Allergan, Inc.v.BioCentric Labora-tories, Inc.

Trademark Trial and Appeal Board

Aug 20, 2007

No. 91161603 (T.T.A.B. Aug. 20, 2007)

Mailed: 8/20/07

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Allergan, Inc.
v.
BioCentric Laboratories, Inc.
_____

Opposition No. 91161603
to application Serial No. 78320975
filed on October 30, 2003
_____

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

Rebecca Spaar for BioCentric Laboratories, Inc.
______

Before Quinn, Hohein and Bergsman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

BioCentric Laboratories, Inc. has filed an application
to register the mark SEATOX for “cosmetic[s].”1
Allergan, Inc. has opposed registration on the ground
that applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered mark
BOTOX for pharmaceutical preparations as to be likely to
cause confusion. More specifically, opposer has pleaded
ownership of three registrations of the mark BOTOX covering

1 Serial No. 78320975, filed on October 30, 2003, alleging a bona
fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91161603
2
the following goods: “pharmaceutical preparations, namely,
ophthalmic muscle relaxants”;2 “pharmaceutical preparations
for the treatment of neurologic disorders”;3 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
Applicant, in its answer, has denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings;5 the file of the
involved application; trial testimony, with related
exhibits, taken by opposer;6 and certified copies of
opposer’s pleaded registrations, showing that such
registrations are subsisting and owned by opposer, and

2 Registration No. 1692384, issued on June 9, 1992; renewed.
3 Registration No. 1709160, issued on August 18, 1992; renewed.
4 Registration No. 2510675, issued on November 20, 2001; Section
8 affidavit accepted, Section 15 affidavit filed.
5 Statements made in pleadings cannot be considered as evidence
in behalf of the party making them; instead, such statements must
be established by competent evidence during trial. Inasmuch as
applicant did nothing during its testimony period, the factual
statements in its answer have no evidentiary value. Further, it
is noted that applicant attached exhibits to its answer.
Exhibits attached to a pleading, however, are not evidence on
behalf of the party to whose pleading they are attached unless
they are thereafter made of record during trial. Trademark Rule
2.122(c); TBMP § 704.05(a) (2d ed. rev. 2004). Because those
exhibits were not made of record during trial, they have not been
considered.
6 In addition to the testimony of opposer’s vice president,
opposer took the testimony of Rebecca Spaar, applicant’s chief
executive officer.
Opposition No. 91161603
3
copies of third-party registrations and applications of TOX-
suffix marks, all introduced by way of opposer’s notices of
reliance. Applicant did not take testimony or offer any
other evidence.7 Both parties filed briefs on the case.8
Opposer has established its standing to oppose
registration of the involved application. In particular,
opposer has properly made its pleaded registrations of
record and, further, has shown that it is not a mere
intermeddler. See 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).

7 Applicant filed, long after the close of its testimony period,
numerous documents captioned “Submission No. 9.” In response to
opposer’s motion to strike, applicant withdrew the submission.
Accordingly, those documents have not been considered.
8 Opposer’s brief was timely filed in compliance with an earlier
order. Accordingly, opposer’s request for an extension of time
is deemed moot. Applicant’s brief was filed one day late, and
opposer has moved to strike the untimely brief, also pointing out
that the Board earlier warned applicant that strict compliance
with the rules of practice was expected in this proceeding. In
view of the late filing, the brief will not be considered. We
hasten to add, however, that even if considered, the brief would
not compel a different decision on the merits in this case.
Further, so as to remove any question, even if the brief were
considered, factual statements made in a party’s brief can be
given no consideration unless they are supported by evidence
properly introduced at trial. In this case, applicant did not
introduce any evidence at trial, and Ms. Spaar’s testimony taken
by opposer does not support the factual statements in applicant’s
brief. Thus, applicant’s statements in its brief have no
evidentiary value. TBMP § 704.06(b) (2d ed. rev. 2004). In
addition, the exhibits attached to the brief would not be
considered as evidence in reaching a decision inasmuch as the
exhibits were not made of record during trial. TBMP § 704.05(b)
(2d ed. rev. 2004).
Opposition No. 91161603
4
Further, in view of opposer’s ownership of valid and
subsisting registrations, there is no issue regarding
opposer’s priority. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, the only issue to decide herein is likelihood of
confusion.
Our determination herein 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. Cunningham v.
Laser Golf Corp., 55 USPQ2d at 1848. In any likelihood of
confusion analysis, however, two key considerations are the
similarities or dissimilarities between the marks and the
similarities or dissimilarities between the goods and/or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These, and other du
Pont factors deemed pertinent in the proceeding now before
us, are discussed below.
Inasmuch as opposer introduced evidence bearing on the
fame of its mark BOTOX, we first turn to consider this du
Pont factor. 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
Opposition No. 91161603
5
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 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.

Fame for likelihood of confusion purposes arises “as long as
a significant portion of the relevant consuming public
...recognizes the mark as a source indicator.” Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005).
Opposer has been marketing a pharmaceutical preparation
under the mark BOTOX since about 1991, and its use of the
mark has been continuous thereafter. Tom Albright,
opposer’s vice president of global strategic marketing,
testified that in 2002, the United States Food and Drug
Opposition No. 91161603
6
Administration (FDA) approved opposer’s BOTOX brand product
for a cosmetic indication, and opposer began touting its
product as giving the user “temporary improvement in the
appearance of moderate to severe frown lines between the
brows in people 18 to 65 years of age.” (Albright dep., p
23, ex. no. 14). Upon the FDA’s approval of opposer’s BOTOX
brand product for a cosmetic indication, opposer was
required, when it promoted its product for that indication,
to use the term “Cosmetic” next to the BOTOX mark. Thus,
while the product sold under the BOTOX mark did not change,
when marketed for purposes of the cosmetic indication (as
opposed to therapeutic indications), the mark appears as
“BOTOX® Cosmetic.”
Once the FDA approved the cosmetic indication for
opposer’s product, sales under the mark increased
dramatically. During the period 1999-2004, opposer’s total
revenues under the mark in the United States approached $1.7
billion. In 2002-2003, opposer’s annual advertising
expenditures were approximately $12-$14 million. In 2004
and going forward, annual advertising expenditures have been
in the range of $25-$35 million. Opposer advertises its
goods on television and its website, and in magazines and
newspaper inserts.
Ms. Spaar admitted that applicant had knowledge of
opposer’s BOTOX mark and product at the time of applicant’s
Opposition No. 91161603
7
selection of its mark SEATOX. She replied, “I haven’t lived
under a rock. Everybody has heard of BOTOX. Everybody
knows who you are.” (Spaar dep., p. 83).
The record establishes opposer’s continuous use of its
mark BOTOX for over fifteen years. Opposer’s revenue and
advertising numbers are impressive, and Ms. Spaar’s
statement is tantamount to a concession that opposer’s mark
is famous.
Accordingly, we find that opposer’s BOTOX mark is
famous for a pharmaceutical preparation that has, inter
alia, a cosmetic indication. This factor weighs heavily in
opposer’s favor.
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 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).
Opposition No. 91161603
8
The marks BOTOX and SEATOX are similarly constructed,
two-syllable coined terms. The marks are similar in sound
and appearance in that both begin with a single syllable and
end in a TOX-suffix. As to connotation, applicant, in
explaining the meaning of its mark, contends that the “SEA”
portion of its mark “is for the MSM and the Red Seaweed
Extract from the sea,” and that “TOX” is “for detoxifying.”
(Interrogatory No. 3). We find that any specific
differences in meaning, as well as in sound and appearance
between the marks BOTOX and SEATOX, are outweighed by the
similarities, especially in light of the absence on this
record of any instances of third-party use of similar marks.
Further, the marks at issue engender sufficiently similar
overall commercial impressions that consumers, when
encountering the BOTOX and SEATOX marks, are likely to
believe that the products sold thereunder emanate from a
common source. The similarity between the marks weighs in
opposer’s favor.
The record includes copies of four Class 3 DETOX-suffix
registrations obtained by third parties prior to April 2002
(the date of the FDA approval of opposer’s product for a
cosmetic indication), and twenty-five Class 3 TOX-suffix
applications filed by third parties after April 2002. As
asserted by opposer, prior to the FDA approval, there were
no active Class 3 registrations of marks with a TOX-suffix
Opposition No. 91161603
9
for skin care products (although the register did include
marks ending in DETOX). After the FDA approval, the record
shows that over twenty-five applications were filed by third
parties to register TOX-suffix marks for cosmetics in Class
3. Opposer contends (Brief, p. 17):
The explanation for this contrast is
two-fold. First, the TOX suffix, in and
of itself, has no logical meaning in the
cosmetic world and in fact would seem to
convey the exact opposite of any quality
one would want a cosmetic product to
have. Second, third parties apparently
believe that use of a TOX-suffix will
help associate their products with the
BOTOX product. While not dispositive,
this evidence supports the conclusion
that consumers, when faced with a
similar product incorporating a TOX-
suffix, are likely to believe that that
product is a derivative of or is somehow
associated with the BOTOX product, and
emanates [from] the same source.

We have no way of knowing the validity of opposer’s
claim relative to the intentions of third parties, but
suffice it to say that the pre-2002/post-2002 contrast in
filings would appear to be other than coincidental. In any
event, the current record, upon which our decision is based,
is devoid of any third-party registrations or uses of TOX-
suffix marks in the cosmetics field.
Insofar as the goods are concerned, it is well
established that the goods of the parties need not be
similar or competitive, or even that they move in the same
channels of trade, to support a holding of likelihood of
Opposition No. 91161603
10
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 Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue
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).
Although opposer’s product is given by an injection
administered by a physician, and applicant’s product is an
over-the-counter cream, these differences are not reflected
in the respective identifications of goods. As stated
earlier, the record establishes that opposer’s BOTOX brand
product has a cosmetic indication, namely to improve the
appearance of wrinkles on the forehead. Applicant’s
identification of goods is broadly worded and, therefore, we
must assume that the goods encompass all types of cosmetics,
including those that are intended to reduce the appearance
of wrinkles on the skin. And, in point of fact, Ms. Spaar
admitted that applicant’s product is designed to reduce
Opposition No. 91161603
11
wrinkles. Applicant states, in its advertising, that its
SEATOX brand product functions “by relaxing the muscles, as
opposed to paralyzing them with chemical injections.” The
advertisement further indicates that applicant’s product
reduces wrinkles “without the paralysis as with Botox®
injections,” and that a user may “[m]inimize fine lines and
wrinkles without the expense ($400 per injection), the pain
or side effects.” (Spaar dep., ex. nos. 29 and 30).
Thus, while the products are specifically different,
the goods are nevertheless related as evidenced by
applicant’s telling comparison of its product with opposer’s
product. Moreover, Mr. Albright testified that opposer
considers over-the-counter creams to compete with its BOTOX
brand product for a cosmetic indication:
Well, over-the-counter creams and
lotions are the first mechanisms of
treatment that patients use when they’re
looking in the mirror and they see
unnecessary frown lines between their
eyes.
And so they’ll try putting creams
and lotions on there to try to either
make the lines go away or prevent
formation of new lines. And so they’ll
try that for many years before they’ll
finally resort to BOTOX cosmetic.
(Albright dep., p. 32).

Both products would appear to serve the same function or
purpose, namely, to reduce wrinkles of the user.
Neither opposer’s goods nor applicant’s goods are
limited as to trade channels, and we therefore presume that
Opposition No. 91161603
12
the respective goods move through the channels normal for
these types of goods. Kangol Ltd. v. KangaROOS U.S.A. Inc.,
974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992). Those
trade channels, such as drug stores and supermarkets with
pharmaceutical sections, are overlapping. Moreover, the
same types of consumers, namely ordinary consumers who are
interested in reducing their skin wrinkles, would purchase
such products.
The similarities between the parties’ products, as well
as the overlap in trade channels and class of customers for
the products, are factors that weigh in opposer’s favor in
finding a likelihood of confusion.
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the arguments with respect thereto (including any
arguments not specifically discussed in this opinion), and
we conclude that opposer has proven its likelihood of
confusion ground of opposition. Specifically, given the
fame and commercial strength of opposer’s mark, the degree
of similarity in the parties’ marks and goods, and the
overlap in trade channels and customers, we find that
applicant’s mark SEATOX is sufficiently similar to opposer’s
mark BOTOX that confusion is likely.
We conclude that purchasers familiar with opposer’s
pharmaceutical preparation sold under its famous mark BOTOX
Opposition No. 91161603
13
would be likely to believe, upon encountering applicant’s
mark SEATOX for cosmetics, that the goods originated with or
were somehow associated with or sponsored by the same
entity. Such consumers, familiar with opposer’s mark BOTOX
for pharmaceutical preparations may believe, as suggested by
opposer, that applicant’s mark SEATOX identifies a related
product emanating from opposer, perhaps an adjunct or
complementary product with a formulation that includes a
sea-based ingredient.
A newcomer has both the opportunity and the obligation
to avoid confusion. Consequently, a party that knowingly
adopts a mark similar to one used by another for the same or
closely related goods does so at its own peril; all doubt on
the issue of likelihood of confusion must be resolved
against the newcomer. This is especially the case where the
established mark is one that is famous. Kenner Parker Toys,
Inc. v. Rose Art Industries, Inc., 22 USPQ2d at 1456; Nina
Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12
USPQ2d 1901 (Fed. Cir. 1989); and Kimberly-Clark Corp. v. H.
Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed.
Cir. 1985).
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.