Allergan, Inc.v.KRL Group, Inc.

Trademark Trial and Appeal Board

Oct 25, 2013

No. 91169544 (T.T.A.B. Oct. 25, 2013)

Mailed: 10/25/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Allergan, Inc.
v.
KRL Group, Inc.
_____

Opposition No. 91169544
to application Serial No. 78553180
filed on 01/25/2005
_____

Kenneth L. Wilton and Julia K. Sutherland of Seyfarth Shaw for
Allergan, Inc.

Claudio Rivera for KRL Group, Inc.
______

Before Quinn, Taylor and Adlin,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

KRL Group, Inc. (“applicant”) filed, on January 25, 2005,
an application to register the mark BOTULEX (in standard
characters) for “non-medicated skin care preparations for
topical application to the skin” in International Class 3.
Applicant alleges first use of the mark anywhere and in commerce
on October 2, 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opp. No. 91169544

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Allergan, Inc. (“opposer”) opposed registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s goods, so resembles opposer’s previously used and
registered mark BOTOX (in typed or standard characters) for
“pharmaceutical preparations, namely, ophthalmic muscle
relaxants”;1 “pharmaceutical preparations for the treatment of
neurologic disorders”;2 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,”3 as to be likely to cause confusion.4
Applicant, in its answer, denied the salient allegations of
likelihood of confusion.
The record consists of the pleadings; trial testimony (with
related exhibits) of Mark Chaplin, opposer’s global strategic
marketing manager, taken by opposer; status and title copies of
opposer’s pleaded registrations introduced by way of opposer’s
notice of reliance; and various documents submitted with

1 Registration No. 1692384, issued on June 9, 1992; renewed.
2 Registration No. 1709160, issued on August 18, 1992; renewed.
3 Registration No. 2510675, issued on November 20, 2001; renewed.
4 In its brief opposer specifically withdrew its claims of lack of
ownership of the mark and fraud.
Opp. No. 91169544

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applicant’s notice of reliance.5 The parties filed briefs.6
STANDING
Opposer has established its standing to oppose registration
of the involved application. In particular, opposer has
properly made of record its pleaded registrations of its mark
BOTOX; in addition, opposer demonstrated its use of the mark
BOTOX. Thus, opposer has shown that it is not a mere
intermeddler. Opposer’s use and/or registration of its mark
establish that opposer has standing. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
PRIORITY
In view of opposer’s ownership of valid and subsisting
registrations of its mark BOTOX, opposer’s priority is not in
issue with respect to the goods identified in those

5 Several of the documents are not proper subject matter for
introduction by a notice of reliance. Other than hearsay objections,
however, opposer has treated them of record, noting that some of the
evidence is probative of opposer’s case. Accordingly, we have
considered the documents to be stipulated into the record, although in
considering them we have kept in mind opposer’s hearsay objections.
6 Applicant, in its brief, objected to opposer’s testimony deposition
on the ground that it was not timely filed with the Board. With
regard to the filing requirements of Trademark Rule 2.125(c), the
Board “will accept transcripts of testimony depositions at any time
prior to the submission of the case for final decision.” TBMP §
703.01(k) (2013). Inasmuch as the transcript was filed on July 12,
2013, the objection is overruled, and the Board has considered the
testimony.
Opp. No. 91169544

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registrations. King Candy, Inc. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Opposer must establish that there is a likelihood
of confusion by a preponderance of the evidence. In any
likelihood of confusion analysis, however, 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). These factors, and the other relevant du Pont
factors in the proceeding now before us, are discussed below.
FAME
We begin with this du Pont factor, on which opposer has
introduced a significant amount of probative evidence. Indeed,
applicant states “[i]t is clear that the BOTOX mark has achieved
celebrity.” (Brief, p. 1). Fame of the prior mark plays a
dominant role in likelihood of confusion cases featuring a
famous mark. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and
Opp. No. 91169544

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Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d
350, 22 USPQ2d 1453 (Fed. Cir. 1992). Because of the extreme
deference accorded to a famous mark in terms of the wide
latitude of legal protection it receives, and the dominant role
fame plays in the likelihood of confusion analysis, it is the
duty of the party asserting fame to clearly prove it. Lacoste
Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009);
and Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposer began using its mark BOTOX for pharmaceutical
preparations in the late 1980’s, and has continually used the
mark since that time. Between 1998 and the end of 2011,
opposer’s revenues from goods sold under the mark BOTOX in this
country were almost $10 billion; the most recent figures show
revenue for 2011 at nearly $1.6 billion. (Chaplin dep., pp. 45-
57).
Opposer has promoted its goods for cosmetic use in
magazines (Elle, Glamour and Redbook), and medical journals
(Journal of American Academy of Dermatology, and Skin and
Allergy News), on television and radio, and on the Internet.
Since 2002, opposer’s advertising expenditures for promoting the
cosmetic indication for the goods sold under the mark BOTOX
exceed $175 million; in the period 2005-2012, opposer spent
Opp. No. 91169544

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about $15 million per year in the United States on its
promotional efforts. (Chaplin dep., pp. 16-24).
The target audience for opposer’s product comprises
females, aged 30-60 years, with a household income of more than
$50,000. Among this group, opposer’s own market research shows
a brand awareness of the mark BOTOX of over 95%. (Chaplin dep.,
pp. 43-44). See Coach Services Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012)
(substantial evidence proving fame included internal brand
awareness study).
Based on the record before us, we find that opposer’s mark
BOTOX is famous for pharmaceutical preparations for various
indications, including cosmetic use for skin care. See
Allergan, Inc. v. Mira Life Group, Inc., 72 USPQ2d 1756, 1758
(C.D. Cal. 2004) (the Court found “the BOTOX® mark has become
famous in the United States” based on evidence similar to that
in the present proceeding). Contrary to the gist of applicant’s
argument that confusion with a famous mark is less likely to
occur among consumers (Brief, pp. 10-11), the case law is clear
that famous marks enjoy a wide latitude of protection. “Famous
marks are accorded more protection precisely because they are
more likely to be remembered and associated in the public mind
than a weaker mark.... When an opposer’s trademark is a strong,
famous mark, it can never be of little consequence.” Recot Inc.
Opp. No. 91169544

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v. M.C. Becton, 54 USPQ2d at 1897, quoting Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ
1281, 1284 (Fed. Cir. 1984). The Federal Circuit has stated
repeatedly that there is no excuse for even approaching the
well-known trademark of a competitor inasmuch as “[a] strong
mark...casts a long shadow which competitors must avoid.”
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 22 USPQ2d
at 1456.
We find the du Pont factor focusing on fame weighs heavily
in favor of finding a likelihood of confusion.
THE GOODS
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods. It is
well settled that the goods of the parties need not be identical
or competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they would
or could be encountered by the same persons under circumstances
that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source.
See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
1399, 1410 (TTAB 2010); and Hilson Research, Inc. v. Society for
Opp. No. 91169544

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Human Resource Management, 27 USPQ2d 1423 (TTAB 1993). The
issue, of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion as
to the source of the goods. In re Rexel Inc., 223 USPQ 830
(TTAB 1984). “When a product reaches the marketplace under a
famous mark, special care is necessary to appreciate that
products not closely related may nonetheless be confused as to
source by the consumer because of the fame of the mark.” Bose
Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1310, citing
Recot Inc. v. M.C. Becton, 54 USPQ2d at 1898.
We make our determination regarding the similarities
between the parties’ goods, channels of trade and classes of
purchasers based on the goods as they are identified in the
application and registrations, respectively. Octocom Systems
Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); and Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992).
In 2002, the United States Food and Drug Administration
(“FDA”) approved opposer’s pharmaceutical preparations for a
cosmetic indication, namely, for the temporary improvement in
the appearance of glabellar lines, more commonly known as
“frown” lines or wrinkles that appear in the middle of the
forehead. The product did not change when the FDA approved it
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Opp. No. 91169544

10

The packaging highlights applicant’s effort to market its
product as an alternative to opposer’s product. As Mr. Chaplin
testified: “Ultimately when you use a cream or lotion, you
know, again, you’re looking at maybe reducing the appearance of
fine lines, wrinkles, making yourself look a bit younger, make
yourself a little bit fresher, so ultimately they are a
competition to the injectables.” (Chaplin dep., p. 43).
The distinction pointed out by applicant, namely, that
consumers need a prescription to obtain opposer’s injectable
product, is of little consequence when we consider the fact that
applicant markets its product as a competitive alternative to
opposer’s product. Further, that the goods sold under the marks
are classified in different classes, a major point argued by
applicant, is irrelevant. See Jean Patou, Inc. v. Theon Inc., 9
F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993) (classification
is for the convenience of the Office).
The similarity between the goods is a factor weighing in
favor of a finding of a likelihood of confusion.
TRADE CHANNELS and PURCHASERS
Inasmuch as there are no restrictions in applicant’s
identification or the identifications in opposer’s
registrations, it is presumed that the identifications encompass
all goods of the type described, that they move in all normal
trade channels for such goods, and that they are available to
Opp. No. 91169544

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all potential consumers for such goods. Paula Payne Products
Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973); and Tea Board of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1897 (TTAB 2006). The normal trade channels for
pharmaceutical preparations and cosmetics for skin care include
drug stores, pharmacies, and mass merchandisers and supermarkets
with pharmacy sections. See Jean Patou, Inc. v. Theon Inc., 29
USPQ2d at 1774 (product having dual use as cosmetic and
pharmaceutical remains in the same trade channels). Thus,
applicant’s argument based on differences in trade channels,
which are not reflected in the identifications of goods, is
unavailing.
In this connection, we agree with opposer’s assessment that
“notwithstanding the fact that opposer’s BOTOX® product is a
pharmaceutical preparation, it is 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 in
drug stores or supermarkets or general merchandise stores with
pharmacies.” (Brief, p. 12).
With respect to prospective and actual customers, as
revealed by applicant’s packaging (shown above), applicant
markets its product to the same customers as opposer, as an
alternative to opposer’s product. Simply put, both parties
market their goods to the same ordinary consumers who are
Opp. No. 91169544

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interested in reducing the appearance of skin wrinkles and
lines.
The overlap in trade channels and classes of purchasers
weighs in favor of a finding of a likelihood of confusion.
THE MARKS
We must compare opposer’s mark BOTOX (in typed or standard
characters) to applicant’s mark BOTULEX (in standard characters)
as to appearance, sound, connotation and commercial impression
to determine the similarity or dissimilarity between them. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The marks BOTOX and BOTULEX are similar in appearance and,
more likely than not, would be similar in sound.7 Both marks

7 The parties argue back and forth over how consumers will pronounce
the marks. Applicant goes into great detail in explaining differences
Opp. No. 91169544

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begin with the letters “BOT-” and end with “X.” As to meaning,
the evidence shows that opposer’s product contains “botulinum
toxin.” (Chaplin dep., p. 7). Opposer prominently discloses
this fact in its advertising for the product. (See, e.g.,
Chaplin dep., Ex. Nos. 6, 7 and 10). Consumers familiar with
this ingredient of opposer’s BOTOX product may believe that
applicant’s mark BOTULEX likewise connotes that applicant’s
product includes the same or similar “botulinum toxin”
ingredient, especially given that applicant promotes its product
as an alternative to opposer’s product. Given these
similarities, the marks engender similar overall commercial
impressions. See Bridgestone Americas Tire Operations LLC v.
Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1065 (Fed. Cir.
2012) (finding MILANZA confusingly similar to famous marks
POTENZA and TURANZA).
The similarity between the marks weighs in favor of a
finding of likelihood of confusion.
CONCLUSION
The relevant du Pont factors involving likelihood of
confusion between the marks weigh decidedly in favor of opposer.
We have carefully considered all of the evidence of record, as

between the marks in terms of pronunciation. There is no correct
pronunciation of a trademark, however, and it obviously is not
possible for a party to control how purchasers will vocalize its mark.
Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698, 1701
(TTAB 2006).
Opp. No. 91169544

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well as all of the arguments with respect thereto, including any
arguments not specifically discussed in this opinion (as for
example, applicant’s irrelevant arguments that it has registered
its mark in foreign countries and that it has obtained a
favorable decision from a foreign Trademark Office).
We conclude, based on a preponderance of the evidence, that
consumers familiar with opposer’s pharmaceutical preparations
sold under the famous mark BOTOX are likely to mistakenly
believe, upon encountering applicant’s mark BOTULEX for non-
medicated skin care preparations for topical application to the
skin, that the goods originate with or are somehow associated
with or sponsored by the same entity.
Lastly, to the extent that any of the points argued by
applicant raises a doubt about our finding of a likelihood of
confusion, we resolve that doubt, as we must, in favor of
opposer as the prior user and registrant. See Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1707 (Fed. Cir. 1992); and Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir.
1983).
Decision: The opposition is sustained, and registration to
applicant is refused.