botox
6 November 2013Trademarks

Botox prevails with Botulex challenge

A US trademark for Botulex would be too confusingly similar to Botox if granted, the Trademark Trial and Appeal Board (TTAB) has ruled.

KRL Group applied for Botulex in 2005, to cover “non-medicated skin care preparations for topical application to the skin”, prompting an opposition by Allergan based on its Botox registration.

Botox, which is used to treat a range of conditions, works by blocking overactive nerve impulses that trigger excessive muscle contractions. Between 1998 and 2011, according to TTAB documents, Botox generated US revenues of nearly $10 billion.

The Botox trademark covers, in part, “pharmaceutical preparations for the treatment of neurologic disorders”. It has been in use since the late 1980s.

In its complaint, Allergan submitted extensive evidence to demonstrate the fame of the Botox mark. Among Botox’s target audience – females aged between 30 and 60 with a household income of more than $50,000 – more than 95 percent of the market knew about the product, the company said.

Assessing the claims, the TTAB said in an October 25 ruling: “We find that opposer’s mark BOTOX is famous for pharmaceutical preparations for various indications, including cosmetic use for skin care.”

Other factors considered were the similarity of the goods, trade channels and the marks themselves.

In conclusion, based on a “preponderance of evidence”, the TTAB said the factors weighed heavily in Allergen’s favour and that consumers familiar with the Botox product would mistakenly confuse it with Botulex.

The ruling bars KRL from registering the US trademark Botulex, but it does not stop it from using the name to sell the product. To prevent use, Allergen would have to file suit in a US federal court.

“Because the TTAB focuses not on true marketplace realities in its likelihood of confusion analysis but rather on broad presumptions derived from the application’s descriptions of goods and trade channels, Allergen might have tried to take advantage of the TTAB,” said Julia Anne Matheson, partner at Finnegan, Henderson, Farabow, Garrett and Dunner LLP.

Despite a positive TTAB ruling, Allergen may still not take action in court, Matheson said, as US courts approach the likelihood of confusion analysis differently and do not defer to TTAB decisions.

“It certainly isn’t a slam dunk, but it will certainly be worth watching for an infringement suit."

Nonetheless, the ruling will help to keep “the register clear of third party marks”, Matheson said, adding that “the TTAB says the mark is famous – often a tough declaration to get from the TTAB – so it is very useful from an enforcement perspective”.

Seyfarth Shaw LLP, which is acting for Allergan, could not provide a comment when the story was published. KRL could be reached for comment.

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