Expert SpotlightAugust 2016 - Q&A with Rogelio Reyes, Vice President, Trademarks
Rogelio “Roly” Reyes joined Brand Institute in 2001 and oversees the trademarks department. Mr. Reyes received his B.A. from the University of Chicago and J.D. from Tulane University School of Law in New Orleans.
We sat down with Mr. Reyes to discuss trademarks in the healthcare space and beyond, and the path that led to his role at Brand Institute.
BI: Could you please provide a brief overview of Trademarks for those who are not familiar with the field?
RR: Basically, Trademark law is a field of law that governs the use of a word, phrase, or symbol; it’s basically anything that a company or individual uses to distinguish their goods or services from those of somebody else’s.
BI: What initially led you to pursue a career in trademark law?
RR: After law school graduation I moved back to Miami where I worked for a small firm that did general corporate and trademark law. This is where I got exposed to intellectual property law and I really enjoyed this part more than any other part. It was very exciting to be in a field of law that wasn’t necessarily litigious: Clients would come to us with a new product or service that was a new and exciting thing for them and you would play a role in getting their product to market. Another aspect that was exciting to me was the way it challenged my mind — trying to uncover what trademarks are out there and what may be a conflict — it seemed like a word game.
BI: What is so significant about owning your trademark?
RR: Well, when you’ve invested so much time and money into a product or service you want to make sure that everyone knows that it is your product or service. In order to do so you come up with a unique name or phrase, etc. to distinguish that. It’s important to own that so another company doesn’t infringe on your product or service. The most important aspect of trademark law is to identify the source of a product or service…that is the ultimate thing that is protected. This prevents consumers from being confused as to the origin or producers of a product.
BI: Describe the role of trademarks in the pharmaceutical industry and how it pertains to your role at Brand Institute.
RR: It’s very similar when it comes to pharmaceuticals. The main difference is the regulatory issue, which also happens to be the main obstacle to getting a name approved. What companies are trying to avoid is their drug being confused with an existing drug, which can result in harm to the patient. The important thing for pharmaceuticals is the same for any consumer good: to protect the end consumer while also preventing another company from creating a similar product under a similar name.
BI: What do you do to stay up to date with new trademark legislation and software?
RR: INTA, the International Trademark Association, is a great source. Their website posts news articles and things of that nature highlighting new trends in the field. They also hold roundtables which is a great place to meet local practitioners and stay up to date with everything. INTA also has an annual conference which is a great opportunity to see new or upgraded services offered by vendors. This is another good way to stay on top of what is being developed.
BI: Has trademark legislation changed recently?
RR: As far as the U.S. goes there hasn’t been anything really different. In Europe we did see a few changes earlier this year. First, the name of the organization changed from the Community Trademark (CTM) to the European Trademark (EUTM). The other major change involved the way companies described their product on the application. This made it a more in-depth process and avoided broad product descriptions.
BI: How does the existence of trademark classes allow companies to have the same mark?
RR: I actually get that question a lot…essentially the international systems are set up with 45 trademark classes grouped based on a particular good or service. For instance if we look at class 5 which pharmaceuticals belong to, you’ll also see pesticides, herbicides, and nutritional supplements. There can be similar trademarks within a class so long as the products or services don’t overlap.
BI: How should one go about choosing a trademark registry and class?
RR: The U.S. Patent and Trademark has a great website which is a great resource for researching potential existing trademarks — I use this resource a lot too. You can basically type in your good or service and it will give you a list of existing descriptions and the associated trademark classes. This is always a great starting point.
BI: What has been the most rewarding part of working for BI?
RR: In my 15 years at Brand Institute I think the most rewarding part is the sheer volume of brand names that we work on and having the opportunity to work with so many different clients on different assignments all over the world. If I had worked at a traditional law firm I would have never had that opportunity. The client interaction is great — they have a new product and they’re pumped about this product — they’re so excited! We get to play a part in that.