your brand.  Process for TM owner to address each instance of infringement is asymmetric to the ease with which a counterfeiter can register and start a business online.  Search engines are a gateway for rogue websites.  Either counterfeits or data mining for nefarious purposes.  Fair amount of traffic comes from organic results, despite money spent on ads.

Everyone is trying to figure out how to appear high in the organic results.  Rosetta has found itself outranked on its own product: how could that be?  Domain name squatters, though domain name alone isn’t enough; need content.  Gobbledegook backlinks, hidden at the bottom of the page where the consumer won’t see that; though search engines are getting wise to that.  Black hats try new techniques now that search engines are wise to link farms.  Register 100 Rosetta sites, populate with content, then link to each other; finally all link to one domain, which then shows up at the top rank.  Taking out one link in the chain wouldn’t affect the top.

We have FAQs on login, headphones, etc.  Counterfeiters took the titles of our articles and copied all the content and built pages to raise their ranking.  Our own knowledge base wasn’t getting indexed so we weren’t getting the juice and they were.

Can’t face this alone.  Need a plan.  Are your tools TM, copyright?  Company buy-in to enforcement is key because it affects all levels.

Increasing geotargeting is a new challenge: sites disappear depending on where you monitor from—they’d buy ads everywhere except Harrisonburg, where our office is.  Redirects: send DMCA notice, and the ISP says “there’s no Rosetta Stone content on this site!” because of the redirects.  Keep apprised of platform ToU.  Often you can send a legal notice through TM/copyright forms, but can get faster results by complaining about a terms of use violation.  Complaint policies change periodically.  Google has different policies about what it will and won’t investigate depending on the country. 

Look for opportunities to coordinate with other brands.  If they’re doing it to you, they’re probably doing it to someone else.

Howard Hogan, Gibson, Dunn & Crutcher LLP (United States)

Represented American Airlines in lawsuits against Google and Yahoo!  But will try to give both sides’ perspectives.  Search engines are unalloyed public goods.  Not government agencies, not charities; they do it to make money and wouldn’t do it if they couldn’t profit.  Economic model that’s developed is designed on getting people to click on one part of a results page rather than another, and that’s true whether you’re talking paid or organic.  All the social research indicates that people hate ads.  Genius of search engines: their system works, whether it’s fair or not, to get people when they are in the frame of mind to click on a link to buy something.  They only need a small percentage of searchers to generate massive profits.

Law is reactive.  Last battle was use in commerce.  Moved on: Network Automation.  Then Rosetta Stone v. Google.  A piece of the latter which hasn’t drawn attention is that the 4^th Circuit went further on discussing Google’s in-house confusion studies at the time Google decided to start selling keyword TMs.  94% of internet users are confused at some point about TMs.  District judge said those weren’t Rosetta Stone users, but 4^th Circuit said the jury could infer from them that it is more likely that Rosetta Stone-searching users were confused.  Also reversed district judge’s exclusion of a sponsorship survey. It’s not just a question of whether people will think that Rosetta Stone sponsors Google or v.versa but rather whether the links are confusing.  (Why isn’t this only a basis for secondary liability, not direct liability?)

Google vigorously argued lack of intent: just trying to allow comparative advertising.  4^th Circuit concluded that, with the internal surveys, Google balanced the risk of litigation against the boost in revenue from allowing TMs and concluded that a reasonable jury could infer intent to cause confusion (not indifference?).  Court wasn’t willing to allow presumption of confusion from this evidence.  4^th Cir. created a mini-split with 9^th on importance of strength of the mark; 4^th said you wouldn’t consider strength very important because in any nominative use case you’d expect some strength, whereas 9^th Cir. said that mark strength was a highly important factor.  Also important: reversal of district court’s functionality ruling.  Duration of confusion: we don’t know how long people spend on the sites; they may simply click away when they recognize it’s not what they want.

Are consumers getting more sophisticated?  One new study seems to confirm that consumers don’t know what’s advertising and what’s not.  Some are very sophisticated, and some are very unsophisticated.

American Airlines: tried to get best reasonable estimate of how many consumers might have come back to AA after first being diverted, so that they wouldn’t overclaim damages.

Jeff Livingston, author

Social media: comments, links are necessary; keywords fail without the required content.  If people don’t find American Airlines on your site, they’ll go back.  If they see there are no peer reviews/discussion, they’ll go back.  Now see dummy Twitter accounts/retweets created; that won’t work when a real person sees the site.  Unwillingness to mention competitors makes it hard to become an industry leader: insults customers to pretend that the competition doesn’t exist when you are in fact looking at everything they do and reverse engineering them when they’re good.  If you say you’re doing good, you can also say your competitors are doing things, and why you think yours is better (e.g., for the environment).  That provides a lot of relevant links/keywords and prompts discussion: good karma.

Google rep in Qs: Hey, we have pretty good counterfeit algorithms—90% of sites removed for counterfeiting are detected automatically. We also respond within 24 hours to any report, and have a spam site reporting tool.

Me: why isn’t this contributory infringement? How can it be direct by Google?

Hogan: lawyers argue it’s both; Google has taught people to expect the first result to be the TM owner.  Studies show that consumers can’t tell ads from organic.

Me: Ok, but as direct infringement that implies two things: (1) Google’s liable for the organic results; (2) Google’s liable even when the first result is the TM owner, because consumers expect some sort of authorization relationship.  I just want an explanation based in TM law for the direct v. secondary claims.

Hogan: organic is different than paid search.

Me: you just said consumers can’t tell the difference; you can’t have it both ways.

[missed some further questions/discussion, including about the revenue models of these sites.]