A trademark audit is at its most basic an asset inventory.  But instead of tracking down and counting blood pressure monitors, otoscopes and scalpels you are tracking down words, phrases and pictures (logos) that you are using to promote your business to the public. And instead of checking and noting the condition of these items and culling out those that are beyond repair or use, your trademark auditor will review how the marks are being used to be sure such use is proper and all of these marks have been searched and cleared for use. It may also find that you are using marks that no longer conform to your desired public image or Mission Statement and that such marks need to be retired.

A trademark audit should do more than just look at the marks that the business believes it owns.  A trademark audit should look at all of the company’s materials that are presented to the public and  review them for any words, phrases and pictures (logos) that are used to identify your company’s goods and services. A trademark audit will often identify terms that the auditor views as trademarks that the company may not realize it is using.  You might wonder – how can a company not know it is using a particular trademark?  This could be because marketing designed and distributed a flyer or brochure but did not review the terms being used – possibly due to a short deadline or perhaps they thought it would only be used “once”.  The audit may also identify terms that have been used for a long time that have simply fallen through the cracks.

Harvey Tettlebaum, a Husch Blackwell attorney specializing in healthcare law with an emphasis in post-acute care, contributed an article to the June 2013 issue of the Journal of Health & Life Sciences Law titled “Quality Measurements, Payment, and the Law: Disincentives to Physician-Patient Discussions of End-of-Life Care.”  Here is the abstract of the article.

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Are human genes patentable?

Late last week, the U.S. Supreme Court held that isolated segments of naturally occurring DNA are not patent eligible, while synthetically created DNA, such as complementary DNA (cDNA), is patent eligible. In the wake of this decision, patent portfolios should be reviewed to determine whether patents having claims to isolated DNA…

In recent months, two federal courts have dismissed lawsuits alleging that branded drug manufacturers’ discounted subsidies—coverage of co-payments—for branded drugs violate federal racketeering and commercial bribery laws.  The two cases are among a number of similar pending suits, largely coordinated by the healthcare consumer advocacy group Community Catalyst, which concern approximately 20 different branded drugs.  Both cases are significant victories for branded drug manufacturers, who face claims that they have defrauded health plans by offering discounted subsidies directly to consumers—nudging those consumers away from cheaper, generic options preferred by the health plans—in order to preserve market share for branded drugs.

The first action, brought by union health plans against the manufacturer Merck & Co. in the United States District Court for the District of New Jersey, was dismissed on April 29, 2013.  Judge Michael A. Schipp dismissed the action on grounds that the health plans lacked standing—that the health plans failed to allege that Merck’s discounted subsidies caused the health plans’ members to be prescribed or to purchase drugs that they would not have been prescribed or have purchased otherwise.

A second action against the manufacturer Bristol-Myers Squibb, also brought by union health plans under similar legal theories, was dismissed on substantive grounds by Judge J. Paul Oetken of the United States District Court for the Southern District of New York on June 6, 2013.

As Judge Oetken summarized the crux of the dispute between health plans and branded drug manufacturers:  “Insurers are keen to control drug costs, while manufacturers are determined to maintain market share while competing with generics and therapeutic alternatives.  In recent years, manufacturers have launched programs through which they offer to cover the cost of co-payment obligations for their branded drugs.  Insurers, which create tiered co-pay obligations to encourage plan members to select cheaper drugs, oppose these programs and argue that they increase overall drug costs.”

In other words, health plans use tiered co-payment plans to incentivize consumers to purchase less expensive, generic equivalents of branded drugs.  And, against these payment arrangements, branded drug manufacturers endeavor to preserve their market share by countering plan incentives with discounted subsidies.

An X-number, or “DATA-waived,” registration allows providers holding the registration to avoid U.S. Drug Enforcement Agency (DEA) registration requirements for narcotic treatment programs.  A health care provider that possesses an unneeded X-number registration creates unnecessary regulatory burdens for the provider’s practice.  Specifically, the DEA periodically makes unannounced site visits of all x-number registration holders.  Even…

On May 18th2013 HHS gave state Medicaid Fraud Control Units (State Attorney General MFCUs) more power to data mine for patterns of overpayments, waste, fraud or abuse. They expect these new resources to have an almost 7 to 1  return on investment to the United States government.  Providers should expect to see more…

Join three of our top IP attorneys for a discussion on intellectual property issues that impact healthcare companies.  For those of you who have followed our Branding 101 series, we are excited to move beyond branding and address other IP issues.   The webinar will include the following general intellectual property topics, with a particular focus on healthcare companies:…

A trademark is an adjective.  It is not a noun or a verb.  Why?  Because, a trademark’s purpose is to identify the source or origin of a product, NOT to identify the product itself.  You have gone to great lengths to find a mark that is not descriptive of your product, and we have discussed that generic marks can never be a trademark, so you do not now want to use your mark in such a way that you cause to become descriptive or generic.

This tends to be more a problem for the company coming out with a first-of-its-kind product.  Consumers are already unsure what the product is, and without careful marketing that new moving stairway becomes an “escalator” (originally a trademark of Otis Elevator Company); all coin operated laundries become “laundromats” (originally a trademark of Westinghouse); and all rolling toys on a string are now “yo-yos” (although still a trademark in Canada).

Newer situations that almost resulted in a successful brand name becoming the generic term for the product itself include “KLEENEX® brand tissues;” “Band-Aid® brand bandages” and “Rollerblade ® brand in-line skates.”  Yes, you want your brand to be successful; however, not to the point where it becomes synonymous with the product itself.