Allergan, Inc.v.Gems Style Inc.

Trademark Trial and Appeal Board

Nov 6, 2020

91246051 (T.T.A.B. Nov. 6, 2020)

Mailed: November 6, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Allergan, Inc.
v.
Gems Style, Inc.
_____

Opposition No. 91246051
_____

Kenneth L. Wilton and Lauren M. Gregory of Seyfarth Shaw LLP, for Allergan, Inc.

Gems Style, Inc. pro se.
_____

Before Cataldo, Bergsman and Heasley, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Gems Style, Inc. (Applicant) seeks registration on the Principal Register of the
mark BOTO SMART, in standard character form, for “hair care kits comprising non-
medicated hair care preparations, namely, non-medicated hair conditioners, non-
medicated hair shampoos and conditioners, non-medicated hair straightening
preparations and non-medicated hair treatment preparations for cosmetic purposes,”
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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in International Class 3.1 Applicant claimed ownership of the registrations listed
below for the same description of goods as in the application at issue:
● Registration No. 5508577 for the mark BRAZILIAN SMART BOTOS HAIR
TREATMENT FORMALDEHYDE FREE, in standard character form;2 and
● Registration No. 5508530 for the mark BRAZILIAN LEGEND BOTO CÔR DE
ROSA FORMALDEHYDE FREE HAIR TREATMENT, in standard character form.3
Allergan, Inc. (Opposer) opposed registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark
for hair care preparations so resembles Opposer’s registered mark BOTOX, in typed
drawing form, for the goods listed below as to be likely to cause confusion:4
● “Pharmaceutical preparations, namely, ophthalmic muscle relaxants,” in Class
5;5

1 Serial No. 88026610 filed July 5, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), based on Applicant’s claim of first use of its mark anywhere and in commerce as of
April 30, 2016.
2 Registered July 3, 2018, based on application Serial No. 87718467 filed December 12, 2017.
Applicant disclaimed the exclusive right to use “Brazilian” and “Hair Treatment
Formaldehyde Free.”
3 Registered July 3, 2018, based on application Serial No. 87705877 filed December 2, 2017.
Applicant disclaimed the exclusive right to use “Brazilian” and “Formaldehyde Free Hair
Treatment.” The English translation of “Boto Côr de Rosa” is “Pink Color Boto.”
4 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A typed mark is the legal
equivalent of a standard character mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks formerly were known
as ‘typed’ marks.”).
5 Registration No. 1692384, registered June 9, 1992; second renewal.
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● “Pharmaceutical preparations for the treatment of neurological disorders,” in
Class 5;6 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,”
in International Class 5.7
In addition, Opposer pleaded Applicant’s mark is likely to dilute the
distinctiveness of Opposer’s “famous BOTOX® Mark” under Section 43(c) of the
Trademark Act, 15 U.S.C. § 1125(c).
Applicant, in its Answer, denied the remaining salient allegations in the Notice of
Opposition. Applicant also asserted purported affirmative defenses that are actually
amplifications of its denials that there is likelihood of confusion or dilution.
I. Preliminary Issue
Applicant, in some of its notices of reliance, included extended argument as to the
probative value of the evidence it introduced. See 13, 15-18, and 20-22 TTABVUE.8
Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g), provides that for “evidence offered by
notice of reliance, the notice must indicate generally the relevance of the evidence
and associate with one or more issues in the proceeding.” Essentially, a notice of

6 Registration No. 1709160, registered August 18, 1992; second renewal.
7 Registration No. 2510675, registered November 20, 2001; renewed.
8 Citations to the briefs refer to TTABVUE, the Board’s online docketing system. See Turdin
v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically, the number
preceding TTABVUE corresponds to the docket entry number, and any number(s) following
TTABVUE refer to the page number(s) of the docket entry where the cited materials appear.
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reliance is a cover sheet for evidence, notifying opposing parties that the offering
party intends to rely on the material introduced thereunder. TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.02 (2020). A notice of reliance
is not a vehicle to discuss the probative value of the evidence.
The brief is a party’s opportunity to present, in a
systematic and coherent manner, and in a form which is
permanent and can be referred to, a discussion of the facts
in light of the law, its strongest affirmative arguments, and
a rebuttal of adversary’s arguments.
TBMP § 801.01. A party may not use a notice of reliance to avoid the page limitations
for briefs. Cf. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d
1705-1753-54 (TTAB 2013) (appendices may not be uses as a subterfuge to avoid the
page limitation), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.). Accordingly, we have
not considered the extended arguments regarding the probative value of Applicant’s
evidence set forth in Applicant’s notices of reliance.
In addition, Applicant, in its brief, referred to its pretrial disclosure identifying
nine licensed hair stylists “who could testify about Applicant’s mark in case it was
necessary.”9 Because Applicant did not introduce any testimony from those potential
witnesses, there is no testimony on which Applicant may rely.
Along the same line, Applicant, in its brief, referred to Applicant’s responses to
Opposer’s interrogatory Nos. 1 and 2 to explain “how the process of selection and
adoption of Applicant’s mark was developed, including the people involved in said

9 Applicant’s Brief, pp. 24-25 (32 TTABVUE 25-26).
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process.”10 Because Opposer did not introduce Applicant’s responses to Opposer’s
interrogatories into evidence during Opposer’s testimony period, those interrogatory
responses are not in the record for us to consider.
II. The Record
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s application for the mark BOTO SMART.
In addition, the parties introduced the evidence listed below:
A. Opposer’s testimony and evidence.
1. Testimony declaration of Colleen McKenna, Opposer’s Vice President of
Marketing, Facial Aesthetics;11
2. Notice of reliance on excerpts from 20 third-party websites showing
third parties rendering hair care services and cosmetic medical
treatment services, including BOTOX injections;12
3. Notice of reliance on a copy of Applicant’s Serial No. 87519959 for the
mark BOTOX for hair care preparations;13
4. Notice of reliance Applicant’s responses to Opposer’s interrogatory Nos.
4-6;14

10 Applicant’s Brief, pp. 24-26 (43 TTABVUE 25-26). Ordinarily, only an inquiring party may
introduce into the record an answer to an interrogatory. See Trademark Rule 2.120(k)(5), 35
C.F.R. § 2.120(k)(5) (“Written disclosures, an answer to an interrogatory, or an admission to
a request for admission, may be submitted and made part of the record only by the receiving
or inquiring party….”). Therefore, it would have been improper for Applicant to introduce its
responses to Opposer’s interrogatories. To introduce such evidence, Board practice and
procedure requires Applicant to introduce a testimony deposition or declaration by a witness
with knowledge about the relevant facts.
11 7 TTABVUE.
12 8 TTABVUE.
13 9 TTABVUE.
14 10 TTABVUE.
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5. Testimony declaration of Lauren M. Gregory, an associate attorney with
Opposer’s law firm Seyfarth Shaw LLP, introducing documents
produced by Applicant during discovery, namely, correspondence
between Opposer and Applicant purporting to prove Applicant’s
knowledge of Opposer and Opposer’s trademark rights and Applicant’s
intent regarding the use of Applicant’s mark, and printouts of beauty
industry publications purporting to establish channels of trade for hair
care products;15
6. Rebuttal notice of reliance on 60 third-party registrations for marks
registered for both hair care preparations and pharmaceuticals;16
7. Rebuttal notice of reliance on Internet websites of third-party retailers
that sell both hair care preparations and prescription
pharmaceuticals;17 and
8. Rebuttal notice of reliance on legible copies of third-party registrations
introduced by Applicant during Applicant’s testimony period.18
B. Applicant’s evidence.
1. Notice of reliance on a copy of Opposer’s abandoned application Serial
No. 79002971 for the mark BOTOX for cosmetics, in International Class
3, and excerpts from three applications filed by Applicant;19

2. Notice of reliance on Internet materials purporting to show the number
of hair salons in the United States;20

3. Notice of reliance on excerpts from the Code of Federal Regulations and
the United States Code purporting to show that the third parties in
Opposer’s notice of reliance, supra, are not rendering their services in
lawful commerce and that the parties’ goods are not related and are not
offered in the same channels of trade;21

15 11 TTABVUE.
16 28 TTABVUE.
17 40 TTABVUE.
18 30 TTABVUE.
19 13 TTABVUE.
20 14 TTABVUE.
21 15 TTABVUE.
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4. Notice of reliance on excerpts from eight websites purportedly to show
that hair stylists must obtain a state license to render their services;22

5. Notice of reliance on additional website excerpts from the 20 third-
parties introduced by Opposer, as well as seven more, purportedly to
show that hair salon services and medical spa services are separate and
distinct operations;23

6. Notice of reliance on excerpts from eBay.com, the California State Board
of Barbering and Cosmetology Act and Regulations, the Florida Board
of Cosmetology Act, and FDA.gov purportedly to show that the goods of
the parties are not related;24

7. Notice of reliance on excerpts from eBay.com and Amazon.com
purportedly displaying Applicant’s house mark to show that the parties’
marks are not similar;25

8. Notice of reliance on Internet materials purportedly to show that
Opposer’s goods are expensive and Opposer’s customers are
sophisticated;26

9. Notice of reliance on a partial copies of Applicant’s Registration No.
5508530 for the mark BRAZILIAN LEGEND BOTO CÔR DE ROSA
FORMALDEHYDE FREE HAIR TREATMENT and Registration No.

22 16 TTABVUE.
23 17 TTABVUE. Many of the excerpts in this notice of reliance are illegible. Trademark Rule
2.126(a)(2), 37 C.F.R. § 2.126(a)(2), provides that exhibits must be clear and legible. See also
RxD Media, LLC v. IP Application Dev. LLC, 125 USPQ2d 1801, 1806 n.16 (TTAB 2018)
(“Illegible evidence given no consideration.”), aff’d, 377 F.Supp.3d 588 (E.D. Va. 2019), appeal
filed, No. 19-1461 (4th Cir. Apr. 30, 2019); Alcatraz Media, 107 USPQ2d at 1753 n.6 (citing
Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998) (“It is
reasonable to assume that it is opposer’s responsibility to review the documents it submits
as evidence to ensure that such submissions meet certain basic requirements, such as that
they are legible.”). We will consider the exhibits in this notice of reliance if we can read them.
Applicant also introduced a copy of the testimony declaration of Colleen McKenna. Applicant
did not need to introduce the McKenna testimony declaration again because it was already
of record. “When evidence has been made of record by one party in accordance with these
rules, it may be referred to by any party for any purpose permitted by the Federal Rules of
Evidence.” Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a).
24 18 TTABVUE.
25 19 TTABVUE.
26 20 TTABVUE. Applicant also introduced another copy of the testimony declaration of
Colleen McKenna.
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5508577 for the mark BRAZILIAN SMART BOTOS HAIR
TREATMENT FORMALDEHYDE FREE printed from the Trademark
Document and Status Retrieval system (TSDR), and Internet
documents regarding the Boto Cor de Rosa, the legend of the pink
dolphins of the Amazon River;27

10. Notice of reliance on eBay and Google search results, a dictionary
definition of “Boto” and the Wikipedia entry for “Amazon River Dolphin”
purportedly to show that the parties’ marks are dissimilar;28

11. Notice of reliance on another partial copy of Registration No. 5508577
for the mark BRAZILIAN SMART BOTOS HAIR TREATMENT
FORMALDEHYDE FREE printed from the TSDR system, and screen
shots from eBAY.com displaying Applicant’s products;29

12. Notice of reliance on Internet materials purportedly to show that the
parties’ description of goods differ and that the parties offer their
respective products in different channels of trade;30

13. Notice of reliance on Internet materials purportedly to show the
consumers for Opposer’s products exercise a high degree of purchasing
care;31

14. Notice of reliance on documents filed in this proceeding purportedly to
show that Opposer failed to prove there is a likelihood of confusion;32
and

15. Notice of reliance on partial printouts from third-party registrations
consisting in whole or in part of the word “Boto.”33

27 21 TTABVUE.
28 22 TTABVUE.
29 23 TTABVUE.
30 24 TTABVUE
31 25 TTABVUE.
32 26 TTABVUE.
33 27 TTABVUE.
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III. Entitlement to a Statutory Cause of Action34
To establish entitlement to a statutory cause of action under Sections 13 or 14 of
the Trademark Act, a plaintiff must demonstrate a real interest in the proceeding
and a reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v.
Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020); see also
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058
(Fed. Cir. 2014); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1727 (Fed. Cir. 2012); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025 (Fed. Cir. 1999).
Opposer established its entitlement to a statutory cause of action by properly
introducing into evidence its pleaded registrations showing the status of the
registrations and their title in Opposer.35 See, e.g., Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (plaintiff’s two prior
registrations suffice to establish plaintiff’s direct commercial interest and its
standing); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501
(TTAB 2015). Applicant, in its brief, did not challenge Opposer’s entitlement to a
statutory cause of action.

34 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain applicable.
35 Opposer attached to the Notice of Opposition copies of its pleaded registrations printed
from the Trademark Status and Document Retrieval (TSDR) system showing the status of
and title to the registrations. 1 TTABVUE 10-15.
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IV. Priority
Because Opposer’s pleaded registrations are of record, and Applicant did not file
a counterclaim to cancel the pleaded registrations, priority in the opposition
proceeding is not at issue with respect to the marks and goods identified therein. Mini
Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016) (citing
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974)).
V. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019), quoting In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont,
177 USPQ at 567. “Not all of the DuPont factors are relevant to every case, and only
factors of significance to the particular mark need be considered.” Cai v. Diamond
Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018), quoting In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
Opposition No. 91246051

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2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The strength of Opposer’s BOTOX mark, including the fame of
Opposer’s mark.

Opposer alleges that its BOTOX mark is famous36 and argues in its brief that its
mark is famous.37 Fame, if it exists, plays a dominant role in the likelihood of
confusion analysis because famous marks enjoy a broad scope of protection or
exclusivity of use. A famous mark has extensive public recognition and renown. Bose

36 Notice of Opposition ¶¶4 and 13 (1 TTABVUE 5-7).
37 Opposer’s Brief, pp. 1-2, 6-7, and 12-15 (31 TTABVUE 10-11, 15-16, and 21-24).
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Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir.
2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992).
Fame, the fifth DuPont factor, enables Opposer to expand the scope of protection
afforded its pleaded marks by adducing evidence of “[t]he fame of the prior mark
(sales, advertising, length of use).” Under the fifth factor, likelihood of confusion fame
is not “an all-or-nothing measure.” Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (Fed. Cir.
2017). It “varies along a spectrum from very strong to very weak.” Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005) (quoting In re Coors Brewing Co., 343 F.3d 1340, 68
USPQ2d 1059, 1063 (Fed. Cir. 2003)).
To determine a mark’s place on the spectrum of from very strong to very weak, we
consider its inherent or conceptual strength, based on the nature of the mark itself,
and its commercial strength, based on its marketplace recognition. See In re
Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A
mark’s strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength.”); Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d
1340, 1345 (TTAB 2017); Top Tobacco, L.P. v. N. Atl. Operating Co., Inc., 101 USPQ2d
1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its
inherent strength and its commercial strength); Tea Bd. of India v. Republic of Tea
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Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (market strength is the extent to which the
relevant public recognizes a mark as denoting a single source); J.T. McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. Sept. 2020
update) (“The first enquiry is for conceptual strength and focuses on the inherent
potential of the term at the time of its first use. The second evaluates the actual
customer recognition value of the mark at the time registration is sought or at the
time the mark is asserted in litigation to prevent another’s use.”).
We may measure commercial strength (or fame) indirectly, by volume of sales and
advertising expenditures and factors such as length of use of the mark, widespread
critical assessments, notice by independent sources of the goods or services identified
by the mark, and general reputation of the goods or services. Weider Publ’ns, LLC v.
D&D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014).
1. The inherent or conceptual strength of Opposer’s BOTOX mark.
The RANDOM HOUSE UNABRIDGED DICTIONARY (2020) defines the word “Botox” as
a trademark for “a purified form of botulinum, a neurotoxin causing botulism,
injected in minute amounts especially to treat muscle spasms and relax facial
muscles in order to reduce wrinkles.”38 Thus, BOTOX is a coined term with no
recognized meaning other than as at trademark and, therefore, it is an inherently or
conceptually strong mark. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372

38 Dictionary.com accessed October 30, 2020. See also Merriam-Webster.com (a trademark
“used for a preparation of botulinum toxin.”) (accessed October 30, 2020). The Board may
take judicial notice of dictionary definitions, including online dictionaries that exist in printed
format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d
594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104
n.9 (TTAB 2018); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Opposition No. 91246051

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F.3d 1330, 71 USPQ2d 1173, 1181 (Fed. Cir. 2004) (defining a fanciful mark as “a
non-dictionary word concocted by the trademark holder for its product” and observing
that such marks are typically strong); Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734, 1741 (TTAB 2014) (“Whether AKEA is a coined term or a
Sardinian greeting, it is an inherently strong mark.”); In re Ginc UK Ltd. , 90 USPQ2d
1472, 1479 (TTAB 2007) (completely unique and arbitrary, if not coined, nature of
mark in relation to goods entitles the registered mark to a broad scope of protection,
and significantly increases the likelihood that the marks, when used in connection
with the identical goods would cause confusion).
2. Commercial strength
At the outset of our analysis of the commercial strength of the BOTOX trademark,
we note that the two dictionaries cited above identified BOTOX as a trademark.
“When a trademark attains dictionary recognition as part of the language, we take it
to be reasonably famous.” B.V.D. Licensing Corp. v. Body Action Design, Inc.,
846 F.2d 727, 6 USPQ2d 1719, 1720 (Fed. Cir. 1988), quoted in B.V.D. Licensing Corp.
v. Rodriguez, 83 USPQ2d 1500, 1506 (TTAB 2007).
Opposer introduced the evidence summarized below to establish the commercial
strength of the BOTOX trademark:
● Opposer began using BOTOX to identify an injectable form of botulinum toxin
at least as early 1990 and has continuously used it to identify various therapeutic
applications;39

39 McKenna Testimony Decl. ¶¶5-7 (7 TTABVUE 3-4).
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● Shortly after April 2002, Opposer began using its BOTOX injectable form of
botulinum toxin to treat wrinkles and lines commonly referred to as frown lines;40
● In 2013, the FDA approved BOTOX for treating “crow’s feet”;41
● In 2018, the FDA approved BOTOX for treating wrinkles across a person’s
forehead;42
● BOTOX is the first and only neurotoxin approved for three facial treatments;43
● “From 2002 through 2018, [Opposer] has invested more than $298 million in
direct-to-consumer advertising of the BOTOX® Product” for cosmetic applications,
including print, radio, television and Internet advertising;44
● “Since 2013, [Opposer] has spent on average nearly $200 million each year
marketing, advertising, and promoting its BOTOX® Product.”;45
● Opposer has advertised its BOTOX product in magazines such as ELLE,
GLAMOUR, SELF, REDBOOK, InStyle, and PEOPLE;46
● “[F]rom 2002 to 2018, [Opposer’s] BOTOX® Product has been advertised in more
than 100 magazines, equating to more than 1,500 insertions.”47

40 McKenna Testimony Decl. ¶¶9 and 15 (7 TTABVUE 4-5).
41 McKenna Testimony Decl. ¶10 (7 TTABVUE 4).
42 McKenna Testimony Decl. ¶11 (7 TTABVUE 5).
43 Id.
44 McKenna Testimony Decl. ¶¶15-16 (7 TTABVUE 5).
45 McKenna Testimony Decl. ¶17 (7 TTABVUE 6).
46 McKenna Testimony Decl. ¶18 (7 TTABVUE 6).
47 McKenna Testimony Decl. ¶21 (7 TTABVUE 7).
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● Opposer’s Internet advertising includes its website (botoxcosmetic.com) and
social media platforms such as a YouTube channel, Instagram, and Facebook.
Opposer’s Instagram account for BOTOX Cosmetic has 772,000 followers. More than
85,000 people have “liked” and follow Opposer’s Facebook page for BOTOX
Cosmetic;48
● From 1998 through 2018, Opposer has earned approximately $20 billion in U.S.
sales of its BOTOX products;49
● From 2014 through 2018, Opposer has averaged $1.925 billion in U.S. revenue;50
● “In 2005, Brand Week magazine rated [Opposer’s] BOTOX® Product as being
the number one placed brand in television programs and movies, notwithstanding
that Opposer has never paid to place its BOTOX products in television or movies.”;51
● “BOTOX® Product has twice appeared on the front page of the New York Times,
[and] has appeared on the covers of Newsweek and People.”;52 and
● Opposer’s market research reports that as of November 2019, “the total unaided
brand awareness for the BOTOX® Product was 69% and the total aided brand
awareness for the BOTOX® Product was 95%” among “aesthetically oriented women,
aged 30-65, who had never had any type of injectable before.”53

48 McKenna Testimony Decl. ¶19 (7 TTABVUE 6).
49 McKenna Testimony Decl. ¶29 (7 TTABVUE 9).
50 Id.
51 McKenna Testimony Decl. ¶20 (7 TTABVUE 6-7).
52 McKenna Testimony Decl. ¶21 (7 TTABVUE 7).
53 McKenna Testimony Decl. ¶¶22-23 (7 TTABVUE 7). Although McKenna’s testimony was
clear, specific, and uncontradicted, the testimony regarding Opposer’s market research has
little probative value. We have no explanation of how Opposer derived the figures in the
Opposition No. 91246051

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We find BOTOX to be a famous mark for purposes of our likelihood of confusion
analysis and, thus, Opposer’s BOTOX mark falls on the very strong side of the
commercial strength spectrum. In conjunction with the inherent or conceptual
strength of the mark, BOTOX is a very strong mark entitled to a broad scope of
protection or exclusivity of use.
B. Applicant’s Intent in Adopting its Mark
The Board may consider bad faith in the likelihood-of-confusion analysis under
the thirteenth DuPont factor. See J & J Snack Foods Corp. v. McDonald’s Corp., 932
F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991) (citing Bandag, Inc. v. Al Bolser’s
Tire Stores, Inc., 750 F.2d 903, 223 USPQ 982, 990 (Fed. Cir. 1984)) (“Whether there
is evidence of intent to trade on the goodwill of another is a factor to be considered,
but the absence of such evidence does not avoid a ruling of likelihood of confusion.”);
Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1554 (TTAB 2012); L.C. Licensing
Inc. v. Berman, 86 USPQ2d 1883, 1890 (TTAB 2008) (“Under the thirteenth du Pont
factor, evidence of applicant’s bad faith adoption of his mark is relevant to our
likelihood of confusion analysis.”).
On July 7, 2017, Applicant filed application Serial No. 87519959 for the mark
BOTOX for non-medicated hair preparations.54 We reproduce below Applicant’s
specimen of use for the mark in that application:55

report, what questions were asked, what information Opposer provided respondents on which
they based their responses, and no information regarding the study’s methodology.
54 9 TTABVUE 5.
55 9 TTABVUE 13.
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The USPTO refused to register Applicant’s mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark BOTOX for
non-medicated hair care preparations is likely to cause confusion with Opposer’s
BOTOX mark in Opposer’s pleaded registrations.56 Ultimately, Applicant expressly
abandoned the BOTOX application.57
Applicant explained that it first became aware of Opposer, Opposer’s BOTOX
mark, and the goods identified by the BOTOX mark in mid-2017 when eBay removed
all of Applicant’s non-medicated hair care preparations displaying the words BOTOX,
Boto, and Botos. Opposer had lodged a complaint with eBay that Applicant’s use of
BOTOX infringed Opposer’s trademark rights in that mark.58

56 9 TTABVUE 17.
57 9 TTABVUE 36.
58 Applicant’s responses to Opposer’s interrogatory Nos. 4-6 (10 TTABVUE 6-8).
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In an email dated October 18, 2017, Opposer’s counsel explained to Applicant how
and why Applicant’s use of BOTOX infringed Opposer’s rights in that mark.59
For at least the reasons set forth above, [Opposer] hereby
requests that [Applicant] abandon its application and
delete any and all uses of the BOTOX trademark, cease
marketing and selling any products which bear the BOTOX
trademark and agree to never use, register or attempt to
register any mark containing BOTOX or that is confusingly
similar to BOTOX.60
In a letter dated December 12, 2017, Opposer renewed its demand that Applicant
abandon its application Serial No. 87519959 for the mark BOTOX for non-medicated
hair care preparations and cease using any mark containing the BOTOX mark,
including HAIR-BOTOX.61
In a letter dated December 18, 2017, Applicant agreed to abandon its application
Serial No. 87519959 for the mark BOTOX, to remove all references and use of that
trademark, and to stop using the BOTOX trademark.62 Meanwhile, on December 2,
2017, Applicant filed application Serial No. 87705877 for the mark BRAZILIAN
LEGEND BOTO CÔR DE ROSA FORMALDEHYDE FREE63 and on December 12,
2017, Applicant filed Serial No. 87718467 for the mark BRAZILIAN SMART BOTOS

59 11 TTABVUE 6-7.
60 11 TTABVUE 7.
61 11 TTABVUE 8-10. Opposer advised Applicant to seek the advice of counsel. 11 TTABVUE
10 (“We understand you may wish to consult with an attorney about this matter. Thus, please
contact me, or have your attorney contact me, if we can answer any questions to help facilitate
and ensure your compliance.”).
62 11 TTABVUE 11.
63 21 TTABVUE 6.
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HAIR TREATMENT FORMALDEHYDE FREE.64 We reproduce below Applicant’s
container for BRAZILIAN SMART BOTOS HAIR TREATMENT FORMALDEHYDE
FREE.65

In the present proceeding, Applicant did not introduce any representative samples of
its packaging bearing the mark BRAZILIAN LEGEND BOTO CÔR DE ROSA
FORMALDEHYDE FREE.
The timing of Applicant’s adoption, use and filing the applications for to register
BRAZILIAN SMART BOTOS HAIR TREATMENT FORMALDEHYDE FREE and
BRAZILIAN LEGEND BOTO CÔR DE ROSA FORMALDEHYDE FREE HAIR
TREATMENT is striking. Once those marks were registered, Applicant adopted, used
and filed its application for the mark BOTO SMART at issue here. In the application
at issue, Applicant’s mark BOTO SMART moves closer to Opposer’s BOTOX mark

64 21 TTABVUE 4.
65 22 TTABVUE 6.
Opposition No. 91246051

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than the marks in Applicant’s prior registrations, rendering BOTO SMART more
similar in appearance, sound, and meaning to Opposer’s mark. We acknowledge that
“Brazilian,” “Hair Treatment Formaldehyde Free,” and “Formaldehyde Free Hair
Treatment” are merely descriptive and Applicant has disclaimed the exclusive right
to use those terms. But such terms, in appropriate circumstances, may – and here,
do – contribute to the overall commercial impression created by the marks. See Juice
Generation v. GS Enters., 794 F.3d 1334, 115 USPQ2d 1671, 1676 (Fed. Cir. 2015)
(Board paid insufficient heed to the word JUICE in mark for juice bar services); In re
Inn at St. John’s, LLC, 126 USPQ2d 1742, 1748 (TTAB 2018). By moving closer to
BOTOX, Applicant encroaches on the goodwill represented by that famous mark, and
such progressive encroachment is indicative of a planned or contrived intent to
capitalize on another mark’s good will.
Opposer contends Applicant merely modified its “intentional strategy of trading
off the good will associated with Opposer’s BOTOX® Mark” by dropping the “X” from
“Botox” and then continued its pattern of bad faith by filing the an application to
register BOTO SMART involved in this proceeding.66
Applicant argues to the contrary that because it uses BOTO SMART next to
Applicant’s stylized GS logo and GEMS STYLE house mark, “the applicant does not
intend for the consumer to confuse his marks with Opposer’s marks to think that they

66 Opposer’s Brief, p. 9 (31 TTABVUE 18).
Opposition No. 91246051

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come from the same source.”67 We reproduce below the specimen showing use of
Applicant’s BOTO SMART mark involved in this proceeding:

Applicant asserts, in essence, because the public is aware of term “Boto,” there is
no intention on Applicant’s part to attempt to trade off Opposer’s BOTOX
trademark.68 In support of its argument, Applicant cites Merriam-Webster.com
defining “Boto” as “a large heavy river dolphin native to the Amazon and Orinoco
river basis that is dark gray when young and pinkish as an adult.”69 Applicant also
refers to the Wikipedia.org entry for “Amazon river dolphin.”

67 Applicant’s Brief, p. 29 (32 TTABVUE 30).
68 Applicant’s Brief, p. 29 (32 TTABVUE 30).
69 22 TTABVUE 47-48.
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The Amazon river dolphin (inia geoffrensis), is also known
as the boto, bufeo or pink river dolphin, is a species of
toothed whale classified in the family Iniidae.70
Additionally, Applicant points to eight third-party registrations consisting, in
whole or in part of the word “Boto” as evidence that Applicant does not intend to trade
on Opposer’s BOTOX mark.71 As noted above, Applicant introduced partial printouts
from third-party registrations consisting in whole or in part of the word “Boto.”72 The
printouts consist of the mark, registration number, registration date, application
serial number, and application filing date. Opposer introduced complete copies of the
registrations, including the description of goods or services.73 None of the third-party
registrations is for hair care preparations or any other sort of personal care product.
Applicant’s explanation regarding its decision to adopt and use BOTO SMART,
and its intent in so doing, is not persuasive. Applicant’s contention that it did not
intend to trade on Opposer’s goodwill in the BOTOX mark because it uses BOTO
SMART in connection with its GS logo and GEMS STYLE house mark is not legally
tenable. The fact that Applicant’s products bear the GS logo and GEMS STYLE house
mark, as well as the BOTO SMART product mark, is not something we generally
consider because Applicant is seeking to register BOTO SMART alone. See

70 22 TTABVUE 56. “In traditional Amazon River folklore, at night, an Amazon river dolphin
becomes a handsome young man who seduces girls, impregnates them, and returns to the
river in the morning to become a dolphin again.” Id. at 22 TTABVUE 65. See also “honest
Myth: Brazilian – Boto Cor de Rosa (Espressocomsaudade.wordpress.com) (21 TTABVUE
10).
71 Applicant’s Brief, p. 29 (32 TTABVUE 30).
72 27 TTABVUE.
73 30 TTABVUE.
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Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir.
2000) (because applicant filed to register a typed drawing of its mark, “it is irrelevant
that [applicant] has a particular display for his mark in commerce, and the Board
was correct to ignore those features.”); In re Rexel Inc., 223 USPQ 830, 832 (TTAB
1984). We may consider trade dress to show that two word marks engender similar
commercial impressions but not that marks are dissimilar because trade dress may
be changed. In this regard, the Court of Appeals for the Federal Circuit has stated:
Ordinarily, for a word mark we do not look to the trade
dress, which can be changed at any time. Vornado, Inc. v.
Breuer Electric Mfg. Co., 390 F.2d 724, 156 USPQ 340, 342
(CCPA 1968). But the trade dress may nevertheless
provide evidence of whether the word mark projects a
confusingly similar commercial impression.

Kenner Parker Toys, 22 USPQ2d at 1458; see also Specialty Brands, Inc. v. Coffee
Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984).
With respect to Applicant’s argument that it did not intend to trade off on the
goodwill of Opposer’s trademark because the general public is aware of the term
“Boto,” there is no testimony or evidence in the record to support how many people
are aware of the meaning of the term “Boto.” Dictionaries are full of information that
the public do not know; therefore, the fact that information appears in a dictionary
does not necessarily show that it is a matter of “extensive public recognition and
renown.” Bose, 63 USPQ2d at 1305. Likewise, just because Wikipedia refers to a term
in an entry, it does not show that the relevant consuming public is aware of its
meaning. See In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1450-51
(Fed. Cir. 2015) (“The internet (and websites such as Wikipedia) contains enormous
Opposition No. 91246051

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amounts of information: some of it is generally known, and some of it is not. … [T]he
mere entry in a gazetteer or the fact that a location is described on the internet does
not necessarily evidence that a place is known generally to the relevant public.”).
Likewise, the third-party BOTO registrations do not serve to prove how many
consumers are aware of the term. Absent evidence of actual use, third-party
registrations have little probative value because they are not evidence that the marks
are in use on a commercial scale or that the public has become familiar with them.
See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations reposing in the USPTO);
Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d
1921, 1934 (TTAB 2011).
Presumably, Applicant wants us to believe that it adopted and began using the
mark BOTO SMART because “Boto” is a well-known term for the Amazon River
dolphin that turns pinkish as an adult and this shows that Applicant did not intend
to trade off Opposer’s BOTOX mark. If that were the case, we would have expected
Applicant to use a dolphin or Amazon River themed trade dress. Applicant’s
packaging is without any such connection. Thus, Applicant’s argument referring to
the meaning of the word “Boto” as an Amazon River dolphin appears to be something
Applicant developed after Opposer prevented its attempt to use and register BOTOX.
After Opposer foiled Applicant’s attempt to use and register BOTOX for non-
medicated hair care preparations, Applicant had an affirmative duty to avoid
Opposer’s BOTOX mark. See Bos. Athletic Ass’n v. Sullivan, 867 F.2d 22, 9 USPQ2d
Opposition No. 91246051

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1690, 1696 (1st Cir. 1989) (“When one uses a mark similar to one already in use, there
is generally an affirmative duty to avoid the likelihood of confusion.”); Kalart Co., Inc.
v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139, 141 (CCPA 1958) (O’Connell, J.,
dissenting), citing Waterman Co. v. Modern Pen Co., 235 U.S. 88, 94 (1914) (“The
Supreme Court long ago held that it is the affirmative duty of the newcomer to take
reasonable precautions in the selection of a mark, so as to avoid needless public
confusion and private injury by the invasion of the field previously occupied by
another.”); Steiger v. Tractor, Inc. v. Steiner Corp., 221 USPQ 165, 173 (TTAB 1984)
(applicant who knew of opposer’s preexisting mark was under an obligation, in
selecting its mark, to take special care to avoid use of a similar mark), citing State
Historical Soc’ty of Wisc. v. Ringling-Bros.-Barnum & Bailey Combined Shows, Inc.,
190 USPQ 25, 30 (TTAB 1976). Yet, as Opposer correctly observes, all Applicant did
was drop the “X” from “Botox.” “It has been well said that the most successful form of
copying is to employ enough points of similarity to confuse the public with enough
points of difference to confuse the courts.” Bos. Athletic Ass’n v. Sullivan, 9 USPQ2d
at 1696. See also B.V.D. Licensing Corp. v. Body Action Design, Inc., 6 USPQ2d at
1723 (Nies, J., dissenting).
The law has clearly been well settled for a longer time than
this court has been dealing with the problem to the effect
that the field from which trademarks can be selected is
unlimited, that there is therefore no excuse for even
approaching the well-known trademark of a
competitor, that to do so raises “but one inference--
that of gaining advantage from the wide reputation
established by appellant in the goods bearing its
mark,” and that all doubt as to whether confusion,
mistake, or deception is likely is to be resolved against the
Opposition No. 91246051

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newcomer, especially where the established mark is one
which is famous and applied to an inexpensive product
bought by all kinds of people without much care.
(Emphasis added).
Planters Nut & Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 134 USPQ 504, 511
(CCPA 1962) (footnote omitted); Specialty Brands, 223 USPQ at 1284-85 (court
“compelled” to resolve doubts in favor of famous, established mark against newcomer,
quoting Planters Nut).
Finally, there is no evidence that Applicant sought legal assistance to help
navigate the process of adopting and clearing its BOTO SMART trademark.74 This is
noteworthy because Opposer lodged an objection to Applicant’s use and attempt to
register BOTOX and Applicant did not seek legal advice regarding the breadth of
Opposer’s rights even though Opposer suggested Applicant seek legal advice. While
there is no requirement Applicant seek legal advice, in this case, such a failure
demonstrates Applicant’s disregard for the complexity, technicality, and nuances of
trademark issues. Under the circumstances of this case, Applicant cannot claim it
acted upon the advice of counsel. Compare Sands, Taylor & Wood v. Quaker Oats,
978 F.2d 947, 24 USPQ2d 1001, 1014 (7th Cir. 1992) (“A party who acts in reasonable
reliance on the advice of counsel regarding a close question of trademark law
generally does not act in bad faith”); Thomas Nelson Inc. v. Cherish Books Ltd.,

74 Cf. Electro Med. Sys. S.A. v. Cooper Life Sciences, 34 F.3d 1048, 32 USPQ2d 1017, 1023
(Fed. Cir. 1994) (“The law imposes an affirmative duty of due care to avoid infringement of
the known patent rights of others. Usually, this duty includes seeking and obtaining
competent legal advice before engaging in activity that may result in infringement.”)
(citations omitted).

Opposition No. 91246051

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224 USPQ 571, 573 (S.D.N.Y. 1984) (court ruled that the case was not an exceptional
one warranting attorney’s fees because plaintiff demonstrated that it was acting on
advice of counsel); Cuisinarts, Inc. v. Robot-Coupe Int’l. Corp., 580 F.Supp 634,
222 USPQ 318, 322-23 (S.D.N.Y. 1984) (court declined to order an accounting for
profits where defendant relied on advice of counsel); Robert Burns, Inc. v. Sears,
Roebuck & Co., 343 F.Supp. 1333, 174 USPQ 94, 105-06 (E.D. Pa. 1972) (accounting
for profits denied where defendant demonstrated that it acted in good faith upon the
advice of counsel); M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1549 (TTAB
2010) (applicant had no intent to deceive the USPTO even though it had not used its
marks on every item in the description of goods because applicant sought advice of
counsel with the advice of counsel).
In view of the parties’ history of interactions, by which Applicant was indisputably
placed on actual notice of Opposer’s trademark rights, and Applicant’s obdurate
insistence on approaching Opposer’s famous BOTOX mark by the contrivance of
deleting a single letter, we find that Applicant’s adoption and use of the BOTO
SMART mark was in bad faith, with the intention to trade off Opposer’s BOTOX
mark. Such bad faith is strong evidence that confusion is likely, inasmuch we may
infer that the imitator expects to cause confusion. See L.C. Licensing, 86 USPQ2d at
1891; Broadway Catering Corp. v. Carla Inc., 215 USPQ 462, 465 (TTAB 1982). See
also DC Comics, Inc. v. Powers, et al., 465 F.Supp. 843, 201 USPQ 99 (SDNY 1978).
Cf. Univ. of Notre Dame v. J.C. Food Imports, 703 F.2d 1372, 217 USPQ 505, 509
(Fed. Cir. 1983) (“Evidence of such intent [applicant intended to create a false
Opposition No. 91246051

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suggestion of a connection] would be highly persuasive that the public will make the
intended false connection”).
We may consider Applicant’s intent in adopting and using the BOTO SMART
mark in analyzing the similarity or dissimilarity of the marks. See First Int’l Servs.
Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1633 (TTAB 1988) (“[W]hen there is evidence
of an applicant’s intent to adopt a mark that suggests to purchasers a successful mark
already in use by another, the Board may, and ought to, take into account that intent
when resolving the issue of likelihood of confusion when that issue is not free from
doubt.”) (quoting Roger & Gallet S.A. v. Venice Trading Co. Inc., 1 USPQ2d 1829,
1832 (TTAB 1987)).
C. The similarity or dissimilarity of the marks.
We now turn to the DuPont factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may
be sufficient to find the marks confusingly similar.” In re Inn at St. John’s,
126 USPQ2d at 1746 (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)),
aff’d mem., 777 F. App’x 516 (Fed. Cir. Sept. 13, 2019); accord Krim-Ko Corp. v. Coca-
Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if
the similarity in either form, spelling or sound alone is likely to cause confusion.”)
(citation omitted).
In comparing the marks, we are mindful that “[t]he proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently similar
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in terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Cai, 127 USPQ2d at
1801 (quoting Coach Servs., 101 USPQ2d at 1721).
The proper focus is on the recollection of the average customer, who retains a
general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Because Applicant is seeking to register its mark for non-
medicated hair care preparations such as shampoo, conditioners, colorings, sprays
and gels for cosmetic purposes, with no restrictions as to channels of trade, classes of
consumers, or price, the average consumer is an ordinary consumer.
“A strong mark [such as BOTOX] … casts a long shadow which competitors must
avoid.” Kenner Parker Toys, 22 USPQ2d at 1456.
While scholars might debate as a factual proposition
whether fame heightens or dulls the public’s awareness of
variances in marks, the legal proposition is beyond debate.
The driving designs and origins of the Lanham Act demand
the standard consistently applied by this court--namely,
more protection against confusion for famous marks.
___
These manifold purposes and benefits of the Lanham Act
only operate, however, if investments to secure a strong,
recognizable mark bring the reward of certain legal
protection. If investors forfeit legal protection by increasing
a mark’s fame, the law would then countenance a
disincentive for investments in trademarks. The law is not
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so schizophrenic. In consonance with the purposes and
origins of trademark protection, the Lanham Act provides
a broader range of protection as a mark’s fame grows.
Id. at 1456-57.
An examination of the marks at issue – BOTOX and BOTO SMART – illustrate
the significance of a famous mark and ordinary consumers in assessing their
similarity. BOTOX and BOTO SMART are similar in appearance and sound. As
Opposer notes, Applicant merely deleted the letter “X” from BOTOX to form BOTO.
The fact that the BOTOX and BOTO are somewhat different does not distinguish
them particularly when they are similar in appearance and sound. Slight differences
in marks do not normally create dissimilar marks in the eyes of consumers. See Weiss
Assocs., Inc. v. HRL Assocs., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990)
(“It is especially hard to distinguish between TMS and TMM when the marks only
differ by the last letter.”); Specialty Brands, 223 USPQ at 1283 (SPICE VALLEY is
similar to SPICE ISLANDS); In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB
2012) (COLUMBIANO COFFEE HOUSE is similar to COLUMBIAN in part because
the addition of letter “O” to COLUMBIANO “does very little to distinguish applicant’s
mark from the registered mark.”); Chesebrough-Pond’s Inc. v. Soulful Days, Inc., 228
USPQ 954, 956 (TTAB 1985) (AZANIA is similar to AZIZA); Hercules Inc. v. Nat’l
Starch and Chem. Corp., 223 USPQ 1244, 1246 (TTAB 1984) (NATROL is similar to
NATROSOL); In re Bear Brand Hosiery Co., 194 USPQ 444, 445 (TTAB 1977) (“The
mark of the applicant, ‘KIKS’ and the cited mark ‘KIKI’ differ only in the terminal
letter of each mark. While differing in sound, the marks are similar in appearance
and have a somewhat similar connotation”).
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We find the dominant aspect of Applicant’s mark BOTO SMART is the word
BOTO, thus reinforcing the similarity between the marks. As we often have said, the
lead element in a mark has a position of prominence; because it is likely consumers
will notice and remember the lead element in a mark, it plays a dominant role in the
mark. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed.
Cir. 2018) (finding “the identity of the marks’ two initial words is particularly
significant because consumers typically notice those words first”); Palm Bay Imps.,
73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to appear
on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will
first notice the identical lead word); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered”).
The word “Smart” in Applicant’s mark BOTO SMART has less significance
because it suggests something stylish or fashionable. Merriam-Webster.com defines
“Smart,” inter alia, as “stylish or elegant in dress or appearance” and “appealing to
sophisticated tastes; characteristic of or patronized by fashionable society.”75 In this
case, sophisticated hair care.
We acknowledge the differences between BOTOX and BOTO SMART. “Our
analysis cannot be predicated on dissecting the marks into their various components;

75 Accessed November 2, 2020.
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that is, the decision must be based on a comparison of the entire marks, not just part
of the marks.” In re Ox Paperboard, LLC, 2020 USPQ2d 10878, *4 (TTAB 2020).
On the other hand, in articulating reasons for reaching a
conclusion on the issue of confusion, there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration
of the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Moreover,
a proper assessment of the similarity or dissimilarity of the marks requires that the
fame of BOTOX magnify the significance of the similarities of the marks. Kenner
Parker Toys, 22 USPQ2d at 1458.
The elimination of the letter “X” from the word “BOTO” in Applicant’s mark BOTO
SMART is an insufficient distinction from the standpoint of the marks’ appearance
and sound. Therefore, we find that the marks are more similar than dissimilar and
this weighs in favor of finding a likelihood of confusion.
D. The similarity or dissimilarity and nature of the goods.
As noted above, Applicant is seeking to register its mark for non-medicated hair
care preparations and the description of goods for Opposer’s registrations include
“pharmaceutical preparations for the treatment of… wrinkles.”
To prove that the goods are related, Opposer introduced excerpts from 20 third-
party websites where the third parties market both pharmaceutical preparations,
such as Botox, and haircare services under the same mark.76 For example,

76 8 TTABVUE.
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● Déja Vu Med Spa & Salon (dejavumedspaandsalon.com) advertises hair care
services and medical treatment, including Botox injections;77
● OUBEAUTY Medical Spa (oubeauty.com) advertises medical outpatient
cosmetic services, such as Botox injections, and hair care and grooming services;78
and
● Le Jolie Medi Spa (lejoliespa.com) advertises medical treatment services,
including Botox injections, and hair salon services.79
The website excerpts do not show the same entities using the same marks to
identify hair care products and pharmaceutical preparations; the websites show the
same entities advertise that they offer hair care services and medical cosmetic
treatment services.
Opposer also introduced copies of 60 third-party registrations based on use for
hair care preparations and pharmaceutical preparations.80 Third-party registrations
based on use in commerce that individually cover a number of different goods may
have probative value to the extent that they serve to suggest that the listed goods are
of a type that may emanate from the same source. In re Country Oven, Inc., 2019
USPQ2d 443903, *8 (TTAB 2019) (citing, inter alia, In re Detroit Athletic Co.,
128 USPQ2d at 1051); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002)); In re Albert Trostel & Sons Co., 29 USPQ2d

77 8 TTABVUE 11-13 and 16-22.
78 8 TTABVUE 26-41.
79 8 TTABVUE 42-48.
80 28 TTABVUE 5-256.
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1783, 1785-1786 (TTAB 1993). We list below representative registrations, with
relevant portions of the identifications:
Mark Reg. No. Pertinent Goods
EBLOUIR 6001563 Hair conditioner and shampoo; pharmaceutical
preparations for skin care
DR. WU 6016656 Hair care preparations for cosmetic use; pharmaceutical
preparations for skin care; pharmaceutical skin lotions
TENA 5955694 Hair shampoo and conditioners; pharmaceutical
preparations for skin care
DAYWITH 5850562 Hair shampoo; pharmaceutical preparations for skin
care
QIVARO 5987158 Dry shampoos, shampoos, and hair conditioners and
lotions; pharmaceutical preparations for skin care and
syrups for pharmaceutical purposes for the treatment of
skin conditions

Applicant argues that the descriptions of goods are so different (i.e., non-
medicated hair care preparations versus pharmaceutical preparations), the use of the
goods is so different, and the nature and the purpose of the goods are so different that
the goods are noncompetitive and have nothing in common with respect to their
essential character or consumer appeal.81 In essence, Opposer’s goods have nothing
to do with hair.82
In determining whether the goods are related, it is not necessary that the goods
of the parties be similar or competitive in character to support finding the goods are
related; it is sufficient for such purposes that the goods are related in some manner
or that conditions and activities surrounding marketing of these goods are such that
they would or could be encountered by same persons under circumstances that could,

81 Applicant’s Brief, pp. 39-40 (32 TTABVUE 40-41).
82 Applicant’s Brief, pp. 6 and 14-15 (32 TTABVUE 7 and 15-16).
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because of similarities of marks used with them, give rise to the mistaken belief that
they originate from or are in some way associated with the same producer. Coach
Servs., 101 USPQ2d at 1722; Edwards Lifesciences Corp. v. VigiLanz Corp.,
94 USPQ2d 1399, 1410 (TTAB 2010). The issue is not whether purchasers would
confuse the parties’ goods, but rather whether they are likely to confuse the source of
the goods. See Recot, 54 USPQ2d at 1898 (“[E]ven if the goods in question are different
from, and thus not related to, one another in kind, the same goods can be related in
the mind of the consuming public as to the origin of the goods.”); In re I-Coat Co.,
LLC, 126 USPQ2d 1730, 1737 (TTAB 2018) (“the test is not whether consumers would
be likely to confuse these goods, but rather whether they would be likely to be
confused as to their source.”); In re Cook Med. Tech. LLC, 105 USPQ2d 1377, 1380
(TTAB 2012).
Because some entities render hair care services and medical cosmetic treatment
services under the same mark consumers may encounter both sets of products in the
same marketing milieu. And because the third-party registrations show that hair
care products and pharmaceutical preparations may emanate from the same source,
we find that the Applicant’s hair care products are related to Opposer’s
pharmaceutical preparations. See Recot, 54 USPQ2d at 1898 (in analyzing whether
FIDO LAY dog treats are related to FRITO LAY human snacks, the court held “even
if the goods in question are different from, and thus not related to, one another in
kind, the same goods can be related in the mind of the consuming public as to the
origin of the goods.”). See also Bose, 63 USPQ2d at 1310 (“when a product reaches the
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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.”).
E. Established, likely-to-continue channels of trade and classes of
consumers.
The website excerpts Opposer introduced show that third parties market both
medical cosmetic treatment services, including pharmaceutical preparations such as
Botox, and haircare services, including the sale of non-medicated hair care
preparation, under the same mark.83 The websites advertise the sale and use of name
brand hair care products. For example,
● OUBEAUTY Medical Spa (oubeauty.com) advertises that it sells Pureology,
Rene Furterer, Redken, and Enjoy hair care products;84’
● Le Joulie Medi Spa (lejoliespa.com) advertises its featured salon products, such
as AWAPHUI, PAUL MITCHELL, and TEATREE;85
● Revive Salon & Med Spa (revivesalonandspa.com) features a photograph of its
salon displaying hair care products for sale.86 Revive advertises itself as a L’Oreal
Professional Salon featuring L’Oreal Professional, Kerastase and UNITE hair care
and styling lines;87

83 8 TTABVUE.
84 8 TTABVUE 39-40.
85 8 TTABVUE 45-46.
86 21 TTABVUE 50.
87 8 TTABVUE 56.
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● Dita Day Spa (ditadayspa.com) features a photograph of display shelf of haircare
products for sale.88 Dita advertises that features the entire range of L’Oreal
professional hair color and treatment products;89
● La Vie En Rainey Med Spa & Salon (lavieenrainey.com) advertises for its hair
and color services, it uses “Goldwell, the future of color.”;90
● Medspa At Villagio (medspaatvillagio.com) advertises its “quality hair products
include L’Oreal and Goldwell Hair Colors … and retail to assist in enhancing your
features.”;91
● Aura Day Spa & Salon (auradayspaandsalon.com) advertises its use of AG Hair
Cosmetics and Goldwell Color products;92
● MacMed Spa Salon & Medical (macmedspa.com) advertises its use of
ThermaFuse products;93 and
● Daired’s Salon & Spa (daireds.com) advertises its use of AVEDA, KERASTASE,
KEVIN MURPHY, and SCHWARKOPF hair care products.94
Because the same entities offer cosmetic medical treatments, including Botox
injections, and hair care services promoting the sale or use of specific hair care
products, we find Opposer offers its pharmaceutical preparations for treating

88 8 TTABVUE 64 and 69.
89 8 TTAVUE 70.
90 8 TTABVUE 117.
91 8 TTABVUE 157.
92 8 TTABVUE 179.
93 8 TTABVUE 219.
94 8 TTABVUE 227.
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wrinkles in some of the same channels of trade to some of the same classes of
consumers as non-medicated hair care preparations.
Applicant contends that the trade channels and classes of consumers do not
overlap because,
… based on the statutory limitation that Opposer’s marks
[sic], such as pharmaceutical preparations, according to the
(FDA) (U.S. Title 21- Food and Drugs Chapter II – Drug
Enforcement Administration Department of Justice Part
1306 Prescriptions), must only be sold at a pharmacy’s
prescription section by medical prescription, prescribed by
a qualified physician, and also, the person who dispatches
the Opposer’s good at the pharmacy’s prescription section
must be a licensed technician in pharmacy or a doctor,
while the good sold under Applicant’s mark is sold over the
counter, online, and directly to the licensed Hair Stylists at
the licensed Beauty Salon, and is not sold at pharmacy’s
prescription section, and is not regulated by the FDA.95
But while BOTOX injection requires professional administration Opposer
establishes that;96
As the BOTOX® Product has become increasingly popular,
patients have sought out injections not only at traditional
doctors’ offices, but also at aesthetic medical centers and
so-called “med spas,” which offer both non-surgical
aesthetic treatments and traditional day spa services such
as massage, skin care, and salon services for hair and
nails.97

95 Applicant’s Brief, p. 6 (32 TTABVUE 7).
96 “Because the BOTOX® Product is an injectable pharmaceutical preparation, it may be
injected by doctors (including primary care physicians, dermatologists, and plastic surgeons)
and dentists, as well as physician assistants and registered nurses. In some states, licensed
practical nurses, aestheticians, and medical assistants are authorized to inject the BOTOX®
Product under physician supervision.” McKenna Testimony Decl. ¶25 (7 TTABVUE 8).
97 McKenna Testimony Decl. ¶26 (7 TTABVUE 8).
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Thus, the evidence shows aesthetic medical centers and “med spas” offering both hair
care products, including hair care preparations, and cosmetic medical treatment
services, including BOTOX injections, to the same consumers.
In addition, Applicant contends the purchasers of Applicant’s products and
Opposer’s products are “professional buyers.”98 Specifically, “the purchasers (end
customers) of Applicant’s mark are the licensed hair stylists at the licensed beauty
salon.”99 But Applicant’s description of goods is not limited to non-medicated hair care
products sold only to licensed hair stylists or licensed beauty salons. We cannot resort
to extrinsic evidence to restrict the parties’ goods. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987)
(quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983))
(“likelihood of confusion … must be resolved … on consideration of the goods named
in the application and in opposer’s registration and, in the absence of specific
limitations in the application or registration, on consideration of the normal and
usual channels of trade and methods of distribution.”); In re Bercut-Vandervoort &
Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive
wines sold to discriminating purchasers must be disregarded given the absence of any

98 Applicant’s Brief, p. 15 (32 TTABVUE 16). See also Applicant’s Brief, p. 16 (32 (TTABVUE
17).
99 Applicant’s Brief, p. 7 (32 TTABVUE 8). See also Applicant’s Brief, p. 14 (32 TTABVUE
15).
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such restrictions in the application or registration). In fact, Applicant introduced
evidence advertising the unrestricted sale of its products on eBay.com.100
The evidence Applicant introduced (e.g., notice of reliance on evidence that hair
stylists must obtain a state license to render their services,101 evidence that hair salon
services and medical spa services purportedly are separate and distinct operations,102
Internet materials purportedly to show that parties’ products are offered in different
channels of trade;103 and the number of hair salons in the United States104) does not
rebut or minimize the fact Opposer’s BOTOX pharmaceutical preparation for the
treatment of wrinkles is offered in some of the same channels of trade and to some of
the same classes of consumers as non-medicated hair care preparations.
F. The conditions under which and buyers to whom sales are made.
This DuPont factor considers “[t]he conditions under which and buyers to whom
sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” 177 USPQ at
567. This factor encompasses the degree of consumer care and sophistication. In
analyzing this DuPont factor, we focus on the description of goods in the application
and registrations rather than real-world conditions, because “the question of
registrability of an applicant’s mark must be decided on the basis of the goods set
forth in the application.” Stone Lion Capital Partners, LP v. Lion Capital LLP,

100 18 TTABVUE 7-14; 19 TTABVUE 5-31; 20 TTABV”UE 24-25 and 53-55; 22 TTABVUE 11-
16; 23 TTABVUE 8-13.
101 16 TTABVUE.
102 17 TTABVUE.
103 24 TTABVUE.
104 14 TTABVUE.
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746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc.
v. Houston Comp. Servs., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). This
is so regardless of what the record reveals as to the actual marketing conditions. Id.
As noted above, we cannot resort to extrinsic evidence to restrict the parties’ goods.
See Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1 USPQ2d at 1815
(quoting CBS, Inc. v. Morrow, 218 USPQ at 199).
Because Applicant’s description of goods is for non-medicated hair care
preparations without any restrictions or limitations as to channels of trade, classes
of consumers or price, Applicant’s goods include all types of non-medicated hair care
preparations. Therefore, we may not consider Applicant’s argument that its non-
medicated hair care products are expensive and that its customers are sophisticated
purchasers.105 See Bercut-Vandervoort & Co., 229 USPQ at 764 (evidence that
relevant goods are expensive wines sold to discriminating purchasers must be
disregarded given the absence of any such restrictions in the application or
registration). See also Stone Lion Capital Partners, 110 USPQ2d at 1163-64
(recognizing Board precedent requiring consideration of the “least sophisticated
consumer in the class”); In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB
1992) (finding that not all purchasers of wine may be discriminating because while
some may have preferred brands, “there are just as likely to be purchasers who
delight in trying new taste treats.”).

105 Applicant’s Brief, p. 7 (32 TTABVUE 8). See also the eBay.com webpages noted above
advertising the sale of Applicant’s hair treatment for more than $500.
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As noted above, the relevant average purchaser is an ordinary consumer. This
ordinary consumer may purchase Applicant’s hair care products and request a
BOTOX injection at a cosmetic medical treatment facility or spa. In this regard,
Opposer markets its BOTOX pharmaceutical preparations to ordinary consumers
and “has advertised its BOTOX® Product for cosmetic indications in popular and
widely-circulated magazines, including Elle, Glamour, Self, Redbook, InStyle, and
People.”106 “Botox on its own is a highly sought-after treatment and can be a very
beneficial addition to your practice to increase patient acquisition. However, because
of its popularity many providers offer the neurotoxin injectable.”107 “People are
searching for BOTOX in their city every minute of the day.”108
Ordinary consumers may go to a spa offering cosmetic medical treatment services
and request BOTOX injections to improve their aesthetic facial appearance simply
because of the renown of the BOTOX product, without giving it much thought other
than the desire to look good. See Stone Lion Capital Partners, 110 USPQ2d at 1163-
64 (requiring consideration of the “least sophisticated consumer in the class”).
As noted above, although a BOTOX injection requires professional administration,
As the BOTOX® Product has become increasingly popular,
patients have sought out injections not only at traditional
doctors’ offices, but also at aesthetic medical centers and
so-called “med spas,” which offer both non-surgical
aesthetic treatments and traditional day spa services such

106 McKenna Testimony Decl. ¶18 (7 TTABVUE 6).
107 Med Aesthetics Group, Marketing Botox (medaestheticsgroup.com) (24 TTABVUE 6).
108 Id. at 24 TTABVUE 8.
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as massage, skin care, and salon services for hair and
nails.109
The prerequisites for injecting BOTOX appear to be minimal. The customer goes to a
spa, requests a consultation to determine if he/she is a candidate for a BOTOX
injection and, if appropriate, a treatment plan begins.110
Applicant’s argument that the relevant consumers exercise a high degree of care
is based, in part, on the false premise that the relevant consumers are limited or
restricted to medical professionals and professional hairdressers.111 Applicant is
discounting the role the patients of the aesthetic medical centers and “med spas” play.
As discussed above, Opposer advertises in popular and widely-circulated magazines,
including Elle, Glamour, Self, Redbook, InStyle, and People”112 so that ordinary
consumers will request BOTOX treatments at their local aesthetic medical center or
“med spa.” Thus, ordinary consumers drive the demand for BOTOX injections.
We find this DuPont factor to be neutral.
G. The length of time during and conditions under which there has been
concurrent use without evidence of actual confusion
Applicant asserts that the parties have been simultaneously using their marks
without any reported instances of actual confusion.113 Opposer concedes that it “has

109 McKenna Testimony Decl. ¶26 (20 TTABVUE 8). See also Applicant’s Brief, p. 15 (32
TTABVUE 16).
110 8 TTABVUE.
111 Applicant’s Brief, p. 17 (32 TTABVUE 18).
112 McKenna Testimony Decl. ¶18 (7 TTABVUE 6).
113 Applicant’s Brief, p. 30 (32 TTABVUE 31).
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not offered any evidence of actual consumer confusion in this proceeding.”114 The
absence of any reported instances of confusion is meaningful only if the record
indicates appreciable and continuous use by the parties of their marks for a
significant length of time in the same markets. Citigroup Inc. v. Capital City Bank
Grp., Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d
1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). In other words, for the absence of actual confusion to be probative, there
must have been a reasonable opportunity for confusion to occur. Barbara’s Bakery
Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the
absence of actual confusion depends upon there being a significant opportunity for
actual confusion to have occurred); Red Carpet Corp. v. Johnstown Am. Enters. Inc.,
7 USPQ2d 1404, 1406-1407 (TTAB 1988).
Opposer’s BOTOX mark is a famous mark, and therefore has extensive public
recognition and renown. See Bose, 63 USPQ2d at 1305; Recot, 54 USPQ2d at 1897;
Kenner Parker Toys, 22 USPQ2d at 1456. On the other hand, Applicant did not
introduce any testimony or other evidence regarding its marketing, promotional, or
advertising activities, nor did it introduce any testimony or other evidence regarding
the extent of its sales. There is essentially no testimony or other evidence regarding
Applicant’s commercial activity. While Applicant introduced excerpts from eBay.com
and Amazon.com advertising the sale of Applicant’s hair care products under the

114 Opposer’s Reply Brief, p. 19 (33 TTABVUE 25).
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mark at issue,115 there is no follow-up testimony or evidence as to whether Applicant
made any sales or how many potential consumers viewed the eBay.com and
Amazon.com webpages.
Because of the lack of testimony and other evidence regarding the extent of
Applicant’s commercial activity under its mark at issue, there is no evidence that
there has been a reasonable opportunity for confusion to occur. Accordingly, this
DuPont factor is neutral.
H. Conclusion
Opposer’s BOTOX mark is both conceptually and commercially strong and, as
noted above, is a famous mark for purposes of our likelihood of confusion analysis.
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 1894, 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.
Bose Corp., 63 USPQ2d at 1305. In addition, as noted above, we find that Applicant
adopted and used its BOTO SMART mark with the intent to trade off the goodwill of
Opposer’s BOTOX mark. We find the marks are similar, the goods are related, and
the parties offer their goods in some of the same channels to some of the same classes
of consumers. Therefore, Applicant’s mark BOTO SMART for non-medicated hair

115 18 TTABVUE 7-15; 19 TTABVUE 5-31 and 35-40; 20 TTABVUE 24; 22 TTABVUE 11-15;
23 TTABVUE 8-15.
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preparations is likely to cause confusion with Opposer’s registered BOTOX mark for
“pharmaceutical preparations for the treatment of … wrinkles.”
Because we found that Applicant’s mark is likely to cause confusion with
Opposer’s mark, we do not reach Opposer’s dilution claim. “Like the federal courts,
the Board has generally used its discretion to decide only those claims necessary to
enter judgment and dispose of the case. . . [T]he Board’s determination of
registrability does not require, in every instance, decision on every pleaded claim.”
Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).
Decision: The opposition is sustained on the ground of priority and likelihood of
confusion and registration to Applicant is refused.