A utility patent, such as the patent for the formula of esomeprazole (brand name Nexium) expires 20 years from the date the patent application is filed. In contrast, a trademark (such as the brand name “Nexium”) lasts as long as the trademark is used in commerce and defended against infringement.
Generic manufacturer, Dr. Reddy’s Laboratories, began producing lower cost generic versions of the esomeprazole (Nexium) drug in September of 2015. However, Dr. Reddy’s Laboratories generic product looks similar to and uses similar purple coloring as the Nexium brand product. On November 6, 2015, Delaware Federal District Court Judge Sue L. Robinson found a high degree of similarity between the two products and strong likelihood of confusion of the two products by the consumer.
AstraZeneca had the forethought to establish trademark and brand status of the purple color associated with heartburn medication. AstraZeneca then registered its trademark with the United States Patent and Trademark Office which awarded AstraZeneca three federal trademark registrations covering the color purple for GI pharmaceuticals and one covering the phrase "THE PURPLE PILL®" for the same goods ("the Purple Marks"). Judge Robinson found that AstraZeneca had established the Purple Marks branding was “of long duration, of value and strong.”
Dr. Reddy Laboratories has been ordered by Judge Robinson to “immediately stop the sale, delivery, transfer, or other disposition of its generic” medication. Thus, through use of its trademark rights, AstraZeneca has succeeded in getting a competitor’s infringing products pulled from the market.
The Intellectual Property team at Bathgate, Wegener, & Wolf P.C. has experience in obtaining registration of trademarks before the USPTO to protect the interests of our clients.
by Daniel F. Corrigan