The exclusive rights associated with trademarks provide a competitive advantage and serve as valuable assets for the companies that manufacture, market, sell and service medical devices and their components and/or offer related services.  While registration of trademarks is not required in the United States, the benefits of doing so render it strongly advisable. In many other countries, registration is a pre-requisite to any claim of exclusive rights.  Registration not only supports the scope and validity of exclusive rights and provides the ability to enforce them, but also optimizes the value of a portfolio by itemizing the marks as verifiable assets.  Such assets are included in balance sheets, annual reports and tax filings, and perhaps more importantly, they can be more easily securitized, licensed, or sold.  Medical device companies that are making products or providing services in relation to the COVID-19 pandemic may be entitled to expedited examination of the trademark applications for those products in the United States.

Medical device companies interested in building and maintaining a portfolio of trademark registrations where they manufacture, sell, and intend to sell their products must consider how to appropriately describe the products and services for which they use or will use their marks in their corresponding applications for registration. The descriptions of goods and services and the corresponding scope of trademark rights can vary significantly between jurisdictions, and an improper description can prompt an objection by the relevant trademark office and result in additional costs, or worse, unnecessarily limit the scope of trademark rights obtained.

The various goods and services that a trademark registration may cover are generally categorized in up to 45 international classes under an international treaty.^[1] The first 34 classes refer to products and the remaining classes are for services. While the treaty sets general guidelines, each country has its own rules of how to describe the items of a given category in its trademark applications. In countries that adhere to said agreement, recognizing some general principles of the nature of the goods that will be registered may have relevant cost and scope implications.

The United States Patent and Trademark Office (USPTO) follows a fairly stringent approach when reviewing the description of goods and services, whereas many Trademark Offices in other countries are more willing to accept broader descriptions.  For example, most European Trademark Offices may likely find an application for “medical devices including catheters” in Class 10 acceptable, whereas the USPTO would surely object to such a description as indefinite.  The USPTO does accept the description of “catheters” on its own, but it would likely object to the use of the term “including” in order to ensure the description clearly lists all of the medical devices for which the mark is used.  Also, Examining Attorneys in the USPTO with limited knowledge of an applicant’s actual business may recommend descriptions that are narrower in scope than required, such as “medical device for percutaneous intraluminal emplacement of coronary bypass grafts.”

Although most medical devices fall into International Class 10, there are other relevant categories in which it may be advisable to seek protection, if feasible. For example, software for operating a medical device may fall in Class 9, a device used as part of a kit for the medical administration of a drug may fall in Class 5, and a device sold as part of a cosmetic kit containing wipes, body gels or creams may fall in Class 3. Other goods such as reagents, athletic or protective gear, rehabilitation products, and many others may be classified in several categories depending in part on the therapeutic or medical use. Shifts in demand for medical devices from healthcare professionals to general consumers can also impact classification.

For example, face masks have transitioned from being a specialized product with limited variations in style, color, material, and shape and intended primarily for a subset of healthcare workers.  Demand for face masks by general consumers has grown suddenly and drastically, resulting in a variety of product lines, with different functional and ornamental features, and they are now used by almost everyone on the street. In trademark applications, masks fall under Classes 3, 9, 10, 25, and 28 depending on their purpose.  In the first half of 2020, the USPTO quietly modified numerous entries related to masks in its Trademark ID Manual of pre-approved descriptions of goods and services. It deleted several previously acceptable descriptions for masks as indefinite and overbroad and added new, narrower descriptions.  Among the deletions were the following:

• “Protection masks”,
• “Protecting masks”,
• “Respiratory masks for non-medical purposes”,
• “Protective face masks not for medical purposes”, and
• “Oxygen masks not for medical use”, all from Class 9.

Applications that include these descriptions are likely to encounter objections and will have corresponding costs associated with addressing them.

Newly added, narrower mask descriptions in Class 9 included:

• “Protective face masks for the prevention of accident or injury”,
• “Protective industrial respiratory masks”,
• “Respiratory masks for the prevention of accident or injury”,
• “Bullet-resistant face masks”,
• “Aviation oxygen masks”, and
• “Protective industrial face masks”, all in Class 9.

The USPTO also added new, narrower descriptions of masks in Class 10 as follows:

• “Fashion masks being sanitary masks for protection against viral infection”,
• “Personal protective equipment (PPE), namely, masks for use by medical personnel”,
• “Disposable sanitary masks for protection against viral infection”,
• “Reusable sanitary masks for protection against viral infection”,
• “Sanitary masks made of cloth for protection against viral infection”,
• “Face coverings being sanitary masks for protection against viral infection”,
• “Face covers being sanitary masks for protection against viral infection”,
• “Sanitary masks for protection against viral infection”,
• “Sanitary masks for dental use”,
• “LED masks for therapeutic purposes”, and
• “Masks for inhaling pharmaceutical preparations”.

It is interesting to note that, probably due to the hyper-focus on COVID-19, the USPTO has not added pre-approved descriptions for masks that protect against bacterial infection.  There is, however, an older, pre-approved description that is broader in nature: “Sanitary masks for germ isolation purposes”.

By contrast, the European Union Intellectual Property Office, which accepts applications covering the 27 European Union members (excluding the United Kingdom as a result of Brexit), will accept “protective masks” or “masks [protective -]” in Class 9 without requiring any further qualification.  Consequently, European medical device companies seeking trademark registration in the United States may not be able to obtain appropriate scope if they utilize an International Treaty allowing for so-called International Registration (ie, the Madrid Protocol) based on their home country application or registration.  This is because the USPTO will not register an extension for goods or services in different classes from the International Registration.  The European owner of a registered trademark only for “protective masks” in Class 9 will not be able to register for “sanitary masks for protection against viral infection” in Class 10 in the United States using the treaty, and will instead need to file a direct national U.S. application for those goods, if they are important.

Medical device companies may also offer services related to the products, and if so, they should consider registering the relevant trademarks for those services.  Common services and their appropriate classification include: wholesale and retail store and distribution services whether in brick and mortar facilities or online (Class 35), insurance and financial services (Class 36), installation and repair services (Class 37), software services (Class 42), medical and other healthcare services (Class 44), and licensing services (Class 45).

Medical device companies seeking trademark registrations may take advantage of the opportunity to expedite their U.S. applications for COVID-related goods and services, but should be prepared for the additional costs and efforts arising from the USPTO’s requirements regarding how the goods and services may be described.

In our next installment, we address how the selection of trademarks can impact the scope of property rights a medical device company may claim in relation to its products and services.

^[1] Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957); Note that some countries do not follow the Nice classification system, and instead use their own national classification systems.