BOTOX Paralyzes BOTO SMART Registration

Given the pressure to look younger, the majority of people have heard of the brand BOTOX®.  BOTOX® is a pharmaceutical preparation derived from a neurotoxic protein produced by the bacterium Clostridium botulinum and related species. The protein prevents the release of acetylcholine which causes paralyzing of certain muscles or blocking certain nerves. It is generally injected into a body part of a patient, usually the head or face. Injection into the face gives a temporary smoothing of facial wrinkles. Interestingly, if ingested, the toxin causes botulism, a deadly type of food poisoning.

Allergan, Inc. (“Allergan”) owns trademarks for the BOTOX® brand related to “pharmaceutical preparations; namely, ophthalmic muscle relaxants,” as well as pharmaceutical preparations for the treatment of neurological and other disorders.

Gems Style, Inc. (“Gems”), as a pro se applicant,  filed for BOTO SMART for various non-medicated hair care preparations. Allergan instituted an opposition proceeding with the Trademark Trial and Appeal Board to oppose registration of the mark citing a likelihood of confusion.

Famous Marks

Famous marks enjoy a broader scope of protection than non-famous marks. In determining fame, one must consider the inherent strength based on the mark itself as well as its commercial strength based on marketplace recognition. Commercial strength can be measured indirectly by sales volume; advertising expenditures; length of use of the mark; widespread critical assessments; notice by independent sources of the goods or services identified in the mark; and general reputation of the goods or services.

Inherent and commercial strength of BOTOX®

With regard to inherent strength, BOTOX® is a coined term with no other recognized meaning besides as a trademark. This makes the mark inherently strong. Further, the TTAB noted the dictionary definition of BOTOX® is 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”.

With regard to commercial strength, the TTAB noted that “when a trademark attains dictionary recognition as part of the language, we take it to be reasonably famous”. The TTAB also noted that Allergan spent a considerable amount, $498 million, on advertising from 2002 through 2018. Allergan advertised in more than 100 magazines; has 772,000 followers on Instagram; and earned approximately $20 billion in U.S. sales from 1998 through 2018. In light of the foregoing, the TTAB found BOTOX® a famous mark. Accordingly, it enjoys a broad scope of protection.

Similarity of BOTOX and BOTO SMART marks

With regard to a likelihood of confusion, the TTAB found the marks BOTOX® and BOTO SMART similar in appearance and sound. The dominant aspect of Gem’s mark is BOTO which reinforces the similarity between the marks. The elimination of the “X” from BOTO in Gems’ mark is not a sufficient distinction.

With regard to the similarity of the goods, Gems argued that the descriptions and use of the goods are so different, the goods are not competitive. This argument was not persuasive. The TTAB found that there are entities that render hair care services and medical cosmetic treatments under the same mark. Accordingly, consumers may encounter both sets of products in the same marketing milieu. Further, third party registrations show that hair care products and pharmaceutical preparations may emanate from the same source. Thus, hair care products are related to pharmaceutical preparations. Accordingly, the TTAB found a likelihood of confusion between the marks.

Bad faith

The opinion also noted that Gems exhibited bad faith in adopting its BOTO SMART mark. Gems previously filed for BOTOX for hair care preparations. The Trademark Office found a likelihood of confusion with Allergan’s BOTOX mark. Allergan subsequently sent a cease and desist letter to Gems explaining how their products infringed on the BOTOX mark. Gems agreed to stop selling the products under BOTOX and expressly abandoned the application.

Gems immediately filed two trademark applications for: BRAZILIAN SMART BOTOS HAIR TREATMENT FORMALDEHYDE FREE and BRAZILIAN LEGEND BOTO COR DE ROSA FORMALDEHYDE FREE HAIR TREATMENT. After receiving registrations or both marks, Gems immediately filed and started using the BOTO SMART mark, thus moving closer to the BOTOX mark. Allergan argued that the removal of the “X” from BOTOX was an attempt to trade off the goodwill of BOTOX. Gems argued that the term “Boto” is well known for the Amazon River dolphin that turns pink as an adult. In view of the history between the parties, the TTAB found Gem acted in bad faith, with the intention to trade off the goodwill of the BOTOX mark.

Takeaways

As shown in the case, famous marks enjoy a broad scope of protection. BOTOX is a fanciful term and thus is inherently strong. In addition, the sales volume, advertising expenditures, notice by independent sources of the goods and services; reputation of the goods and services and length of use of the mark show commercial strength. Given the strength of the mark as well as the similarity in the marks, BOTOX easily established a likelihood of confusion with its famous mark.  The fact that Gems acted in bad faith definitely did not help its case. One should proceed with caution when attempting to use and register a mark that may be confusingly similar to a famous mark.

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