California Trademark Attorney® Blog

BOTOX Exes Out BOTULEX in Trademark Opposition

November 13, 2013

medical_instruments.jpgCalifornia - BOTOX has secured its spot as the reigning champion of wrinkle prevention as it successfully prevented registration of BOTULEX in the United States. The Trademark Trial and Appeal Board (TTAB) found that if allowed to register, BOTULEX branded products might confuse BOTOX buyers into thinking that the two brands are the same or that they are associated. In its ruling, the Board found the BOTOX Trademark to be famous, which significantly helped its case.

KRL Group, Inc. , the maker of BOTULEX, filed its trademark application back in 2005 in connection with "non-medicated skin care preparations for topical application to the skin." Its products, which are marketed to customers as "Injection-Free Alternatives" to BOTOX have been popular because of their less invasive "no needles involved" nature. BOTOX, on the other hand, is an injectable prescription drug, which is registered for "Pharmaceutical preparations." By filing its opposition against BOTULEX, Allergan, Inc., which manufactures BOTOX, was able to slow up the application process for years, finally emerging as the victor only this past month.

In arguing against the opposition, trademark lawyers for BOTULEX pointed out the differences between the goods at issue, noting that BOTULEX includes a line of skin care products including creams, toners and serums that do not require a doctor's prescription. Despite the effort, the Board found the fact that buyers must have a prescription for BOTOX to be of "little consequence," especially when BOTULEX is purposefully marketed as a direct competitor of BOTOX. Further, in comparing the impressions of the two trademarks, the Board found that beyond the look of the words being similar, the sounds of BOTOX and BOTULEX are alike. The Board thus concluded that there were similar commercial impressions between the two products and sustained the opposition.

Since it first began being used for cosmetic purposes in 2002, the popularity of BOTOX as a "filler" for fine lines and wrinkles has soared. Estimates predict that the global BOTOX market will be worth $2.9 billion by 2018, with the United States being the biggest contributor. As the only producers of the drug in the U.S., Allergan has fiercely protected the brand for years, this most recent win only adding to its dominance over the facial aesthetic market.