The Board sustained this opposition to registration of GS GEMS STYLE HAIR BOTOX for various non-medicated hair care products [STYLE HAIR BOTOX disclaimed], finding confusion likely with the famous mark BOTOX for pharmaceutical preparations, including preparations for the treatment of wrinkles. Applicant Gems Style, appearing pro se, contended that “Hair Botox” “is a term widely recognized by the general consumer public in the United States and by the social media” that has a distinct meaning from BOTOX alone. The Board was unimpressed. Allergan, Inc. v. Gems Style Inc., Opposition No. 91241842 (October 23, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).
Fame: The Board found BOTOX to be a coined term with no recognized meaning other than as a trademark. Therefore, it is an inherently or conceptually strong mark. As to commercial strength, Allergan has used the mark since 1990, has spent half a billion dollars in advertising and promotion in that past two decades, has earned about $20 billion in the past 20 years, and enjoys 69% unaided brand awareness and 95% aided brand awareness. The Board deemed BOTOX to be a famous mark for purposes of Section 2(d), and therefore entitled to a broad scope of protection or exclusivity of use.
The Marks: The Board noted that Applicant Gems Style “uses the BOTOX as part of the unitary term HAIR-BOTOX on its label” (shown above), making it appear that its product “is a BOTOX product specifically for hair (i.e., a hair Botox).”
Gems Style maintained that “Hair Botox” is a “unique and inseparable concept, widely recognized by relevant consumers. It pointed to third-party websites using the term “Hair Botox” for hair care treatments. The Board agreed that some consumers perceive “Hair Botox” as a hair care treatment, and it noted Gems Style’s disclaimer. In essence, Gems Style asserted that GS GEM STYLE is the dominant portion of its proposed mark. The Board disagreed.
Even assuming a segment of the consuming public and hair care industry perceives “Hair Botox” to be a type of hair care treatment, because Opposer’s registered mark is both conceptually and commercially strong, consumers and potential consumers mistakenly may believe that “Hair Botox” treatments are related to, sponsored by, or somehow associated with the famous BOTOX pharmaceutical with which they are familiar.
Because BOTOX is a famous mark, Gems Style was obligated to avoid using it. “The Trademark Act’s tolerance for similarity between competing marks varies inversely with the commercial strength of Opposer’s mark.”
While the marks are not identical, because Opposer’s BOTOX mark is famous, Applicant’s mark GS GEM STYLE HAIR BOTOX, in its entirety, is more similar to Opposer’s BOTOX mark than it is dissimilar in appearance, sound, connotation, and commercial impression.
The Goods: Allergan submitted copies of 60 use-based, third-party registrations covering hair care preparations and pharmaceutical preparations. Gems Style argued that the pharmaceutical preparations in those registration have nothing to do with hair, contending that “consumers and people in the hair care industry recognize that ‘Hair Botox’ is a product that is separate and distinct from a pharmaceutical preparation.” The Board pointed out, however, that confusion of products is not the issue; it is confusion as to source.
Despite the obvious differences between the descriptions of goods, because BOTOX is a famous mark entitled to a broad scope of protection, some entities render both hair care services and medical cosmetic treatment services under the same mark so consumers may encounter both sets of products in the same marketing milieu, and the third-party registrations show that hair care products and pharmaceutical preparations may emanate from the same source, we find that the Applicant’s hair care products are related to Opposer’s pharmaceutical preparations.
Channels of Trade: Website evidence showed that third parties market both medical cosmetic treatment services, including pharmaceutical preparations such as Botox, and hair care services, including the sale of non-medicated hair care preparation, under the same mark. The Board found that Allergan “offers its pharmaceutical preparations for treating wrinkles in some of the same channels of trade to some of the same classes of consumers as non-medicated hair care preparations.”
Gem Style argued that the channels of trade do not overlap because BOTOX is sold only by prescription and is administered by professionals. The Board pointed out, however, that the evidence showed that aesthetic medical centers and “med spas” offer both hair care products, including hair care preparations, and cosmetic medical treatment services, including BOTOX injections, to the same consumers.
The Board rejected Gems Style’s argument that its hair care products are sold only to licensed salons and are purchased with care, because there are no such limitations in the opposed application. The Board “cannot resort to extrinsic evidence to restrict the parties’ goods.” Moreover, it noted that “the ordinary consumer may purchase Applicant’s hair care products and request a BOTOX injection at a cosmetic medical treatment facility or spa.”
Conclusion: Observing once again that fame plays a “dominant role” in the likelihood of confusion analysis, the Board sustained the opposition. It declined to consider Allergan’s dilution claim
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TTABlogger comment: I think the Board should have decided the dilution claim as well.
Text Copyright John L. Welch 2020.