Allergan, Inc.v.Boot Ox Pty Ltd.

Trademark Trial and Appeal Board

Mar 6, 2012

No. 91193303 (T.T.A.B. Mar. 6, 2012)

Mailed:
March 6, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Allergan, Inc.

v.

Boot Ox Pty Ltd.
_____

Opposition No. 91193303
to application Serial No. 79061765
filed on August 21, 2008
_____

Kenneth L. Wilton of Seyfarth Shaw LLP for Allergan, Inc.

Boot Ox Pty Ltd. pro se.
______

Before Seeherman, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Allergan, Inc. has opposed, on the ground of likelihood
of confusion, the application of Boot Ox Pty Ltd. to
register BOOTOX, in standard characters, as a trademark for
“shoe horns; shoe stretchers; boot stretchers; shoe brushes;
boot trees; shoe trees.”1 In its notice of opposition

1 Application Serial No. 79061765, filed August 21, 2008, based
on International Registration No. 0984106. (Section 66a of the
Trademark Act).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91193303
2
opposer has alleged that since 1990 it has marketed a
pharmaceutical product for the treatment of neurological
disorders and muscle dystonias under the trademark BOTOX;
that in 2002 opposer began marketing its BOTOX product for
the temporary improvement in the appearance of glabellar
lines; that opposer owns registrations for BOTOX for the
following goods:
pharmaceutical preparations, namely, ophthalmic
muscle relaxants2
pharmaceutical preparations for the treatment of
neurologic disorders3 and
pharmaceutical preparations for the treatment of
neurological disorders, muscle dystonias, smooth
muscle disorders, autonomic nerve disorders,
headaches, wrinkles, hyperhydrosis, sports
injuries, cerebral palsy, spasms, tremors and
pain;4

that opposer’s mark has become famous for the aforesaid
goods; and that applicant’s mark BOOTOX so resembles
opposer’s mark BOTOX as to be likely, when used on or in
connection with the goods identified in applicant’s
application, to cause confusion or mistake or to deceive.
With its notice of opposition opposer submitted copies of
the pleaded registrations taken from the USPTO electronic
database, showing that the registrations are currently
subsisting and that title is in opposer, and therefore these

2 Registration No. 1692384, issued June 9, 1992.
3 Registration No. 1709160, issued August 18, 1992.
4 Registration No. 2510675, issued November 20, 2001.
Opposition No. 91193303
3
registrations are of record. See Trademark Rule
2.122(d)(1).5
In its answer applicant has admitted opposer’s
ownership of its pleaded registrations and that the
registrations are valid and subsisting and incontestable,
and that opposer has long prior rights to the mark BOTOX for
the goods identified in opposer’s pleaded registrations.
Applicant has otherwise denied the salient allegations in
the notice of opposition and has asserted various statements
in further explanation of its denial of likelihood of
confusion.6
By operation of the rules, the record includes the
pleadings and the file of the opposed application. Opposer
has made of record, by notice of reliance, copies of its SEC
10-K annual reports for the years 2003, 2006 and 2009.
These reports were printed from the U.S. Security and
Exchange Commission’s website, at
http://apps.shareholder.com/sec. Although printed annual
reports are not considered printed publications under
Trademark Rule 2.122(e), they can be made of record by

5 In accordance with Board practice, we have confirmed that
subsequent to opposer’s making these registrations of record, the
registrations were renewed.
6 With its answer applicant submitted information regarding its
Australian registration. However, with the exception of an
opposer (or petitioner) submitting a copy of its registration
with its complaint, attaching an exhibit to a pleading is not a
proper way to make such material of record. See Trademark Rule
2.122(c). Accordingly, we have given no consideration to this
exhibit.
Opposition No. 91193303
4
notice of reliance if printed from the Internet, showing
their URL and date of downloading, and indicating the
relevance of the material. See Safer Inc. v. OMS
Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (“This
approach facilitates the introduction of matter for the
limited purpose of demonstrating what the documents show on
their face.”)7 Opposer has also submitted under notice of
reliance its requests for admission that were served on
applicant. Applicant did not respond to the requests for
admission, and therefore they are deemed to be admitted.
Fed. R. Civ. P. 36(a)(3).
Applicant did not submit any evidence, and only opposer
filed a brief.
The deemed admissions by applicant include that when
applicant selected its mark it was aware of opposer’s mark
and opposer’s three pleaded registrations; that applicant
selected its mark based on opposer’s BOTOX mark; that
applicant intends to use its mark on goods which are similar
to the goods on which opposer uses its BOTOX mark; that
applicant intends to use its mark in the same channels of
trade as those in which opposer uses its BOTOX mark; that
applicant’s mark is confusingly similar to opposer’s mark;
that opposer’s BOTOX mark is famous in the United States;
that third parties have commented to applicant, either

7 Thus, the probative value of this evidence is very limited.
Opposition No. 91193303
5
orally or in writing, that applicant’s mark is confusingly
similar to or reminds them or opposer’s BOTOX mark; that
third parties have commented to applicant, either orally or
in writing, that the goods sold under applicant’s mark
originate with opposer; that third parties have commented to
applicant, either orally or in writing, that the goods sold
under applicant’s mark are affiliated with opposer; and that
third parties have commented to applicant, either orally or
in writing, that the goods sold under applicant’s mark are
sponsored by opposer.
In determining the issue of likelihood of confusion we
must consider all of the probative facts in evidence that
are relevant to the factors set forth in In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). The evidence on
these factors is limited to applicant’s admissions that the
marks are similar and the goods are similar. In addition,
we have the further admission that the parties’ goods are to
Opposition No. 91193303
6
be sold in the same channels of trade, and that opposer’s
mark is famous. We also have admissions of actual
confusion, namely, that third parties have commented to
applicant, either orally or in writing, that the goods sold
under applicant’s mark are affiliated with opposer; and that
third parties have commented to applicant, either orally or
in writing, that the goods sold under applicant’s mark are
sponsored by opposer. Finally, applicant has admitted that
applicant selected its mark based on opposer’s BOTOX mark.
Given these admitted facts, and without any
countervailing evidence or legal argument from applicant,
including any evidence that would contradict these facts, we
find that opposer has met its burden of proving that
applicant’s mark BOOTOX for shoe horns, shoe stretchers,
boot stretchers, shoe brushes, boot trees and shoe trees is
likely to cause confusion with opposer’s mark BOTOX for
pharmaceutical preparations.
Decision: The opposition is sustained.