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PHARMACIA CORP. v. ALCON LABORATORIES

May 14, 2002

PHARMACIA CORP., PHARMACIA AB, PHARMACIA ENTERPRISES S.A. AND PHARMACIA & UPJOHN CO., PLAINTIFFS,
V.
ALCON LABORATORIES, INC., DEFENDANT.



The opinion of the court was delivered by: Bassler, District Judge:

    O P I N I O N (Amended)
This is an action arising under the Lanham Act, 15 U.S.C. § 1051, et seq. and the laws of the State of New Jersey for trademark infringement and trademark dilution. The Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 (a) and 28 U.S.C. § 1331 and 1338. This Court has supplemental subject matter jurisdiction over all other claims under 28 U.S.C. § 1367 (a). Venue is proper in this District. 28 U.S.C. § 1391 (b).

Plaintiff Pharmacia Corporation and its related companies filed a complaint on March 30, 2001 against Alcon Laboratories Inc., seeking a preliminary injunction against the use of an existing trademark. The application for a preliminary injunction was submitted to the Court for determination on the basis of five days of testimony of witnesses at an evidentiary hearing, as well as affidavits, exhibits and the transcripts of testimony given upon oral depositions.

FINDINGS OF FACT

The Court makes the following findings of fact*fn1 and conclusions of law pursuant to Rule 52 of the Federal Rules of Civil Procedure. To the extent that any of the findings of fact might constitute conclusions of law, they are adopted as such. Conversely, to the extent that any conclusions of law constitute findings of fact, they are adopted as such.

I. THE PARTIES AND THE NATURE OF THE ACTION

A. THE PARTIES

1. Plaintiff Pharmacia Corporation is a Delaware corporation with its principal place of business located at 100 Route 206 North, Peapack, New Jersey 07977. Pharmacia Corporation is the parent corporation of the other plaintiffs: Pharmacia AB (formerly known as Pharmacia & Upjohn AB), a company organized under the laws of Sweden; Pharmacia Enterprises S.A. (formerly known as Pharmacia & Upjohn S.A.), a company organized under the laws of Luxembourg; and Pharmacia & Upjohn Company, a company organized under the laws of Delaware) (collectively, "Pharmacia").
2. Defendant Alcon Laboratories, Inc. ("Alcon") is a Delaware corporation and a wholly-owned subsidiary of Alcon Holdings, which is a wholly-owned subsidiary of Alcon Universal Limited, which is a wholly owned subsidiary of Nestle S.A. Alcon's principal place of business is 6201 South Freeway, Fort Worth, Texas 76134.
3. Pharmacia and Alcon are pharmaceutical companies that manufacture and market, inter alia, ophthalmic preparations for the treatment of the eye disease glaucoma.
B. THE NATURE OF THE ACTION
4. Pharmacia initiated this civil action on March 30, 2001 under the Lanham (Trademark) Act of 1946, 15 U.S.C. § 1051, et seq. (the "Lanham Act") and New Jersey statutory and common law.
II. THE EYE DISEASE GLAUCOMA AND THE GLAUCOMA MARKET
6. There is no dispute about the nature of the eye disease glaucoma and the glaucoma market. This case is about the medications used in the treatment of glaucoma, a disease of the eye marked by increased intraocular pressure ("IOP") within the eye. Elevated IOP is caused by excess fluid within the eye that can result in damage to the optic disk and cause gradual loss of vision. Left untreated, glaucoma can result in blindness.
7. There is no known cure for glaucoma. The goal in treating patients with glaucoma and ocular hypertension is to decrease and maintain the IOP to within normal limits.
8. Three million Americans, primarily those age 40 and over, now suffer from the disease. One million are African-Americans, for whom the disease strikes with greater frequency, is more severe and is more difficult to treat.
9. The newest class of prescription drugs used to treat elevated IOP associated with glaucoma are "prostaglandin analogues." They reduce IOP by increasing the outflow of fluid from the eye. The three largest-selling prostaglandin analogue products are Xalatan, Lumigan and Travatan. Pharmacia markets Xalatan; the generic name of its active ingredient is "latanoprost." Alcon markets Travatan; the generic name of its active ingredient is "travoprost." Allergan, Inc. ("Allergan") markets Lumigan; the generic name of its active ingredient is "bimatoprost."
10. Travatan, Xalatan and Lumigan can be dispensed only with a doctor's prescription.
11. Surveys of ophthalmologists conducted by Pharmacia in May and August of 2001 show over 95% awareness of the brand names of all major glaucoma medications, including Travatan and Xalatan.
12. The Xalatan mark as a whole is strong and is a "famous" mark among ophthalmologists.

III. PHARMACIA AND THE DEVELOPMENT OF THE XALATAN PRODUCT AND NAME

13. Alcon does not dispute Pharmacia's sales figures, advertising expenditures or that Xalatan has received media coverage.
14. Prior to Pharmacia's introduction of Xalatan, no prostaglandin product for glaucoma was available on the market in this country and many doctors were uncertain about its use because the product was widely believed to cause inflammation, pain and other detrimental effects in eyes.
15. Xalatan was a commercial success from the beginning; in its first year, sales in this country were approximately $26 million.
16. Since 1996, sales in this country have continued to increase: In 1997 sales were $126 million; in 1998 sales were $197 million; in 1999 sales were $247 million and in 2000 they were $295 million.
17. In those years, worldwide sales of Xalatan were 139, 282, 452 and 615 million dollars.
18. From its launch of Xalatan in 1996, Pharmacia undertook a massive marketing and educational campaign designed to educate the medical field about its new product and its benefits, and to encourage practitioners to switch their patients to Xalatan. This marketing and educational campaign was particularly important because of the general unfamiliarity with the use of prostaglandins for ocular indications.
19. Pharmacia has spent over $100 million educating doctors about the benefits of using prostaglandin products in the eye, and demonstrating the effectiveness of Xalatan solution. Such efforts have included seminars, publications and face-to-face meetings.
20. By 1998, Xalatan solution had become the leading branded drug for the topical treatment of glaucoma and ocular hypertension, capturing 22.5% of dispensed glaucoma prescriptions in the United States.
21. In the thirteen month period from January 2000 to January 2001, the Xalatan solution was the leader in its class of drugs dispensed.
22. Pharmacia spent large sums of money for market research for Xalatan related research in 2001. Gurreri Tr., at 368-70; Def. Ex. W (DX02498).
23. The Xalatan and Travatan products will be prescribed, dispensed and used by the same groups: physicians, pharmacists and other health care professionals and glaucoma patients.
IV. SELECTION OF THE XALATAN NAME
24. The Xalatan trademark was derived by combining the "LATAN" prefix from its generic name, latanoprost, with the "XA" portion of the code name PHXA41 used by Pharmacia during the product's development.
25. In 1997, Pharmacia obtained Federal trademark registration No. 2,118,188 for its Xalatan trademark.
26. The following paragraphs (a) thru (g) support the finding that what identifies Pharmacia's product in the marketplace and is the dominant part of the Xalatan mark is the prefix "XAL" and not the suffix "ATAN.".
(a) When Pharmacia adopted the Xalatan mark, it was aware of seven pharmaceutical marks with the suffix "ATAN" and ten more with the suffix "TAN." Def. Ex. I (DX00751-52) (Battle Dep. Ex. 1); 12/21 Tr., at 14-16 (Battle).
(b) At least three other pharmaceutical trademarks currently in the market bear trademarks with the suffix "ATAN." Def. Ex. H (DX00614) (Mintz Decl., ¶ 4); id. (DX00624-40) (Mintz Decl., Ex. 3-5) (Rynatan, Phenatan, Germtan).
(c) At least 11 other pharmaceutical trademarks currently in the market bear trademarks with the suffix "TAN." Id. (DX00641-72, DX00679-729) (Mintz Decl., Exs. 6-16).

(d) "AN" is the most common suffix among generic names for pharmaceutical products and the sixth most common suffix among registered trademarks in U.S. Category 005 (Pharmaceuticals). Def. Ex. G (DX00580-89) (Bruce L. Lambert, et at., "Descriptive Analysis of the Drug Name Lexicon," 56 Drug Information J.163, 170 Tbl. 3 & 171 Tbl. 4 (2001); 12/18 Tr., at 189-91 (Lambert).

(e) Timolol is the generic name of the active ingredient of many products in a class of drugs called "beta-blockers," which traditionally have been the "first-line" topical treatment for lowering elevated IOP. Def. Ex. O (DX02073) (Harfstrand Decl., ¶ 14). For its proposed timolol-latanoprost combination product, all of the marks Pharmacia filed with the Food and Drug Administration ("FDA") and the United States Patent and Trademark Office ("PTO") begin with "Xal," none contain either the "ATAN" or "TAN" suffixes. Def. Ex. I (DX01203-28) (PTO filings for Xalaplus, Xalaplus T, Xaltimol, Xalacom, Xalacomb, Xalitol and Xalcom); Garanzini Tr., at 62,99-100; Def. Ex. I (DX01259) (internal Pharmacia notes referring to "Xal family"); Garanzini Tr., at 59-69, 77-96, 108-109, 112-19, 122-29 (describing "Xal" names submitted to FDA); Linvill-Neal Tr., at 80-81 (only "XALA" part of Xalatan name considered for inclusion in new combination product name); Garanzini Tr., at 132-33 ("Xalatan family" trademarks begin with "Xal"); 12/20 Tr., at 226-27 (Gurreri) (Pharmacia refers to Xalatan and Xalcom products as the "Xalatan family" or "Xalatan franchise").
(f) In 1993 when Eli Lilly, a major pharmaceutical company that monitored trademarks approved by the PTO saw that the Xalatan mark had been approved, it opposed that mark as confusingly similar to Lilly's mark, Oxalactam. Pharmacia responded by emphasizing that Xalatan" starts with the letter X, which makes it special." Def. Ex. I (DX01260) (facsimile from Gunnell Nilsson to Doreen Lute, dated December 8, 1993).
(g) In 2000, Pharmacia defended its "Xalcom" mark against an opposition filed by Alcon in Spain by again arguing that "[t]he letter X at the beginning of the word . . . demands the most attention from the consumer." Id. (DX01082) (translation of Pharmacia brief in opposition).
V. ALCON AND THE DEVELOPMENT OF THE TRAVATAN PRODUCT
27. Alcon invested more than ten years and over $100 million to bring the Travatan product to market. Def. Ex. E (DX00330) (Kreuger Decl ¶ 6).
28. Because prior to FDA approval of a drug, companies are permitted to promote new drugs only on a limited basis, Alcon's marketing investment in the Travatan product, prior to FDA approval, was just over $1 million. Barton 10/25 Tr., at 65-66; Gurreri Tr., at 213, 282-86.
29. Since approval by the FDA, Alcon has spent over $15 million on the sales and marketing of Travatan. Def. Ex.B (DX00024) (Barton Decl.,¶ 26); 12/17 Tr., at 150 (Barton). In 2002, Alcon's planned marketing expenditures are $38 million. Def. Ex. B (DX00024) (Barton Decl., ¶ 26.).
30. This investment has resulted in the recognition of the Travatan name; Pharmacia's marketing studies measuring ophthalmologists' familiarity with the Travatan name show a "total awareness" of over 95%. Gurreri Tr., at 226, 232-36; Def. Ex. I (DX00938, DX00945) (Wave II Awareness/Usage Study) (excerpts); Def. Ex. QQQ (DX04757, DX04767) (same) (complete); 12/17 Tr., at 150 (Barton).
VI. ALCON'S SELECTION OF THE TRAVATAN MARK
31. Although Alcon was aware of Pharmacia's mark Xalatan, the record does not support Pharmacia's contention that Alcon copied Pharmacia's mark with an intent to confuse consumers or that Alcon chose the "ATAN" suffix in order to trade off the success and name recognition of Xalatan. Alcon has credibly explained the origin and marketing goals behind the adoption of the Travatan mark.
32. Alcon's Trademark Committee selected the name Travatan after a global search and clearance process, that started in 1994 when Alcon's Research and Development team was early in the process of formulating the drug. Def. Ex. B (DX00018) (Barton Decl., ¶ 4.
33. In July 1997, the United States Adopted Names Council ("USAN") proposed the generic name "travoprost" as an alternative to Alcon's suggested generic names. Def. Ex. B (DX00031) (July 7, 1997 USAN Letter). In September 1997, Alcon consented to the name "travoprost," id. (DX00032) (Sept.12, 1997 Letter of Charles L. Schmidt), and, in March 1998, USAN formally adopted it. Def. Ex. GGG (DX04210-12) (Mar.25, 1998 USAN Letter).
34. Before Alcon learned of the travoprost name, it was considering trademark names for the product such as "alcoprost," "prostalon" and "prostal." See Def. Ex. B (DX00030) (Aug.8, 1994 Memo); id. (DX00033) (Jan.8, 1996 Memo). In connection with the name travoprost, Alcon began to consider potential trademarks that integrated the prefix "trav."Id. (DX00035-36) (Barton Decl., Ex.4); 12/17 Tr. 161-62 (Barton). Other possible names included "Travodin" and "Travopress." Most of these names appended common drug suffixes to a prefix taken from or evocative of the generic "travoprost." Def. Ex. B (DX00019) (Barton Decl., ¶¶ 7-8; id. (DX00035) (Barton Decl., Ex. 4).
35. There is sufficient credible evidence for this court to find that Alcon's selection and adoption of the name Travatan was done in "good faith."
36. Travatan was created by taking the prefix "travo" of travoprost, changing the "o" to an "a," and combining the resulting prefix "trava" with what is a common pharmaceutical suffix — "tan" in order to create a coined name. Def. Ex. B (DX00020-21) (Barton Decl., ¶¶ 11,14); 12/17 Tr., at 154-56, 161-62, 171 (Barton); see also Def. Ex. H (DX000614) (Mintz Decl.,¶ 4 (listing drug names ending in "a-t-a-n").
37. The court finds credible the testimony of Barton and Schira at the evidentiary hearing that Alcon did not create the Travatan trademark by copying the "ATAN" ending of Xalatan. 12/17 Tr., at 171 (Barton); 12/19 Tr., at 184-85 (Schira). Rather, suffixes other than "TAN" were rejected because they did not sound or look as good as Travatan. Def. Ex. B (DX00020-21) (Barton Decl., ¶¶ 10-14); id. (DX00036) (Barton Decl., Ex. 4); id. (DX00042-43) (Barton Decl., Ex. 6).
38. Travoprost, bimatoprost and latanoprost all are pronounced in practice as if they ended in "aprost." Barton 7/18 Tr., at 27-28; Nesi Tr., at 46-47, 92-93; Di Domizio Tr., at 226-27; Def. Ex. B (DX00020 (Barton Decl., ¶ 13); 12/17 Tr., at 142, 170-171 (Barton). The prefix "TRAVA" was selected over "TRAVO" because: (1) the assonance of the repeated A vowel was desirable; and (2) the FDA generally does not approve of brand names that contain too much of the generic name. 12/17 Tr., at 156 (Barton); Def. Ex. K (DX01432) (Di Domizo Decl., Ex.2); Def. Ex. B (DX00020) (Barton Decl., ¶ 12).
39. Alcon considered several other marks and selected Travatan but only after its first choice "PRAVATIN," was considered to be too close to "PREVATAIN," a mark for a dry-eye product marketed by Allergan, Inc. 12/17 Tr., at 135-36, 140, 166-69, 172-73, 177 (Barton); 12/18 Tr., at 25-26, 47-48, 50-51 (Gill); Def. Ex. DDD (DX04145-65) (PRAVATIN trademark search report).
40. Because of the importance of the product, even after the Travatan name was tentatively selected, Tim Sear, Alcon's CEO, repeatedly urged the generation of additional potential names throughout the first half of 1998. Def. Ex. B (DX00022) (Barton Decl., ¶ 20); id. (DX00046-47) (Barton Decl., Ex. 8).
42. To determine whether the Travatan name was "clear," Alcon conducted both its own database trademark search and ordered an external one, conducted by Thompson & Thompson. 12/17 Tr., at 172 (Barton); 12/18 Tr., at 6-8, 12-13, 22-23, 29-30 (Gill); 12/19 Tr., at 138-40, 154-56 (Schira); Def. Ex. B (DX00055-100) (Barton Decl., Ex. 9). The internal search disclosed the existence of Xalatan, Def. Ex. B (DX00059), but the Thompson & Thompson search did not list Xalatan as a potential conflict. (DX00101-31) (Thompson and Thompson Search) 12/18 Tr., at 12.
43. The internal trademark search and the Thompson and Thompson trademark search revealed eleven other marks that end in the suffix "TAN," out of which three marks end in "ATAN".
44. The "ATAN" portion of the Xalatan mark is weak.
45. At the evidentiary hearing Alcon's in-house intellectual property counsel, Jeffrey Schira Esq. testified, as did Alcon's manager of trademark services, Anna Gill. The Court found their testimony very credible. Both Mr. Schira and Ms. Gill participated in the trademark clearance of the Travatan name. Schira Tr.,at 73-75, 103, 107, 124; Gill Tr., at 12-13, 76, 124. Mr. Schira is an experienced trademark attorney. 12/19 Tr., at 141, 195; Schira Tr., at 8-10, 17-18. His clearance of the Travatan name was part of his usual practice of reviewing and providing his "final approval" for all prospective marks. Schira Tr., at 15-16, 69-70, 76, 102-103, 110-12; Gill Tr., at 12-13.
46. Ms. Gill has had over twenty years experience in trademark reviewing and clearance. As part of the clearance process, Ms. Gill would investigate potential marks and provisionally "clear" them before bringing the file to Mr. Schira for review. Until this litigation, none of the marks Ms. Gill had cleared during her long career ever resulted in a trademark dispute. 12/18 Tr., at 27-28, 48 (Gill). But only if Mr. Schira also agreed with Ms. Gill that the mark was available would the Trademark Committee be allowed to adopt it. 12/19 Tr., at 134-35, 138-39, 155-56, 164, 192-93 (Schira); Schira Tr., at 59-62; 12/18 Tr., at 4-5, 21, 23 (Gill); 12/17 Tr., at 169-70 (Barton).
47. Although Mr. Schira was aware of the Xalatan mark at the time he reviewed the Travatan mark, he compared both the front end of the mark and the back end of the mark, and determined that there was not a likelihood of confusion. Schira Tr., at 79-92; 12/19 Tr., at 161.
48. Both Ms. Gill and Mr. Schira also concluded that Pharmacia did not have exclusive rights to the "ATAN" suffix because of the number of other pharmaceutical products that also end in the suffixes "ATAN" and "TAN," and the number of other glaucoma products that end in "AN." 12/19 Tr., at 171-73 (Schira); Schira Tr., at 74, 83, 91-93, 127-28; 12/18 Tr., at 13, 31, 38 (Gill).
49. It is worth noting that the PTO, the FDA and various other foreign regulatory authorities have all approved the Travatan mark. 12/19 Tr., at 185-91 (Schira). And when Alcon, during the clearance process, identified "TRIVITAN," a mark for an ophthalmic product marketed by Merck & Co. ("Merck") in Argentina, it successfully negotiated a co-existence agreement with Merck. 12/18 Tr., at 47 (Gill).
50. Alcon filed an intent-to-use application for Travatan with the PTO on June 3, 1998. Def. Ex. B (DXOOO23) (Barton Decl., ¶ 23).
51. The PTO determined that the Travatan mark was not confusingly similar to any other existing mark and published the mark for opposition on May 18, 1999. Id. (DX00023) (Barton Decl., ¶ 23); id. (DX00163-64) (Barton Decl., Ex12).
52. In addition, the brand names for all prescription drugs, such as Travatan, must be approved by the FDA before they can be used in the United States. The FDA has the authority to reject any proposed name that "because of similarity in spelling or pronunciation, may be confused with the proprietary name or the established name of a different drug or ingredient." 21 C.F.R. § 201.10 (c)(5); see also 12/17 Tr., at 173 (Barton); Garanzini Tr., at 62-64.
53. Prior to October 1999, the FDA name review process was conducted under the auspices of the FDA's Labeling and Nomenclature Committee ("LCN"), a division of the FDA's Center for Drug Evaluation and Research ("CDER"). The LCN was composed of nine health professionals from different divisions within the FDA. The LCN reviewed the submitted name for potential confusion with other drug names. If it found no such confusion likely, the LCN recommended that the name be approved by the CDER Medical Reviewer, an FDA Division Director who had ultimate approval authority over the drug. Def. Ex. E (DX00335) (Kreuger Decl., ¶ 24; id. (DX00339-43) (Kreuger Decl., Ex. 2).
54. In 1999 Alcon submitted the Travatan mark to the LCN, which after conducting its review recommended that Travatan was "acceptable for use." Def. Ex. E (DX00331-35) (Kreuger Decl., ¶¶ 13-17); Id. (DX00345) (Kreuger Decl., Ex. 3) (OPDRA Report).
55. The FDA implemented a new and more rigorous screening process designed to eliminate potentially confusing names. That process is now overseen by the Office of Post-Marketing Drug Risk Assessment ("OPDRA"), which tests proposed names on outpatient and inpatient prescriptions in a simulated clinical setting. Def. Ex. C (DX00173-75) (De Santis Decl., ¶¶ 20, 24). The purpose of this process is to reduce the risk of approving a new drug name that might result in medication errors. Di Domizio Tr., at 241.
56. OPDRA conducted a study, employing ninety-four healthcare professionals, to determine under simulated real-world conditions whether Travatan would be confused with other U.S. drug names due to similarity in visual appearance with handwritten prescriptions or verbal pronunciation of the name." Def. Ex. E (DX00346) (OPDRA Report).
57. OPDRA tested two handwritten prescriptions, one of which read "D/C Travatan today" with no reference to concentration, or strength of the drug. Id. (DX00346-47) (OPDRA Report at 3-4). It also tested two verbal prescriptions transmitted by telephone. Id.
58. The OPDRA study found "there were no erroneous interpretations of this proprietary name with other U.S. marketed drug products" in any of the four simulated prescriptions tests it conducted, including the handwritten test where no concentration of Travatan was specified. Id. (DX00334) (Krueger Decl., ¶ 21); id. (DX 00347) (OPDRA Report). As a result, OPDRA recommended that the FDA approve the Travatan name.
59. At the time OPDRA initially tested the Travatan name, Alcon had submitted data on two concentrations of travoprost: 0.0015% and 0.004%
60. In December 2000, prior to approving the Travatan product, the FDA recommended to Alcon, and Alcon agreed, that Travatan be marketed only in one concentration: 0.004%. Krueger 6/20 Tr., at 28, 30-31; Krueger 10/30 Tr., at 12, 33-34. As a result, the FDA was aware that Travatan would be marketed in one concentration (travoprost ophthalmic solution 0.004%) well before it issued its final approval of the Travatan product in March 2001. Def. Ex. E (DX00335) (Krueger Decl., ¶ 25).
61. On March 16, 2002, the FDA's CDER Medical Reviewer and Division Director, Robert DeLap, approved the Travatan name as part of the FDA approval to market Travatan. Def. Ex. E (DX00331, DX00335) (Krueger Decl.,¶¶ 11, 24).
62. In addition to approving drug names, the FDA also must approve the way the name is presented on all product packaging. The FDA approved the packaging for Travatan and did not find it to be confusingly similar to any other packaging, including Xalatan. Def. Ex. E (DX00335-36) (Krueger Decl., ¶¶ 27-28).
63. Although Pharmacia could have petitioned the FDA at any time to reconsider its approval of the Travatan name and/or packaging, it did not. See 21 C.F.R. ¶ 10.30 Pharmacia never contacted the FDA with its concerns about the Travatan name, Gurreri Tr. 204-07, nor did it ask its paid consultant, Mr. George DiDomizio, to use his experience with and connections with the FDA to intercede on Pharmacia's behalf. Tr. 97.
64. The packaging for both Travatan and Xalatan prominently displays their manufacturers' respective house marks. Def. Ex. E (DX00336) (Krueger Decl., ¶ 28): Def. Ex. III (Xalatan package); Def. Ex. JJJ (Travatan package). In addition, Alcon emphasizes its well-known house mark in promoting its products. Guerri Tr., at 165-66; Def. Ex. V (DX03305) (Agenda for May 6, 1998 Trademark Committee Meeting).
65. Alcon has also submitted the Travatan name for regulatory review in more than fifty countries. None has raised any concern with the name. Moreover, despite opportunities to do so, Pharmacia did not oppose any of these submissions. Def. Ex. B (DX00023-24) (Barton Decl., ¶ 24); 12/19 Tr.186-91 (Schira); 12/18 Tr. 29 (Gill).

VII. PHARMACIA'S KNOWLEDGE OF THE TRAVATAN MARK

66. Pharmacia did not move for preliminary injunctive relief until April 2001 although it had constructive knowledge as early as the Spring of 1999 and actual knowledge commencing in June of that year and going forward. Although the Court does not find that Pharmacia timed the lawsuit to cause maximum disruption of the Alcon launch of Travatan, such delay must mean that Pharmacia did not initially consider Alcon's use of Travatan to infringe on its trade mark.
67. Pharmacia had constructive (if not actual) knowledge of the Travatan name as early as May 18, 1999, when Travatan was published in the Official Gazette. Pharmacia certainly had actual knowledge of the Travatan name through (1) its internal and external competitive intelligence reporting from the summer of 1999 forward and (2) its extensive testing of the Travatan name in internal market research beginning in the summer and fall of 2000 when it designed strategies to counter the anticipated Travatan launch. Gurreri Tr. 154-55.
68. Pharmacia failed to diligently monitor its trademarks.
69. The PTO approved the Travatan mark for publication on April 16, 1999 and then published the Travatan mark for opposition in the Official Gazette on May 18, 1999. Def. Ex. SS (DX03875-76) (Travatan Prosecution History); Def. Ex. B (DX00163-64) (Barton Decl., Ex. 12) (Official Gazette excerpts).
70. Of course publication in the Official Gazette is "notice to the world that Alcon" planned to use the mark Travatan. 12/21 Tr. 62 (Battle). The purpose of such publication is to provide "any person who believes that he would be damaged by the registration of a mark" the opportunity to object to registration by the PTO. 15 U.S.C. § 1063 (a).
71. Although Pharmacia's head intellectual property lawyer, Mr. Battle testified that when he joined Pharmacia in October 1999 "there was nobody to monitor" the Official Gazette, 12/21 Tr. 63 (Battle), in fact Pharmacia did monitor trademark filings in 1999 in several ways:
(a) It had a "strong in-house intellectual property component" that monitored trademark filings and formally opposed at least seven trademarks that Pharmacia believed were likely to infringe or dilute its marks. Jacobs-Meadway Tr., at 13-14, 25-27, 41-44; Def. Ex. I (DX01160-1202) (Pharmacia oppositions filed in or about 1999).
(b) Pharmacia also engaged multiple outside law firms to protect its trademarks, including one that acted as a trademark watch service and monitored the Official Gazette. Jacobs-Meadway Tr., at 25-31, 36-38, 40-44; 12/21 Tr. 63 (Battle).
(c) Pharmacia subscribed to a number of trade journals and other publications that reported on the approval of the Travatan mark, including a well-known trade publication, Pharmaceutical Approvals Monthly, and the PTO's Official Gazette. Def. Ex. I (DX01253-54) (2d Int. Ans. Nos. 2-3).
(d) Mr. Battle's predecessor at Pharmacia was Ray Arner. He was head of Global Intellectual Property and prior to October 1999 (and Battle's arrival at Pharmacia), had responsibility for Pharmacia's trademarks. Ray Arner monitored the PTO's Official Gazette for trademark filings in May of 1999, when the Travatan mark was published for opposition. Jacobs-Meadway Tr., at 22, 25; 12/21 Tr., at 20 (Battle).
(e) As previously noted, Pharmacia received the Pharmaceutical Approvals Monthly. In its June 1999 issue, which featured articles about Pharmacia's products, it reported Alcon's intent to use the Travatan mark for its travoprost product. Def. Ex. B (DX00165-66) (Barton Decl., Ex. 13) (excerpts).
72. Despite the fact that Xalatan in 1999 "had the biggest sales worldwide in the entire corporation," and that the Xalatan product and brand name are "extremely important" to Pharmacia, 12/17 Tr., at 79-80 (Harfstrand), and although Pharmacia opposed the registration of at least seven marks that it believed infringed on various marks, it did not oppose Travatan.
73. Pharmacia has an entire department devoted to Global Competitive Intelligence ("GCI"). It is inconceivable to this Court that information about Travatan did not reach executives of Pharmacia well in advance of Alcon's launch of Travatan on March 16, 2001.
75. One source of Global Competitive Intelligence information that is of particular significance was an ophthalmic congress regularly held in Europe by the European Society of Ophthalmology ("SOE"). Nesi Tr., at 28-42.
76. The 1999 SOE Congress was a "major convention[]" in the industry. 12/17 Tr., at 91 (Harfstrand).
77. Pharmacia was a "Main Sponsor" of the 1999 SOE Congress, which that year was held in Stockholm, Sweden from June 27-July 1, 1999. Harfstrand Tr., at 79-80; 12/17 Tr., at 92-93.
78. At this June 1999 SOE Congress, Alcon's Vice President of Pharmaceutical Products, Research and Development, Dr. Stella Robertson, made a public presentation on the clinical results achieved with Travatan. Def. Ex. J (DX01261) (Robertson Decl., Ex. 2).
79. The first slide in Dr. Robertson's presentation read, "Dose Response Evaluation Travoprost Ophthalmic Solution Travatan." Def. Ex. J (DX01269) (Robertson Decl., Ex 2). It is important to note that an abstract of the presentation was published in the conference's "Abstract Book," which was distributed to all conference attendees. Def. Ex. I (DX 01025) (Abstract Book excerpt); Def. Ex. J. (DX01262) (Robertson Decl., ¶ 4); 12/17 Tr., at 94-95 (Harfstrand). The title of the presentation actually included the designation "Travatan Trade mark" and was listed both in the Abstract Book and in the "Final Program" that contained the schedule of events at the Congress. Def. Ex. I (DX01025) (Abstract Book excerpt); Def. Ex. O (DX02002) (Final Program excerpt); Def. Ex. J (DX01262) (Robertson Decl., ¶¶ 3-6); 12/17 Tr., at 94-97 (Harfstrand).
80. Alcon's Travatan presentation was made on June 30, 1999 at 2:00 o'clock as part of a one-and-one half hour session on glaucoma therapies, in the same room as, and along with a presentation on the use of latanoprost, the active ingredient in Xalatan. Def. Ex. OO (DX02001-02) (1999 SOE Final Program excerpts).
81. Pharmacia claims that it was unaware or not made aware of Dr. Robertson's presentation. That claim defies belief for the following reasons:
(a) Dr. Anders Harfstrand, then Pharmacia's Vice President for the Global Ophthalmology Business, the highest ranking marketing executive responsible for Xalatan, attended the 1999 SOE Congress. 12/17 Tr., at 93 (Harfstrand).
(b) Also in attendance at the Congress were at least seven Pharmacia employees or agents including Paul Chaney, Pharmacia's current Vice President for the Global Ophthalmology Business, who was then primarily responsible for marketing Xalatan in the United States; Michael Garanzini, Pharmacia's Senior Global Product Manager for Xalatan and Dr. Stephen Obstbaum, a Pharmacia declarant and outside consultant paid to attend such meetings. 12/17 Tr. 93 ...

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