The scenario is all too familiar: you develop a winning dietary supplement formula, secure high-quality manufacturing and market the product under a strong trademark. Before you know it, your brand gains notoriety—resulting in a devoted following of consumers who come to trust your product. And then sales unexpectedly drop off. Why? A copycat began selling similar products under a similar trademark, confusing your customers and stealing your sales. What to do?
You can take steps to prevent bad actors from hijacking your brand. The most effective? Register your trademark with the U.S. Patent and Trademark Office (USPTO). Doing so provides great value for only a modest investment:
• Use of the ® symbol to deter would-be infringers.
• Priority rights to the mark in every state.
• Placement in the USPTO database used to check mark availability.
• The right to sue in federal court.
• And a valuable asset that you can license or sell.
You can also record your registration with U.S. Customs and Border Protection (CBP), which helps seizure of counterfeit goods that infringe your trademark.
That being said, when registering a trademark for dietary supplements, brands face issues unique to the industry. Companies must be equipped to navigate a variety of potential issues.
No government agency approves your trademark before launch
Trademarks applied to dietary supplements will not be vetted by a government agency before product launch. This differs from pharmaceutical trademarks, which are generally reviewed by FDA to ensure no confusion could occur with existing drug names. As such, the stakes are higher for dietary supplements: Often a brand will launch a product, only to find out later that its trademark infringes an existing brand. Before launching a product, work with experienced trademark counsel to confirm your trademark is registrable and does not infringe an existing registration.
Decide which trademarks to protect
A brand owner must also be strategic about which trademarks to protect: the overarching mark under which all of its products are sold (a “house brand”), the mark under which a specific product is sold (a “product mark”) or both? A mark consisting only of words, or a mark with design elements like color, font or a logo? Answering those questions requires knowledge of which marks are already in use by others—including marks already registered with the USPTO—to avoid picking a mark that infringes an existing brand.
Make sure your trademark doesn’t infringe an existing brand
If a brand owner launches its supplement under a trademark that is confusingly similar to a competitor’s, use of that mark may be infringement. If the existing mark has been registered with the USPTO, it may also prevent the brand owner from registering its similar mark. The new mark need not be identical to the existing mark to infringe. Instead, the marks need only be confusingly similar.
For example, one company was prevented from registering the mark RAINFOREST NUTRITION for nutritional supplements because, according to the USPTO, it caused a likelihood of confusion with a previously registered mark RAINFOREST ANIMALZ for similar goods. Likewise, a new mark can infringe a registered trademark for a different product. For example, the USPTO refused to register the mark DUB for dietary supplements on the basis that it was likely to cause confusion with an identical mark for nonalcoholic energy drinks. According to the USPTO, supplements and energy drinks are in some cases sold by a single source, increasing the chance of confusion.
Avoid trademarks that merely describe your product
Brand owners may not be able to protect or register a mark if it is found to be “merely descriptive” of the product on which it used. For example, one brand was prevented from registering the mark PERFORMANCE for energy-boosting supplements. According the USPTO, the mark merely described the product’s purpose, which was meant to improve the consumer’s athletic performance. In a different matter, the USPTO denied registration of the mark CREATINE GUMMIES, finding it to be merely descriptive of the goods sold under the mark: dietary supplements containing creatine.
Do not use deceptive trademarks
Brand owners should also avoid trademarks that suggest a product includes an ingredient that it does not. For example, the USPTO denied registration of the mark for P6 CHROME for dietary and nutritional supplements that did not contain chromium. According to the USPTO, the mark was “deceptively misdescriptive” because it would lead consumers to mistakenly believe the product contained chromium, when it did not.
Act early and seek
Without a registered trademark, your brand is more susceptible to being hijacked by a competitor. Select an enforceable trademark, confirm it does not infringe existing brands and register the mark as soon as possible. Rely on an experienced trademark attorney to guide you. Registering a trademark for a dietary supplement involves navigating issues unique to the industry, and doing it right the first time can save you a lot of grief down the road.
The information contained in this article is provided for informational purposes only, and should not be construed as legal advice on any subject matter.
Brian Thomas is an intellectual property (IP) lawyer that helps natural products companies establish, protect and enforce their trademarks. He practices with the law firm Sheehan Phinney, out of its Boston and Manchester, New Hampshire offices.