Allergan, Inc.v.Solux Corporation

Trademark Trial and Appeal Board

May 24, 2005

No. 91156142 (T.T.A.B. May. 24, 2005)

Mailed:
May 24, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Allergan, Inc.
v.
Solux Corporation
_____

Opposition No. 91156142
to application Serial No. 78144461
filed on July 16, 2002
_____

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

Solux Corporation, pro se.
______

Before Seeherman, Quinn and Grendel,1 Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant, Solux Corporation, seeks registration on the
Principal Register of the mark LIPOTOX (in typed form) for
goods identified in the application as “pharmaceutical
preparations for the treatment of neurological disorders,
muscle dystonias, smooth muscle disorders, autonomic nerve
disorders, headaches, wrinkles, hyperhydrosis, sports

1 Formerly known as Bottorff.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91156142
2
injuries, cerebral palsy, spasms, tremors and pain,” in
Class 5.2
Opposer, Allergan, Inc., filed a timely notice of
opposition to registration of applicant’s mark. As its
ground for opposition, opposer alleges that applicant’s
mark, as applied to the goods identified in the application,
so resembles opposer’s previously-used and registered mark
BOTOX as to be likely to cause confusion, to cause mistake,
or to deceive. Trademark Act Section 2(d), 15 U.S.C.
§1052(d). In the notice of opposition, opposer pleaded
ownership of three registrations of the mark BOTOX,
Registration Nos. 1692384, 1709160 and 2510675.
Applicant answered the notice of opposition by denying
the salient allegations thereof.
At trial, opposer submitted evidence (discussed below),
but applicant did not. Opposer and applicant submitted main
briefs and opposer submitted a reply brief. No oral hearing
was requested.
With its reply brief, opposer filed a motion to strike
certain factual assertions made by applicant in applicant’s
brief as well as an exhibit attached to applicant’s brief,
on the ground that these statements and the attachment are

2 Application Serial No. 78144461, filed on July 16, 2002. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).

Opposition No. 91156142
3
not supported by the evidence of record. We grant opposer’s
motion to strike insofar as it pertains to the factual
assertions applicant has made in its brief. No evidence in
the record supports these assertions, and we therefore have
given them no consideration. See TBMP §704.06(b) (2d ed.
rev. 11/04). However, we deny opposer’s motion to strike
insofar as it pertains to the exhibit attached to
applicant’s brief, i.e., the listing of alleged third-party
“TOX” marks. The same listing was attached to applicant’s
answer to opposer’s Interrogatory No. 7, and that answer and
its attachment were made of record by opposer via notice of
reliance. We therefore decline to strike the exhibit from
applicant’s brief.3
The evidence of record consists of the pleadings
herein, the file of the opposed application, and the
evidence submitted by opposer via notice of reliance, i.e.,
certain of opposer’s discovery requests and applicant’s
responses thereto, and status and title copies of opposer’s
three pleaded registrations.4 The three pleaded
registrations, which are extant and owned by opposer, are:

3 However, as discussed infra, we have given no probative value
to this mere listing of alleged third-party marks.

4 Opposer also submitted status and title copies of a fourth
registration, Registration No. 2510673. However, this
registration was not pleaded in the notice of opposition, nor did
opposer move to amend the pleading to add an allegation of
ownership of such registration. We therefore have given no
consideration to this unpleaded registration. We note, however,
that this unpleaded registration is merely cumulative in any
Opposition No. 91156142
4
- Registration No. 1692384, which is of the mark BOTOX
(in typed form) for “pharmaceutical preparations; namely,
ophthalmic muscle relaxants,” in Class 5;
- Registration No. 1709160, which is of the mark BOTOX
(in typed form) for “pharmaceutical preparations for the
treatment of neurologic disorders,” in Class 5; and
- Registration No. 2510675, which is of the mark BOTOX
(in typed form) for “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 Class 5.
Because opposer has proven the status and title of its
pleaded registrations, we find that opposer has established
its standing to oppose registration of applicant’s mark.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982). In addition, because
opposer’s pleaded registrations are of record, Section 2(d)
priority of use is not an issue in this case. See King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).

event, inasmuch as the mark depicted therein is a stylized
version of the BOTOX mark which is depicted in typed form in
opposer’s three pleaded registrations, and the goods identified
in the unpleaded registration are the same as the goods
identified in pleaded Registration No. 2510675.

Opposition No. 91156142
5
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We find, first, that applicant’s goods are legally
identical or highly similar to the goods identified in each
of opposer’s three registrations. Indeed, applicant’s
identification of goods is identical to the identification
of goods in opposer’s Registration No. 2510675; applicant
has admitted that it copied opposer’s identification of
goods verbatim in drafting its own identification of goods.
(Applicant’s answers to opposer’s Requests for Admission
Nos. 4 and 5.) Because the parties’ goods are legally
identical, we also find that the trade channels for such
goods and the classes of purchasers for such goods are
legally identical. Thus, the second, third and fourth du
Pont factors weigh in opposer’s favor in this case.
Opposition No. 91156142
6
The fifth du Pont factor requires us to consider
evidence of the fame of opposer’s BOTOX mark, and to give
evidence of such fame, if present, dominant weight in our
likelihood of confusion analysis. See Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed.
Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc.
v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992). In this case, there is no evidence in the
record to support a finding that opposer’s mark is famous,
for purposes of the fifth du Pont factor.
Applicant has admitted that opposer’s mark is “well-
known” in the United States. (Applicant’s answer to
opposer’s Request for Admission No. 3.) However, applicant
denied opposer’s request for an admission that opposer’s
mark is “famous” in the United States. (Applicant’s answer
to opposer’s Request for Admission No. 2.) Opposer
therefore was on notice that if it wished to assert and rely
on the fame of its mark in this proceeding as contemplated
by case law, proper evidence of such fame had to be
submitted at trial. Opposer submitted no such evidence,
i.e., sales figures, advertising expenditures, etc.
A “well-known” mark is not the same as a “famous” mark,
nor is a “well-known” mark entitled to the same level of
protection that a famous mark receives. The cases cited by
Opposition No. 91156142
7
opposer, in which marks proven to be famous are accorded a
broad scope of protection, therefore are inapposite in this
case, where opposer has proven only that its mark is “well-
known.” We therefore find that the fifth du Pont factor
weighs in opposer’s favor in this case, but only slightly,
and certainly not to the extent it would have if opposer had
presented evidence sufficient to establish that its mark is
famous.
There is no evidence pertaining to the sixth du Pont
factor, i.e., the number and nature of similar marks in use
on similar goods. The list of alleged third-party marks
attached to applicant’s answer to opposer’s Interrogatory
No. 7 (made of record by opposer) is not evidence that the
marks depicted therein are in use or that they are known to
purchasers in this country. See, e.g., Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 74 USPQ2d 1689 (Fed. Cir. 2005). The sixth du
Pont factor weighs in opposer’s favor.
We turn finally to the first du Pont factor, i.e.,
whether applicant’s mark, LIPOTOX, and opposer’s mark,
BOTOX, are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. We make this determination in
accordance with the following principles.
Opposition No. 91156142
8
The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result. The
focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Furthermore, although the marks at
issue must be considered in their entireties, it is well-
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Finally, in cases such as this, where the applicant’s goods
are identical to the opposer’s goods, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the goods were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
After careful review of the marks involved in this
case, we find that applicant’s mark is dissimilar rather
Opposition No. 91156142
9
than similar to opposer’s mark. Indeed, for the reasons
discussed below, we find that the marks are so dissimilar
that confusion is unlikely to result even from use of the
marks on identical goods.
In terms of appearance, we find that the marks are more
dissimilar than similar. Opposer’s mark has five letters
and thus is shorter than applicant’s mark, which has seven.
Both marks end with the letters –TOX, but applicant’s mark
begins with the letters LIPO- and opposer’s mark with the
letters BO-. Overall, the marks are not confusingly similar
in terms of appearance.
In terms of pronunciation, the marks are similar to the
extent that the second and third syllables of applicant’s
mark, -POTOX, would be pronounced similarly to opposer’s
mark, BOTOX. However, applicant’s mark has an additional
syllable, LI-, at the start of the mark. Whether that
syllable is pronounced with a long or a short “i,” it would
not be elided by purchasers but instead would be pronounced
clearly; indeed, the first syllable is likely to receive the
most stress of any of the syllables in applicant’s mark.
Its presence at the very beginning of the mark gives
applicant’s mark an overall three-syllable pronunciation
which is readily distinguishable from the two-syllable
pronunciation of opposer’s mark.
Opposition No. 91156142
10
In terms of connotation, we find that the marks are
quite dissimilar when viewed in their entireties. Opposer’s
mark, on this record, appears to be a coined term with no
overall meaning, but which, with its –TOX suffix, suggests
that the goods utilize or involve a toxin. We take judicial
notice that “tox-,” when used as a prefix, denotes “poison”
or “poisonous,” and that “toxin” is defined as “a poisonous
substance, especially a protein, that is produced by living
cells or organisms and is capable of causing disease when
introduced into the body tissues but is often also capable
of inducing neutralizing antibodies or antitoxins.” The
American Heritage Dictionary of the English Language (3d ed.
1992) at 1895.5 The letters BO- in opposer’s mark appear on
this record to be without meaning as applied to opposer’s
goods, as those goods are identified in opposer’s
registrations.6
Applicant’s mark LIPOTOX shares the same suffix as
opposer’s mark, -TOX, and thus the same connotation, i.e.,
that the goods utilize or involve a toxin. However,

5 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

6 Applicant argues that purchasers would readily perceive that
opposer’s mark is a combination or telescoping of the terms
“botulinum” and “toxin,” because opposer’s goods in fact are
derived from the botulinum toxin. However, the record does not
support applicant’s contention. Opposer’s goods, as identified
in the registrations, are not defined or limited in this manner.

Opposition No. 91156142
11
applicant’s mark begins with what would readily be
recognized as the prefix “lipo-.” We take judicial notice
that “lipo-” is defined as a prefix meaning “fat; fatty;
fatty tissue.” The American Heritage Dictionary of the
English Language (3d ed. 1992) at 1048. Purchasers would
readily recognize this prefix because of its presence in
other commonly used words, most notably “liposuction.”7
Thus, applicant’s mark connotes that applicant’s goods
involve fat or fatty tissue, as well as a toxin or toxins.
Although opposer’s mark also has a “toxin” connotation, it
is dissimilar to applicant’s mark because it does not
connote anything pertaining to “fat” or “fatty tissue.”
We are not persuaded by opposer’s argument that the
marks are similar because they both have –OTOX as a suffix.
–OTOX is not a suffix in either of these marks.8 -OTOX is
not a suffix in opposer’s mark, because it is not appended
to a word or a word stem, but simply to the letter “B.” If
opposer’s mark has a suffix, it is -TOX, appended to the
apparently arbitrary syllable BO. Likewise, applicant’s

7 We take judicial notice that “liposuction” is defined as “[a]
usually cosmetic surgical procedure in which excess fatty tissue
is removed from a specific area of the body, such as the thighs
or abdomen, by means of suction.” The American Heritage
Dictionary of the English Language (3d ed. 1992) at 1048.

8 We take judicial notice that “suffix” is defined as “[a]n affix
appended to the end of a word or stem, serving to form a new word
or functioning as an inflectional ending, as –ness in gentleness,
-ing in walking, or –s in sits.” (Webster’s II New Riverside
University Dictionary (1984) at 1158.
Opposition No. 91156142
12
mark clearly would be perceived as consisting of a prefix,
LIPO-, and a suffix, –TOX.
Considering the parties’ marks in their entireties, we
find that they are similar only in that they share the
suffix –TOX, which if not descriptive is at least highly
suggestive of a quality of the parties’ respective goods,
i.e., that they utilize or involve a toxin. Given the very
different manners in which the respective marks begin, i.e.,
BO- and LIPO-, the fact that both marks share the suggestive
suffix –TOX is not sufficient to support a finding that the
marks as a whole are similar. The first du Pont factor
therefore weighs in applicant’s favor in our likelihood of
confusion analysis.
Considering all of the evidence as it pertains to the
various du Pont factors, we find that applicant’s mark is so
dissimilar to opposer’s mark that no confusion is likely to
result from the parties’ contemporaneous use of the marks,
even on legally identical goods marketed in the same trade
channels to the same classes of purchasers. Opposer has not
proved that its BOTOX mark is famous, and the mark therefore
is not entitled to the broad scope of protection that a
famous mark would receive. On this record, we find that the
shadow of opposer’s mark is not so long as to preclude
registration of applicant’s quite dissimilar mark. Rather,
we find that the first du Pont factor is dispositive in this
Opposition No. 91156142
13
case. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991).

Decision: The opposition is dismissed.9

9 We note that applicant’s involved application also is involved
in a second opposition proceeding, Opposition No. 91157219,
wherein Pfizer Inc., et al, are the opposers. That opposition
has been suspended at the parties’ request pending the outcome of
the present proceeding.