After spending countless hours building a business from the ground up—formulating a line of supplements, securing supplies, manufacturing and marketing products, and finally selling them—a supplement company wants nothing else but to succeed. But what can one do to stop others from using the company’s name to capitalize on its success? How can an owner protect her company’s slogans and ad copy against others who would like to use them? The solution lies in intellectual property law, which confers exclusive rights over the creations of one’s own mind.
Two main categories of intellectual property are trademarks and copyrights. Our supplement clients often ask us whether they should trademark their materials, or copyright them. The answer depends on what the company is looking to protect.
A copyright is a type of protection afforded to authors of “original works of authorship,” including literary, artistic, dramatic, and certain other works, whether published or unpublished. Books, songs, and paintings are likely candidates for copyright protection. In the dietary supplement realm, copyright protection can extend to companies’ product labels. Additionally, advertising, like the claims a company makes about its product’s efficacy on labels, websites, and print ads, may be protected to an extent.
The amount of protection that copyrights offer is a difficult question in the world of commercial speech, however. So while one needs to advertise to achieve success, those advertisements may or may not be protected from copying by others. Moreover, a company’s ads may invite litigation over claims of copyright infringement. Finally, copyrights do not protect names, slogans, titles, or logos. In sum, copyright protection may help guard a supplement company’s marketing and labeling, but there are many gray areas for which legal counsel experienced in the intersection of intellectual property law and dietary supplements is necessary.
Trademark law helps to fill the gap left by copyright law in protecting names, titles, slogans, and logos. A trademark is a word, name, symbol, or device used in trade in connection with goods to indicate the source of the goods and to distinguish them from the goods of others. Trademarks are ideal for protecting a brand or product name—once a company trademarks its name, others cannot use that name or a confusingly similar name in connection with their own goods. And if they do, the trademark holder can sue the other for infringement.
Trademarks do not have to be registered with the U.S. Patent and Trademark Office, but there are many advantages that attach at registration. First, companies can register “intent to use” trademarks, which allows them to protect their brand name while they develop their products for use in commerce. Unregistered marks don’t offer that protection—until it sells its products, a company must simply hope that the name it selected will not be used. Second, registered trademarks are recognized nationwide, while unregistered marks are generally only recognized in the area in which a company uses the name. So if a business is selling products exclusively in the Northeast, for example, a business in California may be able to use that company’s unregistered trademark. Third, if a company infringes on a registered mark, it is presumed valid and enforceable when the owner sues. However, the owner of an unregistered trademark must prove to the court that the mark is valid and enforceable.
Like copyrights, trademarks often involve tricky questions of law and business practice. In which class of goods should a company file its mark? If a trademark is filed in one class of goods, can a company register the same trademark in another? Will a company be sued for using a name that is too similar to another firm’s? If the Patent and Trademark Office files an Office Action tentatively denying a trademark, how should a company respond?
Collins, McDonald & Gann has a wealth of experience in the dietary supplements industry, representing a number of prominent, as well as start-up supplement companies. Part of what we do is handle our clients’ intellectual property needs, striving to protect their brand and image to the maximum extent allowed by law. We research proposed trademarks, file them with the Patent and Trademark Office, and respond to any communications questioning the validity of the mark. We review labels and advertisements, advising companies on what they should and should not include, with the goal of preventing lawsuits and expense down the road. And if a company first comes to us after being issued an FDA or FTC warning for deceptive adverting or being served with notice of a lawsuit, we can help minimize the impact of the crisis.
Please call us any time at 516-294-0300 if you have any questions about protecting your brand, or if you have any other questions or concerns about dietary supplements.