In Brief:   A trademark adopted in bad faith will not be registered.

Here’s What Happened: Allergan, Inc. manufactures and sells injections and treatments most notably used for smoothing wrinkles under the trademark “Botox”. It also helps with neurological disorders, headaches, cerebral palsy, tremors and pains. Botox products have been around for 20 years during which time they have generated over $20 billion in sales. Botox can safely be called a famous brand.

Enter Gems Style, Inc. who filed an application to register the name “Botox” for hair care products and preparations. The application was refused due to a likelihood of confusion with Botox. Even though Gems Style’ goods were not identical or even competitive to Botox, the consuming public is used to seeing the same companies market hair care products and dermatological products like anti-wrinkle preparations. So the goods are related enough to cause confusion as to the source of Gems Style’s Products.  Gems Style abandoned this application.

Not to be undaunted, Gems Style filed a new application to register the name “Boto Smart” for its hair care products and preparations. This time, the application passed the examination process and was published for opposition.

Allergen brought an opposition proceeding. In a scathing opinion, the Trademark Trial and Appeal Board sustained the opposition. The Board determined that Gems Style adopted the Boto Smart mark in bad faith. Gems Style asserted that it didn’t know about Botox until its goods were taken down from eBay after a complaint from Allergan. The Board didn’t believe it. Allergen asserted that Gems Style changed the mark to be close to the Botox mark. But Gems Style said that actually, Boto is the name of a river dolphin in the Amazon. The Board didn’t find this argument persuasive. In fact, the Board found it a curious argument because there’s nothing about dolphins or the Amazon in Gems Style’s advertising or use of the mark. The Board found no excuse for Gems Style to adopt a mark that was so close to Botox. The adoption raised the inference that Gems Style was trying to gain an advantage from Botox’s well established reputation. 

WHY YOU SHOULD KNOW THIS:  Established, well-known trademarks enjoy a market identification by consumers. That’s why a junior user can’t adopt a similar trademark. The junior user impermissibly trades off of the good will established by the senior user and can cause consumers to be confused about the source of the goods or services. So when choosing a brand, stay away from anything that looks or sounds like a famous mark; even if there’s no direct competition.

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