BOTULEX Confusable With Famous BOTOX Mark, Says TTAB
The fame of the registered mark BOTOX for certain pharmaceutical preparations led Opposer Allergan to victory in this Section 2(d) opposition to registration of the mark BOTULEX for "non-medicated skin care preparations for topical application to the skin." The fact that BOTOX is a prescription drug was of little consequence, since it was "not inconceivable, and is indeed likely, that it would be offered for sale together with skin creams as an adjunct or complement to the BOTOX® product." Allergan, Inc. v. KRL Group, Inc., Opposition No. 91169544 (October 25, 2013) [not precedential].
Fame: Opposer began using the BOTOX mark in the late 1980s. Between 1998 and 2012, its revenues for goods sold under the mark reached almost $10 billion. For 2011, revenues were nearly $1.6 billion. Its goods have been promoted in magazines and medical journals, on tv and radio, and on the Internet. Advertising and promotional expenditures exceed $175 million since 2002. And opposer's research showed 95% brand recognition in its target audience.
The Board concluded that the mark BOTOX is famous for pharmaceutical preparations for various indications, including cosmetic use for skin care. This factor, of course, weighed heavily in opposer's favor.
The Goods: The Board observed that there is no limitation in applicant's identification of goods, and so it must be construed to included skin care preparations that are intended to reduce the appearance of wrinkles and lines. "When so construed, applicant's goods are similar to opposer's pharmaceutical preparations for a cosmetic indication, namely, to reduce wrinkles and frown lines."
Applicant offers its product as an "Injection-Free BOTOX Alternative." The fact that consumers need a prescription to obtain BOTOX brand goods is of "little consequence" when applicant markets its product as a competitive alternative to opposer's product. This factor weighs in opposer's favor.
Again there are no restrictions in applicant's identification of goods, and it is presumed that they travel in all normal trade channels, to all potential consumers, for such goods. The normal trade channels for both cosmetics and pharmaceutical preparations are drug stores, pharmacies, and mass merchandisers and supermarkets with pharmacy sections. The Board agreed with opposer that it is likely that opposer's goods would be offered together with skin creams as a complement to the BOTOX brand product. The overlap in channels of trade and classes of purchasers favored a finding of likely confusion.
The Marks: The Board, pointing out that side-by-side comparison is not the proper test, found the marks to be similar in appearance and, more likely than not, sound. Moreover, consumers familiar with the ingredient "botulinum toxin" found in opposer's product may believe that BOTULEX refers to the same ingredient. And so the Board concluded that the marks engender similar commercial impressions. This factor favored opposer.
Balancing the relevant duPont factors, and giving the prior registrant the benefit on any doubt, the Board found confusion likely and it sustained the opposition.
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Text Copyright John L. Welch 2013.