Allergan, Inc.v.Bio-elements, Inc.

Trademark Trial and Appeal Board

Sep 26, 2008

No. 91171473 (T.T.A.B. Sep. 26, 2008)

Mailed: September 26, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Allergan, Inc.

v.

Bioelements, Inc.
_____

Opposition No. 91171473
_____

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

Janice Bader of Symbus Law Group, LLC for Bioelements, Inc.
______

Before Hairston, Drost and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Bioelements, Inc. has filed an application to register
the mark PROBOTIX (in standard character form) for “skin
cream and non-medicated skin serum” in International Class
3.1
Registration has been opposed by Allergan, Inc. on the
ground that applicant’s mark, when applied to applicant’s

1 Serial No. 78652857, filed on June 17, 2005, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91171473
2
goods, so resembles opposer’s previously used and registered
mark BOTOX for pharmaceutical preparations as to be likely
to cause confusion. Opposer also alleged that its BOTOX
mark is famous, and pleaded ownership of the following three
registrations for such mark:

(1) Registration No. 1692384 (Issued on June 9,
1992; renewed) for “pharmaceutical preparations,
namely ophthalmic muscle relaxants;”

(2) Registration No. 1709160 (Issued on August 18,
1992; renewed) for “pharmaceutical preparations for
the treatment of neurological disorders;” and

(3) Registration No. 2510675 (Issued on November
20, 2001; Section 8 affidavit accepted and Section
15 affidavit filed) for “pharmaceutical preparations
for the treatment of neurological disorders, muscle
dystonias, smooth muscle disorders, automatic nerve
disorders, headaches, wrinkles, hyperhydrosis,
sports injuries, cerebral palsy, spasms, tremors and
pain.”

Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
Before outlining the evidence in this case, we must
discuss an evidentiary matter. Applicant submitted a notice
of reliance on a copy of an article that appeared in the
January 2007 issue of “Elle” magazine that discusses skin
products, including applicant’s “Probotix Anti-Aging Serum.”
Applicant seeks to rely on this article to show that
probiotics are used in skin products. Opposer has objected
to the magazine article, arguing that it constitutes
inadmissible hearsay and is irrelevant.
Opposition No. 91171473
3
To the extent that applicant seeks to rely on the
magazine article for the truth of the matters contained
therein, i.e., that probiotics are used in skin products,
this is clearly inadmissible hearsay, and we sustain
opposer’s objection in this regard. The article is
admissible only to show that certain skin products,
including applicant’s “Probotix Anti-Aging Serum,” were the
subject of an article that appeared in the January 2007
issue of “Elle” magazine.
The record consists of the pleadings and the file of
the involved application. Opposer submitted the trial
testimony (with exhibits) of Tom Albright, its vice-
president for global strategic marketing; and a notice of
reliance on certified copies of its pleaded registrations,
showing that each registration is subsisting and owned by
opposer. Applicant did not take testimony, but as discussed
above, submitted a notice of reliance on a copy of a
magazine article.
Both parties filed briefs.
Priority of use is not an issue in this proceeding
inasmuch as opposer has proven that, as noted above, each of
its pleaded registrations is subsisting and is owned by
opposer. See King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). Opposer’s
ownership of these registrations also serves to establish
Opposition No. 91171473
4
its standing to bring this proceeding. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982).
Our likelihood of confusion determination is based on
an analysis of all of the probative facts in evidence that
are relevant to the likelihood of confusion factors set
forth in In re E. I. duPont de Nemours and Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). The duPont factors deemed
relevant in this proceeding are discussed below.
We consider first the duPont factor of fame. The fame
of a plaintiff’s mark, when fame is shown in the record, is
an important factor because a famous mark deserves a broad
scope of protection. 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 Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). As the
Federal Circuit stated in Bose Corp. v. QSC Audio Products,
Inc., 63 USPQ2d at 1305:
Fame of an opposer’s mark or marks, if it exists,
plays a “dominant role in the process of balancing
the DuPont factors,” Recot, 214 F.3d at 1327, 54
USPQ2d at 1456, and “[f]amous marks thus enjoy a
wide latitude of legal protection.” Id. This is
true as famous marks are more likely to be
remembered and associated in the public mind than a
weaker mark, and are thus more attractive as targets
for would-be copyists. Id. Indeed, “[a] strong
mark … casts a long shadow which competitors must
Opposition No. 91171473
5
avoid.” Kenner Parker Toys, 963 F.2d at 353, 22
USPQ2d at 1456. A famous mark is one “with
extensive public recognition and renown.” Id.

According to the record, opposer began marketing a
pharmaceutical preparation under the mark BOTOX around 1990.
(Albright dep. at 9-10). Since that date, opposer has
continuously marketed the pharmaceutical preparation, which
has therapeutic use. In 2002, the United States Food and
Drug Association (FDA) approved opposer’s BOTOX brand
product for cosmetic use, namely, for the temporary
improvement in the appearance of the frown lines that appear
in the middle of the forehead. (Albright dep. at 8-9, Exhs.
14 and 17). The product’s chemical formulation remained the
same. (Albright dep. at 8). However, when marketed for
cosmetic use (as opposed to therapeutic use), opposer was
required to use “Cosmetic” next to the BOTOX mark. Thus, in
marketing the product, opposer’s mark appears as “BOTOX®
Cosmetic.” (Albright dep. at 8-9).
Once the FDA approved the BOTOX product for cosmetic
use, opposer began aggressively advertising the product on
the Internet, in publications, and on television. (Albright
dep. at 17-18). In 2002, opposer spent over $6 million in
the United States on print advertising for the BOTOX
cosmetic product, with advertisements appearing in over
twenty magazines and other publications. Also, in 2002,
opposer spent nearly $10 million on television advertising
Opposition No. 91171473
6
for the BOTOX cosmetic product. (Albright dep. at 18-19,
Exh. 9). In 2003 and 2004, opposer spent approximately $10
and $12 million, respectively, in the United States on print
advertising, with advertisements appearing in numerous
publications, and approximately $10 and $15 million,
respectively, in television advertising. (Albright dep. at
20-22; Exhs. 10-19).
In terms of sales, between 1999 and year end 2005,
opposer’s revenues of goods sold under the BOTOX mark
totaled over $3.2 billion, 70% of which were received in the
United States. (Albright dep. at 14-15, 17; Exh. 8).
The record establishes opposer’s continuous use of its
BOTOX mark for over fifteen years, and its revenues and
advertising figures are impressive. Moreover, we note that
applicant states in its brief that “[i]t is clear that the
BOTOX mark has achieved celebrity.” (Brief, p. 1). This is
tantamount to a concession that opposer’s mark is famous.
Accordingly, we find that opposer’s mark is famous for a
pharmaceutical preparation with a cosmetic use.
Furthermore, contrary to applicant’s contention that
“[c]onfusion is unlikely because the mark BOTOX is famous”
(Brief, p. 9), it is well settled that the fame of a mark
cannot serve to diminish the likelihood of confusion. In
sum, the duPont factor of fame weighs heavily in opposer’s
favor.
Opposition No. 91171473
7
We turn next to the duPont factor of the similarity or
dissimilarity of the parties’ goods. It is well established
that the goods of the parties need not be similar, or even
competitive, or even that they move in 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 In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); and In re International Telephone and Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
It is also well established that the registrability of
applicant’s mark must be evaluated on the basis of the
identification of goods as set forth in the involved
application and the identifications of goods as recited in
any pleaded registrations regardless of what the record may
reveal as to the particular nature of the respective goods,
their actual channels of trade, or the classes of purchasers
to which they are in fact directed and sold. See, e.g.,
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and Canadian
Opposition No. 91171473
8
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987).
Although the record shows that opposer’s BOTOX product
is given by an injection administered by a physician, this
is not reflected in the identification of goods in opposer’s
registrations. As indicated, the record establishes that
opposer’s BOTOX product is for cosmetic use in that it
improves the appearance of wrinkles. Applicant’s
identification of goods is broadly worded and, therefore, we
must assume that the goods encompass all types of skin cream
and non-medicated skin serum, including those that are
intended to reduce the appearance of wrinkles.
Thus, for purposes of our likelihood of confusion
analysis, we must presume that the products serve the same
function or purpose, namely, to reduce the appearance of
wrinkles on the user.
The duPont factor of the similarity of the goods favors
a finding of likelihood of confusion.
We consider next the duPont factor of the similarity or
dissimilarity of the trade channels and purchasers for the
parties’ goods. Neither opposer’s goods nor applicant’s
goods are limited as to trade channels, and we therefore
presume that the respective goods move through the channels
of trade normal for these types of goods. Kangol Ltd. v.
KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946
Opposition No. 91171473
9
(Fed. Cir. 1992). Those trade channels, such as drug
stores, and supermarkets and mass merchandisers with
pharmaceutical sections, are overlapping. Moreover, the
same types of purchasers, namely ordinary consumers who are
interested in reducing the appearance of skin wrinkles,
would purchase such products.
Thus, the overlap in trade channels and class of
purchasers for the parties’ products weighs in favor of
finding a likelihood of confusion.
We next turn to the duPont factor focusing on the
similarity or dissimilarity of the marks. We must consider
the marks in their entireties in terms of appearance, sound,
meaning and commercial impression. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.2d
1369, 73 USPQ2d 1689, 1692. The test 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 their entireties 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).
We find that when applicant’s mark PROBOTIX and
opposer’s mark’s BOTOX are considered in their entireties,
Opposition No. 91171473
10
the overall similarities in the marks outweigh their
differences. In this case, the marks are similar in sound
and appearance due to the similarities in the –BOTIX portion
of opposer’s mark and applicant’s mark BOTOX. Although
applicant’s mark also includes the term PRO, the addition of
this term does not result in dissimilar marks. The term
“pro,” which could mean professional, would suggest a
product that is marketed as having “professional” or added
“strength.”
Insofar as the connotation of the marks is concerned,
applicant contends that its mark PROBOTIX suggests
“probiotics,” whereas opposer’s mark BOTOX suggests an
association with “Botulinum Toxin Type A.” Indeed, the
testimony of opposer’s witness, Mr. Albright, indicates that
opposer’s BOTOX product is derived from Botulinum Toxin
Type A. However, as discussed previously, applicant’s
evidence does not establish that probiotics are used in skin
products.2 Nonetheless, we find that any specific
differences in meaning, as well as in sound and appearance
between the marks BOTOX and PROBOTIX, are outweighed by the
similarities. Further, the marks are sufficiently similar

2 Moreover, we note that applicant’s mark is PROBOTIX; not
PROBIOTIX.
Opposition No. 91171473
11
in their overall commercial impressions that consumers, when
encountering the marks BOTOX and PROBOTIX, are likely to
believe that the closely related products sold thereunder
emanate from a common source.
The similarity between the marks weighs in favor of a
finding of likelihood of confusion.
After careful consideration of the evidence of record
pertaining to all of the relevant duPont factors, we find
that a likelihood of confusion exists. Given that opposer’s
mark is a famous mark which is entitled to a broad scope of
protection, the applicant’s goods and opposer’s goods are
closely related, and the trade channels and customers
overlap, we find that applicant’s mark PROBOTIX is
sufficiently similar to opposer’s mark BOTOX that confusion
is likely.
Specifically, purchasers familiar with opposer’s
pharmaceutical preparation sold under its famous BOTOX mark
would be likely to believe, upon encountering applicant’s
PROBOTIX mark for skin cream and non-medicated skin serum,
that the goods originated with or were somehow associated
with or sponsored by the same source.
As the Federal Circuit and its predecessor have held,
“there is no excuse for even approaching the well-known
trademark of a competitor and that all doubt as to whether
Opposition No. 91171473
12
confusion, mistake, or deception is likely is to be resolved
against the newcomer, especially where the established mark
is one which is famous.” Nina Ricci S.A.R.L. v. E.T.F.
Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904 (Fed.
Cir. 1989), quoting, Planter’s Nut & Chocolate Co. v. Crown
Nut Co., Inc., 305 F.2d 916, 134 USPQ 504, 511 (CCPA
1962)(internal punctuation marks omitted).
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.