Friday, September 07, 2007

Fame of "BOTOX" Mark Yields 2(d) Opposition Victory over "SEATOX" for Cosmetics

Swept away by the fame of the BOTOX trademark, the Board sustained an opposition to registration of the mark SEATOX for “cosmetic[s].” According to the Board, consumers “may believe … that SEATOX identifies a related product emanating from opposer, perhaps an adjunct or complementary product with a formulation that includes a sea-based ingredient.” Allergan, Inc. v. BioCentric Labs., Inc., Opposition No. 91161603 (August 20, 2007) [not precedential].

Sales of the BOTOX product approached $1.7 billion in the period 1999-2004, and advertising expenditures were in the $10 to 20 million range. Applicant admitted that "[e]verybody has heard of BOTOX." Accordingly, the Board found the mark to be famous for Section 2(d) purposes. And, of course, fame plays a dominant role in the Board's du Pont analysis.

The Board had no difficulty in finding the goods of the parties to be related, even though BOTOX is administered by injection and applicant's product is an over-the-counter cream. Applicant's product admittedly was designed to reduce wrinkles.

The only wrinkle that the Board encountered was the evident dissimilarity of the marks. Not to worry!

"The marks BOTOX and SEATOX are similarly constructed, two-syllable coined terms. The marks are similar in sound and appearance in that both begin with a single syllable and end in a TOX-suffix. *** [A]ny specific differences in meaning, as well as in sound and appearance between the marks BOTOX and SEATOX, are outweighed by the similarities, especially in light of the absence on this record of any instances of third-party use of similar marks."

Considering all the du Pont factors, and resolving all doubt in favor of the registrant, the Board found confusion likely.

TTABlog comment: Not a very convincing decision. The Board essentially gave Opposer exclusive rights in the term "TOX" even though Opposer does not own a registration for "TOX," nor does it have a family of "TOX" marks. Apparently there was no evidence of actual confusion. I think the marks are sufficiently different that confusion is not likely.

The lesson to be learned from this (and so many cases) is that spending time and effort spent to prove the strength of your client's mark may be the best way to improve the chances of success as an opposer.

Text Copyright John L. Welch 2007.


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