United States District Court, District of New Jersey, D
May 14, 2002
PHARMACIA CORP., PHARMACIA AB, PHARMACIA ENTERPRISES S.A. AND PHARMACIA & UPJOHN CO., PLAINTIFFS,
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
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.
5. On April 16, 2001, Pharmacia moved for a preliminary injunction to
enjoin defendant Alcon from infringing and diluting
registered Xalatan trademark in connection with Alcon's use of the name
Travatan for the sale of a prostaglandin-based product used for the
treatment of the eye disease glaucoma.
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
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
10. Travatan, Xalatan and Lumigan can be dispensed only with a
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
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
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
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
(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
(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,
(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
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
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
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
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
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).
41. The minutes of the meeting of Alcon's Trademark Committee on
November 19, 1997 contain the statement that: "The proposed trademark is
Travatan which should compete well with Pharmacia's Xalatan's trademark."
PX-25 at DP 002210. The Court does not accept the sinister connotation
urged by Pharmacia.
Alcon ultimately selected the Travatan mark as a
trademark because it is suggestive of the generic ingredient
"travoprost," Barton 7/18 Tr., at 27; Gill Tr., at 51, 72; Def. Ex. B
(DX00018, DX00020) (Barton Decl., ¶¶ 5,11), and because it is easy to
spell, pronounce, write and remember, because it is different from the
names of its competitors' products, and because it creates a brand
identity unique to Alcon. Barton 7/18 Tr., at 29, 64-65; Def. Ex. B
(DX00019-22) (Barton Decl., ¶¶ 8,11,14,18). Because of these
characteristics Alcon concluded the Travatan name "competes well" against
the Xalatan name. Def. Ex. B (DX00022) (Barton Decl., ¶ 18); 12/17
Tr., at 151, 163-64, 172, 179 (Barton); 12/18 Tr., at 35 (Gill); 12/19
Tr., at 126-28 (Schira).
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
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
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
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
(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
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.
74. Information about Travatan was collected by GCI and circulated
to senior marketing executives in what was called "Competitor
Outlook & Review" reports. 12/20 Tr., at 154-55 (Gurreri); Gurreri Tr.,
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
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
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
(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
(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 (Harfstrand);
Harfstrand Tr., at 79-81; 99; Garanzini Tr., at 15,
137-38; Def. Ex. I (DX01024) (SOE Abstract Book
(c) Pharmacia engaged outside private investigators
to monitor Alcon's activities. Pharmacia retained TJN
("TJN") at $15,000-$30,000 per meeting, to attend
ophthalmic conferences, including the 1999 SOE
Congress, and keep tabs on Pharmacia's prostaglandin
analogue competitors. Nesi Tr., at 18, 32-33, 36;
12/17 Tr., at 90-92 (Harfstrand); 12/20 Tr., at 155-56
(d) At the time of the 1999 SOE Congress, Pharmacia
was involved in a European patent opposition
proceeding with Alcon over Xalatan (which Pharmacia
lost on July 2, 1999, just two days after Dr.
Robertson's presentation). Def. Ex. O (DX02006-08
(Pharmacia European Patent Register File). Dr.
Harfstrand retained TJN to, among other things, gather
information on Travatan in connection with that patent
opposition and its eventual appeal. Harfstrand Tr., at
63-64; 12/17 Tr. 90 (Harfstrand).
(e) The "Final Program" and a blown-up reproduction
of the page reprinting the abstract of Dr. Robertson's
presentation resided in Pharmacia's files and was
produced to Alcon during discovery. Def. Ex. CCCC
(PH072589) (1999 SOE Final Program); Def. Ex. O
(DX02001-02) (Final Program excerpts); Def. Ex I
(DX01110) (blown-up Robertson abstract); 12/17 Tr., at
(f) Given that twenty pages of the Final Program were
devoted to glaucoma, that the one page summary in the
Abstract Book identified the three panels presenting
papers on glaucoma, and that the two page list of
symposia in the Abstract Book identified the glaucoma
symposia held at the Congress, Dr. Harfstrand's
explanation that he missed Dr. Robertson's
presentation and the references to Travatan in the
1999 SOE Abstract Book and Final Program because they
were difficult to find rings a little hollow. 12/17
Tr., at 118-19 (Harfstrand); Def. Ex. O (DX02001)
(Final Program table of contents); Def. Ex. I
(DX01023) (Abstract Book listing free papers by
topic); Def. Ex. I (DX01022) (Abstract Book listing
symposia by topic).
82. Moreover, Pharmacia also had constructive knowledge of the
Travatan presentation. Dr. Harfstrand acknowledged that he engaged TJN,
12/17 Tr., at 90, until the patent litigators took over the TJN
contracts. Dr. Harfstrand's investigative agent attended the Travatan
presentation on his behalf. 12/17 Tr., at 90-92 (Harfstrand); Def. Ex. I
(DX01112-18) (TJN Report.)
83. Dr. Robertson's presentation on the clinical results achieved with
Travatan at the June 1999 SOE Congress was reported in Global Competitive
Intelligences's October 1999 Competitor Outlook & Review which described
Alcon's product as "the first potential competitor . . . identified . . .
in late-stage head-to-head studies vs. Xalatan." Def. Ex. I (DX01048)
(Harfstrand Def. Ex. 15) (excerpts). The Review referred to Travatan by
name (misspelling it "Travotan") and contained information relating to
Alcon's launch plans. (DX01048-49); 12/17 Tr., at 100-04 (Harfstrand);
Harfstrand Tr., at 138-42. Top Pharmacia executives received copies of
the Global Competitive Intelligence Competitor Outlook & Review reports.
12/20 Tr., at 154-55 (Gurreri); 12/17 Tr. 97-98, 100-102 (Harfstrand);
Gurreri Tr., at 47 Garanzini Tr., at 142-43; Battle Tr., at 71.
84. The October 1999 Competitor Outlook & Review was the first Global
Competitive Intelligence document distributed after the 1999 SOE
85. Six months later, in April 2000 (one year before Pharmacia filed
its ex parte application for immediate injunctive relief), Global
Competitor Outlook & Review again referred to "Travatan" (spelled
correctly), reporting that Alcon would be filing for approval "this
quarter." Def. Ex. I (DX00846-52) (same); Gurreri Tr., at 43-45; 12/17
Tr., at 98-99 (Harfstrand).
86. Although Dr. Harfstrand testified that he had not read any of the
Competitor Outlook & Review Reports in Pharmacia's files discussing the
Travatan mark because
they "were boring and usually lack of news in
them," 12/17 Tr., at 77, preferring instead to throw them away, id. at
98, other Pharmacia executives paid more attention to them. Mr. Chaney
requested to have someone "make [a] file for me of these reports" and
"keep them centrally." Def. Ex. I (DX01042) (October 1999 Report with
handwritten notes). Carl Battle, Esq. Pharmacia's vice president for
intellectual property, testified that although he could not remember
exactly how he first learned of the Travatan "in approximately May" of
2000 it was from "some document" distributed within Pharmacia. 12/21
Tr., at 7, 10, 23, 38 (Battle).
87. In any event "based on this report . . . [by] April of 2000
Pharmacia knew that Alcon had been testing their product called
Travatan . . ." Gurreri Tr., at 51; 12/20 Tr., at 157-61 (Gurreri).
88. In July of 2000, Dr. Harfstrand, Mr. Chaney, Mr. Gurreri and
others with marketing responsibility for Xalatan participated in a
"Therapeutic Area Review" for Pharmacia's ophthalmic business. To help
prepare them, Global Competitive Intelligence distributed a memo to Dr.
Harfstrand, Mr. Chaney and others. The memo included a chart that
summarized the status of competitive ophthalmic products and which listed
Travatan by name, its anticipated launch date, its perceived strengths,
its perceived weaknesses, and relevant commercial considerations. While
the chart does list as an important "commercial consideration" the
connection of Travatan to Alcon and its sales force, it does not indicate
any concern about the Travatan name. 12/17 Tr., at 104 (Harfstrand);
12/20 Tr., at 162 (Gurreri); Def. Ex. QQ (DX03453-59) (Therapeutic Area
Review Memo); Id.; Def. Ex. RR (DX03859T-X) (Therapeutic Area Review
Chart); Def. Ex. QQ at DX03456; Def. Ex. RR at DX03859; 12/20 Tr., at
89. Throughout the summer of 2000, Pharmacia tested the appeal to
ophthalmologists of both the Travatan product and the Travatan name
against Xalatan by conducting "War Games" and other market research. As a
part of the preparation for these "War Games," certain Pharmacia
executives were dubbed "Team Travatan" and instructed to think like Alcon
to develop a message that would anticipate how Alcon would likely promote
Travatan. 12/20 Tr., at 166-78(Gurreri); Guerri Tr., at 81-86; Def. Ex. W
(DX0239-56) (Xalatan Games Kick-Off Meeting); 12/20 Tr., at 167-69
(Gurreri); Garanzini Tr., at 187-93.
90. At no point during this process did any Pharmacia marketing
executive give any thought to the possibility that the Travatan mark was
likely to cause confusion with or dilute the Xalatan mark, or that Alcon
was attempting to do so by naming its product Travatan. #12/20 Tr., at
174-75 (Gurreri); Gurreri Tr., at 109, 117, 129-30, 153; Garanzini Tr.,
at 145; Linvill-Neal Tr., at 122.
91. By October 2000, Pharmacia's internal marketing department
repeatedly had evaluated the Travatan name. According to Pharmacia,
Travatan was a "mini-van" trademark — a "weakness," and not a
threat. 12/20 Tr., at 178-81(Gurreri); Gurreri Tr., at 109-18, 166-68;
Def. Ex. I (DX00881) (Global Commercial Team Workshop Notes &
92. In the various analyses by Pharmacia, none identified the Travatan
trademark as an issue. Def. Ex. U (DX02271) (Xalatan U.S. Product Plan
2002 listing "vigorous defense of three main patents" as a "strategic
initiative"); 12/20 Tr., at 179-80 (Gurreri).
93. While document after document from 1999 through early 2001
reflects that Pharmacia analyzed what it knew of Alcon's clinical
studies, launch dates and marketing concepts for Travatan, and repeatedly
tested the Travatan name and drug profile with ophthalmologists, none
identify the Travatan mark as a problem. Def. Ex. I (DX01029-39); Id.
(DX01111-18); Id. (DX01119-40); Id. (DX00846-52); Id. (DX01141-50); Def.
Ex. (DX03859L-R); Def. Ex. QQQ (DX04719-800A); Def. Ex. QQ
(DX04719-800A); Id. (DX03603-57); Id. (DX03723-76); Id. (DX03509-83).
94. Throughout almost all of this period, Pharmacia perceived
Lumigan, and not Travatan, as the prime competitive threat until late
January or early February 2001, when Pharmacia received its first
indication that Travatan would be the greater competitive threat. CDC, a
marketing research firm hired by Pharmacia, distributed a report dated
early February 2001 stating that, "[i]t appears Travatan will provide the
greatest threat to Xalatan." Gurreri Tr., at 106, 141-42; Def. Ex. QQQ
(DX04884) (CDC Report); 12/20 Tr., at 208-12 (Gurreri); Def. Ex. I
(DX00904); Def. Ex. QQQ (DX05006).
95. In connection with negotiations over patent issues Alcon told
Pharmacia about its plans to market Travatan as early as June 30, 2000.
Def. Ex. A (DX0002) (Arno Decl., ¶ 3); Id. (DX005-06) (Arno Decl.,
Ex. A); 12/21 Tr., at 10-12 (Battle).
96. In subsequent monthly correspondence and in a face-to-face meeting
in December, 2000, both parties consistently used the name "Travatan."
Def. Ex. A (DX0005-16) (Arno Decl.,Exs. A-J) (negotiation letters); Def.
E. KKK (DX04646-64) (Battle Dep. Exs.2-9) (same); 12/21 Tr., at 24,
40-42, 51-57 (Battle).
97. The correspondence and negotiations were an attempt to resolve
patent issues, but even before Alcon initiated these discussions, Mr.
Battle had regular discussions with Dr. Anders Harfstrand concerning the
potential patent threat of Alcon's prostaglandin analogue product and the
negotiations with Alcon. 12/21 Tr., at 29-31, 36-37, 40-42 (Battle).
98. Despite the fact that Mr. Battle knew of the Travatan mark no
later than May 2000, Mr. Battle testified that he and Dr. Harfstrand
"never" discussed the Travatan name before October 2000. The Court finds
this inconceivable in view of Mr. Battle's consistent use of the Travatan
name in his correspondence with Alcon. 12/21 Tr., at 48-49 (Battle);
Def. Ex. A (DX0005-16) (Arno Decl.Exs. A-J); Def. Ex KKK (DX0464-64)
(Battle Dep. Exs.2-9). Mr. Battle claims that he did not recognize, until
Dr. Harfstrand brought it to his attention in October 2000, that
Pharmacia might have trademark concerns, as well as patent concerns,
about Travatan. 12/21 Tr., at 12-13, 37-38, 44-45, 48-49 (Battle).
99. Yet even after October 2000, Mr. Battle never suggested the
possibility of a trademark conflict to Alcon by letter, telephone, or in
their face-to-face meeting in December 2000. Battle Tr., at 58-59; 12/21
Tr., at 44-45, 50, 53-54 (Battle). Nothing was said to Alcon even after
Dr. Harfstrand raised trademark issues with Mr. Battle in October 2000.
12/21 Tr., at 44 (Battle); 12/20 Tr., at 177, 184.
100. At the evidentiary hearing, Dr. Harfstrand testified that he was
"very upset" upon learning of the Travatan mark in connection with the
October 2000 conference of the American Academy of Ophthalmology. 12/17
Tr., at 75 (Harfstrand). In an October meeting, he told Mr. Battle the
Travatan trademark "was a problem" and "absolutely" infringed Pharmacia's
trademark," and "diluted Pharmacia's trademark."
12/17 Tr., at 111-12
(Harfstrand). According to Dr. Harfstrand, Mr. Battle promised to "take
care of it and work on it" and thereafter provided Dr. Harfstrand with
status updates on an "almost weekly" basis. 12/17 Tr., at 75-76
101. Mr. Battle has "ultimate responsibility" for Pharmacia's
trademarks, 12/21 Tr., at 6 (Battle), and has been familiar with the
Xalatan product since October 1999. Id. at 11. No trademark issue crossed
his mind when he first saw the name Travatan in May 2000, although he
specifically noted at that time that the suffix for Travatan "was similar
to the A-T-A-N in Xalatan." Id. at 10, 12-13. Rather, Mr. Battle focused
exclusively on a patent case as "the way to go" in dealing with the
competitive threat posed by Travatan. Id. at 38, 49.
102. Mr. Battle testified that even after Dr. Harfstrand brought his
concern over the Travatan trademark to Mr. Battle's attention in October
2000, he waited "a couple of weeks" to have Pharmacia's in-house
trademark counsel, Ms.Cynthia Summerfield, "look at the matter for me."
Id. at 33-45. Ms. Summerfield, along with the help of outside counsel,
spent from October 2000 to February 2001 reviewing whether Pharmacia would
have a "meritorious claim" with respect to Travatan. Id. at 52, 54,
103. Mr. Battle also testified, in contrast to Dr. Harfstrand, that in
their subsequent meetings, they "primarily" discussed "patent matters"
and he only told Dr. Harfstrand that "we were looking into the trademark
issue" rather than providing any specific updates. Id. at 48.
104. On February 5, 2001, after the patent negotiations reached an
impasse, Pharmacia advised Alcon in writing that it had commenced a
patent infringement case over the Travatan product in Delaware. Def. Ex A
(DX0003) (Arno Decl ¶.10); Id. (DX00016) (Arno Decl., Ex. J). On
February 7, 2001, Pharmacia first notified Alcon that the Travatan
trademark was a "concern" to Pharmacia. 12/21 Tr., at 64 (Battle); Def.
Ex. A (DX0004) (Arno Decl., ¶ 12).
105. It was not until March 9, 2001, or seven days before the launch
of Travatan, that Pharmacia formally demanded that Alcon abandon the
Travatan mark. 12/21 Tr., at 66-67 (Battle).
VIII. THE ABSENCE OF CONFUSION IN THE MARKET PLACE
106. Confusion between the Xalatan and Travatan products is unlikely,
due to the different prefixes, the differences in packaging and marketing
methods, as well as the products' nine-month coexistence with no actual
107. First is the fact that the dominant prefixes of Travatan and
Xalatan are distinctive and very different from one another.
108. Moreover, the product packages for Xalatan and Travatan are
different from one another. Alcon's Travatan packaging displays the Alcon
mark and uses a distinct all-capital font, type size and purple
coloring, whereas Pharmacia's Xalatan packaging reinforces the "Xal"
prefix with an oversized, turquoise capital and stylized "X" juxtaposed
with the lowercase and plain font "alatan." Def. Ex. E(Kureger Decl.,
Ex.5); Def. Ex. III (Xalatan Package); Def. Ex. JJJ (Travatan package).
The Travatan box also is significantly larger that the Xalatan box and
contains the unique foil-overwrap packaging used only by Alcon. Def. Ex.
E(DX00336) (Krueger Decl., ¶ 28); Def. Ex. III (Xalatan Package);
Def. Ex. JJJ (Travatan Package); 12/17 Tr., at 224-25 (Di Domizio); 12/18
Tr., at 178 (Lambert); Gurreri Tr., at 360-61.
109. The promotion of the products also serves to distinguish them.
Detailing visits by product representatives from different manufacturers
is a primary method of promoting ophthalmic prescription medicines,
including Xalatan and Travatan. Garanzini Tr., at 39; Obstbaum Tr., at
25-26; Gurreri Tr., at 12-16. During such visits, Alcon representatives
promote the entire line of Alcon products, including Travatan, whereas
Pharmacia representatives promote only Xalatan. Def. Ex. B (DX00021)
(Barton Decl., ¶ 16); Garanzini Tr., at 38-39.
110. Sales representatives often make comparisons to competing
products during these detailing visits. Eisenberg Tr., at 65-66; Ex. I
(DX00807-809); Id. (DX00978-92).
111. Advertising and articles in medical journals also identify the
manufacturers of glaucoma products. 12/19 Tr., at 85, 88-89, 114-15
(McCullough); 12/18 Tr., at 54, 76-78 (Eisenberg); Obstbaum Tr., at
13-14, 25, 34; Garanzini Tr., at 20-21, 39, 190.
112. A published chart of sound alike names also "serves to decrease
the likelihood of any confusion between Xalatan and Travatan."12/17 Tr.,
at 216 (DiDomizio).
113. These various sources of information about glaucoma products
would help to make ophthalmologists and optometrists aware that the
different medications each company's representatives promote are
manufactured by different companies. Obstbaum Tr., at 25-26.
114. There is no evidence of actual confusion in the market place.
Alcon began shipping Travatan on March 16, 2001, the day it received FDA
approval. Through the end of October, 2001, more than 115,000
prescriptions for Travatan had been filed. Def. Ex. TT (DX03877-82), and
more than 200,000 units of Travatan had been shipped to pharmacies.
Def. Ex. E (DX00331) (Krueger Decl., ¶ 11). There have been no
reported instances of confusion, nor is there any evidence of medication
errors involving the two drugs. Pharmacia has acknowledged that it knows
of no instances of actual confusion. Def. Ex. I (DX01236) (1st Int. Ans.
No 10); Gurreri Tr., at 78-80; Obstbaum Tr., at 61-65; Eisenberg Tr., at
80-81; 12/17 Tr., at 113 (Harfstrand); Harfstrand Tr., at 159-60;
Garanzini Tr., at 38-41.
115. In a comprehensive survey conducted by Pharmacia from July
through September 2001, ophthalmologists consistently demonstrated
recognition of various characteristics of both Xalatan and Travatan.
These studies show no indication that ophthalmologists surveyed believed
Xalatan to be an Alcon product or Travatan to be a Pharmacia product.
12/20 Tr., at 221-24 (Gurreri); Gurreri Tr., at 225-32, 374: Def. Ex. QQQ
(DX04747-800A) (Wave Awareness Usage Study) (complete): Def. Ex. I
(DX00930-54) (same) (excerpts); Id. (DX00966-77) (Wave III research).
116. The United States Pharmacopeia ("USP") collects and reports
instances (both "actual" and "potential") of misprescription and
medication error. It has not reported any actual instances of
misprescription or error between Travatan and Xalatan. Def. Ex. G
(X00605-08) (McCabe Decl., Ex. 7) (USP Quality Review, May 1999); Def.
Ex. K (DX01438-43) (DiDomizio Decl., Ex. 3) (USP Quality Review, March
2001); Def. Ex. C (DX00229) (DeSantis Decl., Ex. 6) (USP Medication
Errors Reporting Program form); 12/17 Tr., at 210-13 (Di Domizio); 12/18
Tr. 168-71 (Lambert); DiDomizio Tr. 182-83.
117. By FDA regulation, 21 C.F.R. § 314.80(i), Pharmacia is
required to maintain a database of all adverse events involving Xalatan.
Gurreri Tr., at 187-88;
12/17 Tr., at 112 (Harfstrand); 12/20 Tr., at 227
(Gurreri). Pharmacia has not produced any evidence of any confusion
between Xalatan and Travatan.
118. Alcon also maintains a similar database. It has received no
reports of any confusion between Xalatan and Travatan. Krueger 10/30
Tr., at 52-54; Def. Ex. E (D00335) (Krueger Decl.,§ 26).
119. Pharmacia did not conduct a confusion survey.
120. There is no credible evidence in the record that patients are
likely to confuse Xalatan and Travatan.
IX. EXPERT TESTIMONY
121. Pharmacia submitted opinion evidence to support its contention
that confusion between the Travatan and Xalatan marks is likely. It
relied on four expert witnesses: Dr. Stephen A. Obstbaum, Dr. Dan L.
Eisenberg, Mr. George Di Domizio and Dr. Bruce L. Lambert. In addition,
Pharmacia relied on a survey conducted by Walter McCullough to support
its contention that the Travatan mark dilutes the Xalatan mark. The
Court, for reasons that will be discussed, has accorded these opinions
little weight, and in some case, none. Alcon, on the other hand,
submitted a survey of ophthalmologists and optometrists conducted by
Professor Shari Diamond (who also testified). Relying on a net confusion
rate of 1.5%, Dr. Diamond concluded that there is "no evidence that the
name of Alcon's product Travatan is likely to cause confusion with the
name of Pharmacia's product Xalatan in the relevant population," i.e.
ophthalmologists and optometrists. The Court finds her opinion persuasive
and her testimony credible.
A. Pharmacia's Expert Testimony
(1) Dr. Obstbaum
122. In his declaration, Dr. Obstbaum opined that "the Travatan name
is very similar to the Xalatan name," and that "there is a likelihood
that medication substitution could occur, because of the substantial
similarity" of the names. It was his opinion that "a medication error by
which a pregnant woman patient received Travatan rather than Xalatan can
pose a health risk to that patient." Def. Ex. K (DX01351) (Obstbaum
Decl., ¶ 14); Id. (DX01352) (Obstbaum Decl ¶¶ 15, 16). Dr.
Obstbaum's declaration did not disclose that he has been a Pharmacia
consultant for fourteen years and is currently paid $190,000 per year for
his services. Obstbaum Tr., at 43-44. In any event, for the reasons set
forth in the Court's Opinion and Order dated November 28, 2001, the Court
held these opinions inadmissible.
(2) Dr. Eisenberg
123. Dr. Eisenberg was of the opinion that the FDA's approval of the
Travatan name was based on "reasoning" that "no longer holds." Def. Ex. K
(DX01402-03) (Eisenberg Decl., ¶¶ 5-6). However, the Court in its
November 28, 2001 Opinion and Order, held that this opinion regarding the
FDA's reasoning was inadmissible.
124. Dr. Eisenberg also was of the view that "it is not unreasonable
to anticipate a confusion between Xalatan and Travatan." Def. Ex. K
(DX01402-03) (Eisenberg Decl.,¶¶ 5-6); 12/18 Tr., at 55 (Eisenberg).
In his opinion, confusion would occur "when the patient transfers from
one physician to another and is asked to give a list of their
medications." 12/18 Tr., at 56. The only specific grounds for his
opinion regarding Travatan and Xalatan are two experiences he had where
prescriptions he wrote for Beltagan and Betimol were filled with Betimol
and Betoptic S, respectively. Def. Ex. K (DX01403) (Eisenberg Decl.,
125. Dr. Eisenberg's testimony must be evaluated in the context of his
business relationship with Pharmacia (not disclosed in his declaration).
Since 1998, he has been hired to speak for an organization that markets
Xalatan for Pharmacia, charging $1500 per afternoon or $5,000 per day.
12/18 Tr., at 55, 100 (Eisenberg). Pharmacia had also provided Dr.
Eisenberg with "material support" such as Baerveldt shunt devices and a
Helon GB surgical device. 12/18 Tr., at 100-01; Eisenberg 9/5 Tr., at
35-36. At the time he testified, Dr. Eisenberg also was being considered
for a Pharmacia-sponsored study that would pay over $150,000. 12/18 Tr.,
at 101-02 (Eisenberg).
126. Dr. Eisenberg testified that he has no knowledge concerning
whether the beginnings of words are more likely to cause confusion than
the endings. Eisenberg Tr., at 88. Nor was his opinion supported by any
survey or other empirical research. Id. at 78-79; 12/18 Tr., at 96-97.
127. Any confusion generated by patient transfers is just as likely to
be off set by the differences in packaging and storage between the two
products. See Def. Ex. E (DX00353) (Krueger Decl., Ex. 5); 12/17 Tr., at
223-27 (DiDomizio); 12/18 Tr., at 117 (Eisenberg).
128. Dr. Eisenberg's testimony as to confusion among pharmacists and
their assistants was less than convincing: such confusion is "possible"
not "likely," 12/18 Tr., at 56-57 (Eisenberg), moreover it occurs
"completely apart from any confusion with regard to names."Id. at
129. The Court finds the "not unreasonable to anticipate" confusion
testimony of little value, even with Eisenberg's subsequent attempt at
clarification that this phraseology is "statistical terminology" for
"likely." This results from the absence of any statistical analysis from
Dr. Eisenberg, any experience in trademark-related matters, or in the FDA
clearance process for pharmaceutical trademarks. Eisenberg 9/5 Tr.
96-100-04. Moreover, he has no knowledge of the number of pharmaceutical
trademarks that end with `TAN' or "ATAN." Id. at 74.
(3) Mr. Di Domizio
130. George Di Domizio, retired Chairman of the Merck Trademark
Committee, Di Domizio Tr. 8-11, offered the opinion on behalf of
Pharmacia that "[t]he name Travatan is similar to Xalatan," Def. Ex.
K(DX01418) (Di Domizio Decl., ¶ 14), that "[t]his name
similarity . . . leads me to conclude that medication errors between
the two products are likely to occur," Id.; 12/17 Tr., at
184-85 (DiDomizio), that health professionals do not recognize shared
terminal syllables as denoting treatment class similarity, Def. Ex. C
(DX00171) (DeSantis Decl. ¶¶ 14-16), and OPDRA'S recommended approval
of the Travatan name was "based on erroneous information," 12/17 Tr., at
188-89 (Di Domizio).
131. The Court did not find his testimony persuasive for the following
(a) Most of the time he testified about the
"possibility" of confusion, not the "likelihood" of
confusion, which is irrelevant to the governing legal
(b) He claimed no knowledge of the prevalence of
"TAN" or "AN" in the pharmaceutical market, even
though he knew that some suffixes are very common in
the industry. Di Domizio Tr., at 93-94.
(c) In his own practice, Mr. Di Domizio did not have
any hesitation about approving pharmaceuticals whose
trademarks used suffixes identical to those already in
use on other drugs. Id. at 116-24, 208-209.
(d) His assessment of the confusing similarity of the
two marks conflicts with the FDA's testing of the
Travatan mark. Di Domizio Tr., at 105.
(e) Although he worked on a ten-factor model (the
"1010 Model"), purportedly designed to analyze
trademarks for confusing similarity, Mr. Di Domizio
testified that he did not apply that model, or any
other model, in reaching his opinion in this matter.
12/17 Tr., at 216-17; Di Domizio Tr., at 31.
132. Mr. Di Domizio also testified that healthcare practitioners are
not trained to recognize similar suffixes in pharmaceutical brand names
as indicating that the drugs share a "relevant product category." Di
Domizio Reply Decl., ¶¶ 11, 14. This statement is not only
inconsistent with his admission that many pharmaceutical products in the
same class share common suffixes, even when those suffixes are not
suggestive of the product's attributes, Di Domizio Tr., at 208, but also
with other evidence demonstrating that healthcare professionals are
trained to make suffix class associations. Def. Ex. C (DX00171-72) (De
Santis Dec. ¶¶ 14-17).
133. Mr. Di Domizio was also of the opinion that the report of the
FDA's OPDRA department, Def. Ex. E (DX00344-48) (Krueger Decl., Ex. 3),
is "based on erroneous information," #12/17 Tr., at 188-89 (Di Domizio),
but other than the report itself, Mr. Di Domizio had no personal or
direct knowledge of any considerations that went into the OPDRA review of
the Travatan name and product. 12/17 Tr., at 191 (Di Domizio).
134. An acquaintance of Mr. Di Domizio, Dr. Neil Davis, published on
the eve of the hearing in this case, a list of potential "look-alike,"
"sound alike" names that included Xalatan and Travatan. 12/17 Tr., at
186, 206-07; PX 287 (Di Domizio). Mr. Di Domizio's own testimony
seriously devalues his opinions on this chart: he did not have "any idea"
how Travatan and Xalatan got onto the list. 12/17 Tr., at 207. He
acknowledged the names did not get on Dr. Davis's list through the U.S.
Pharmacopeia Institute for Safe Medication Practices medication error
reporting program (reporting the name), and that a single unknown
individual could have Xalatan and Travatan appear on the list simply by
suggesting their inclusion even if "they didn't look alike or sound
alike." Id. at 214-215. He couldn't rule out the possibility that the
lawsuit itself could have caused Dr. Davis or someone else to include the
name on his list. Id. at 208.
(4) Dr. Lambert's Statistical Model
135. Pharmacia relies on the opinions of Dr. Bruce Lambert, a
professor of pharmacy with degrees in speech communication, as the
proponent of a statistical model purportedly capable of predicting
likelihood of confusion between drug names by measuring the similarity in
spelling and pronunciation of pairs of drug names. Ph. Supp. Br., at
29-31; Def. Ex. K (DX01536-38) (Lambert Decl., ¶ 7).
136. For purposes of automated regulatory screening, Pharmacia claims
that Dr. Lambert's research regarding objective measures of similarity
between drug names has been relied on by the United States Adopted Names
Council and the Med-Errs Division of the Institute for Safe Medication
Practices. Lambert, 12/18/01 Tr., at 121:2-22; Lambert Decl., ¶¶ 1,
137. Dr. Lambert's research purportedly reveals that similarity in
drug names is highly predictive of the probability of confusion between
those drugs, and that such similarity can be used to distinguish between
confusing name pairs and pairs of names that are not confusing. Lambert
12/18/01 Tr., at 122:20 to 123:6; 129:15 to 132:8.
138. Dr. Lambert has evaluated a number of methods for measuring
similarities between drug names and has developed a statistical model to
analyze the degree of similarity between the Xalatan and Travatan names.
Lambert 12/18/01 Tr., at 123:7 to 125:8; 128:24 to 130:23; Lambert
Decl., Ex. 2 [PX-2]. Although Dr. Lambert's research may have some
theoretical value, his models are far too malleable for them to have any
reliable predictive value in real-world situations. Accordingly, for the
following reasons the Court will accord Dr. Lambert's conclusions little
weight in determining whether the names Xalatan and Travatan are
139. Based on his analyses employing mathematical modeling designed to
predict name confusion, Dr. Lambert concluded that the Xalatan and
Travatan names are substantially similar, and classified the pair as
likely to be involved in medication error based upon common attributes
with 1127 known error pairs. Lambert 12/18/01 Tr., at 122:11-19; 139:16
to 140:163; 141:21 to 142:6; 146:9 to 147:13; 149:3-24; 151:20 to 152:8;
Lambert Decl., ¶ 7, Ex. 2, at pp. 4-5 [PX-2].
140. Dr. Lambert posits that "the similarities between Xalatan and
Travatan are substantial, particularly when compared with those names
recently rejected by the FDA, suggesting a strong likelihood of
confusion." In addition, but not as a function of any statistical or
other empirical analysis, Dr. Lambert opines that "the products' non-name
attributes are nearly identical, again suggesting a strong likelihood of
confusion." Def. Ex. K (DX01537-38) (Lambert Decl., ¶¶ 7-8). These
opinions are entitled to little weight for the following reasons.
141. Dr. Lambert's initial declaration did not disclose that in a
pre-litigation publication, he described his method as having "poor
positive predictive value." Def. Ex. G (DX00577) (Bruce L. Lambert, et
al., "Similarity as a Risk Factor in Drug-Name Confusion Errors," 37
Medical Care 1214 at 1223 (1999)). In that publication, Dr. Lambert
described the very same methods and numerical assumptions he employed in
reaching his initial opinion in this case as having error rates that are
"too high" to be relied on "as the sole basis for regulatory decisions."
Id.; 12/18 Tr., at 193-194 (Lambert); Lambert Tr., at 225. He also
acknowledged at the hearing that whatever results his statistical method
produced, ultimately those results should be submitted to a "panel of
human experts" to make actual determinations as to the likelihood of
medication errors based on "other factors." 12/18 Tr., at 160-61, 193-95
142. The first step in Dr. Lambert's methodology was to calculate
spelling and pronunciation similarity scores between Travatan and Xalatan
using certain simple mathematical formulas. Def. Ex. K (DX01537-38)
(Lambert Decl., ¶¶ 7-8).
143. Although Dr. Lambert's methodology in computing similarity is not
in question, it was made apparent to the Court that his computations can
lead to spurious results. The limited real world
value of this analysis
was demonstrated at the hearing. Analyzing the words "Mexican" and
"American," Dr. Lambert reached scores either higher than (supposedly
more confusing) or identical to that of Travatan and Xalatan (and,
therefore, equally or more confusing). 12/18 Tr., at 179-83 (Lambert);
Def. Ex. PPP (DX04717A) (Mexican/ American Trigram-2b and Normalized Edit
Distance demonstrative chart). The scores obtained in this basic
exercise illustrated the abstract nature of his model and why it sheds no
light on the central legal issue: the extent to which two words are
likely to be confused in the real world.
144. The second step in Dr. Lambert's methodology was to compare the
similarity scores for Travatan and Xalatan to similarity scores derived
from two groups of branded drug name pairs. The first group consisted of
"Known Error Pairs," or "pairs of names that have appeared in published
lists of confusing drug names." Def. Ex. K (DX01556) (Lambert Decl., Ex.
2 at 4) (hereinafter "Lambert Report"); Id. (DX01537-38) (Lambert Decl.,
¶¶ 7-8). According to Dr. Lambert's initial declaration, there are
1,127 "Known Error Pairs." Id. (DX01556) (Lambert Report at 4); see
also id. (DX01437-43) (Di Domizio Decl., Ex. 3) (U.S. Pharmacopeia list
of branded drug name pairs).
145. The second group was an artificially created "control" group of
1,127 "Non-Error Pairs," or drug name pairs that have not appeared in
published lists of confusing drug names.*fn3 Adding the "Known Error
Pairs" to the "control" group of "Non-Error Pairs" results in a total
universe of 2,254 drug name pairs to which Dr. Lambert applied his
methodology. In his initial report, however, Dr. Lambert identified
235,152,141 names pairs as the universe of actual possible branded drug
name pairs in the real world. Id. (DX01556) (Lambert Report at 4).
146. Dr. Lambert claimed in his initial declaration that, in his
controlled universe of 2,254 names, he was able to use his method to
distinguish the Known Error Pairs from the Non-Error Pairs with "93%
accuracy." Id. (DX01559) (Lambert Report at 7). Compare id. (DX01576)
(Bruce L. Lambert et al., "Similarity as a Risk Factor in Drug-Name
Confusion Errors," 37 Medical Care 1214 at 1219 tbl. 2, 1223 (1999))
(Dr. Lambert admits that his model has a 6.3% rate of generating false
147. Dr. Lambert, however, did not compute how well his method would
work in the real world universe he identified as consisting of over
235,152,141 branded drug names. As was made clear by the testimony of
Professor George P. McCabe,*fn4 in that setting, Dr. Lambert's method
generates an error rate of over 99%. This is because his method's
"positive predictive value" — the likelihood that a name pair
predicted to be an error pair actually is an error pair — is
dictated by its "false positive rate" (here 6.3%) and by the
number of error pairs relative to non-error pairs in the total population
of name pairs (also known as "prevalence"). Because there are so many
more non-confusing name pairs (235,152,141-1,127) than confusing ones
(1,127), when the model's conceded 6.3% false positive rate is applied to
the 235,151,014 Non-Error Pairs, it incorrectly identifies over 14.8
million pairs (6.3% of 235,151,014) as being confusing. Because only
1,127 "error pairs" actually have been reported, that means the Lambert
method is incorrect more than 99% of the time.*fn5 12/19 Tr. 218-19
(McCabe); see also 12/18 Tr., at 165, 196 (Dr. Lambert concedes that the
99% number was calculated using the "right equation"). Stated
differently, out of the 14.8 million names pairs that the Lambert method
identifies as "Error Pairs," only about 1,127 actually were "Error
Pairs." The vast majority — 14,798,873 name pairs — were
mistakenly identified as "Error Pairs" by Dr. Lambert's model.
148. Simply put, as applied to the current issue, it is much more
likely (over 99% likely) that Dr. Lambert's model lumped Travatan and
Xalatan together with the over 14,798,873 other false positives, rather
than having accurately identified it as one of the roughly one thousand
true "Error Pairs." See 12/19 Tr. 210-18 (McCabe); Def. Ex. G
(DX00524-25) (McCabe Decl., ¶ 10); Def. Ex. SSS (DX05025) (Positive
Predictive Value Assuming 1,127 "Error Pairs" in a Universe of 235
Million Total Name Pairs Demonstrative); 12/20 Tr. 45-47 (McCabe).
149. When confronted with this analysis of his numbers and his work,
Dr. Lambert repudiated and changed the numbers he had provided in his
pre-litigation publications and initial declaration. See 12/18 Tr., at
167 (conceding that the 1,127 figure for known error pairs comes "from
one of my earlier papers"), 196-97 (same); 208 (numbers used in court not
submitted as part of Dr. Lambert's reply declaration).
150. At the hearing, Dr. Lambert refused to commit to what number
should be used in place of the number 1,127 for known or actual error
pairs, 12/18 Tr., at 168, but at varying times he suggested numbers
ranging from 1,250, to 794,000, to seven or eight million, all the way up
to 300 million error pairs. Lambert Tr., at 311-13, 394-95, 398; 12/18
Tr., at 174, 196, 200-07 (Lambert).*fn6
151. Dr. Lambert's inability to settle on a particular number (or even
range) not only creates great uncertainty, but undermines the statistical
foundation and reliability of his model. Dr. Lambert's model was built
using 1,127 non-randomly selected error pairs. The sensitivity (false
negative rate) and specificity (false positive rate) measures he
calculated are derived from the characteristics of these 1,127 "Known
Error Pairs." Because these 1,127 Known Error Pairs are not a random
sample, it is scientifically improper simply to assume that the
characteristics of those 1,127 (which form the basis for Dr. Lambert's
measures of specificity and sensitivity) necessarily apply to the much
larger universe of names. 12/20 Tr., at 44-47, 52-54 (McCabe). That
remains true whether that universe consists of seven to eight million
name pairs or the 300 million name pairs that Dr. Lambert initially
adopted during his deposition, but later recanted. In other words, the
reliability of Dr. Lambert's entire model is thrown open to question if
one assumes there are so many more error pairs than the 1,127
Known Error Pairs that form the basis of his statistical construct.
152. Even giving this model every benefit of the doubt (and assuming
the sensitivity and specificity of Dr. Lambert's model remains constant
notwithstanding a huge increase in error pair assumptions) it still has
too high an error rate. For example, if one arbitrarily increases the
number of "Known Error Pairs" to 10,000 (instead of 1,127), and
dramatically limits the universe of drug name pairs by assuming there are
only two million pairs of drug names (instead of 235 million), Dr.
Lambert's model would still be wrong more than 90% of the time, as
Professor McCabe demonstrated during his deposition. McCabe Tr. 70-74;
see also 12/19 Tr., at 225-29 (McCabe).
153. Dr. Lambert also abandoned his earlier use of 235 million as the
number of total name pairs of drug trademarks. 12/18 Tr., at 196-99.
Rather, he suggests a possible replacement figure of 87 million, Lambert
Tr., at 393-94, but could not explain why that number is more accurate
other than to say that the 235 million figure used in his peer-reviewed
publication is "inflated." 12/18 Tr., at 171-73.
154. Because Dr. Lambert was readily willing to change the numbers
that he used to support his model, and because his model's predictive
value turns entirely on initial assumptions about how many pairs should
be included in the model, Dr. Lambert's entire methodology is suspect.
In fact, it is no longer the same model that has been evaluated and
peer-reviewed. Compare, 12/18 Tr., at 125, 159, 219, 220 (pre-litigation
model evaluated in peer-reviewed journals), with id. at 230 (model used
to support Dr. Lambert's last declaration has not been published or
155. Alternatively, Dr. Lambert offered an opinion, not based on
specific numbers, that assumed that up to one in ten pairs of names is an
error pair (that is, that "prevalence" is somewhere between 0 and 10%).
He reached that assumption based on one study that concluded 8% of
prescriptions led to some type of a medication error (including
overdoses, missed doses, pill mix-ups, etc.). From that 8% figure, he
extrapolated and concluded that one out of about every ten name pairs is
an error pair. 12/18 Tr., at 175, 177, 200-04, 206-08 (Lambert). On its
face, this extrapolation compares apples to oranges and otherwise has no
scientific basis. 12/20 Tr., at 39-40, 44-45, 50-51, 70-71 (McCabe).
156. Even assuming 10% of name pairs are error pairs, however, the
positive predictive value of Dr. Lambert's model is only 62%. 12/19 Tr.,
at 223 (McCabe); 12/20 Tr., at 68-69 (McCabe). This means there is a
38%, or a more than one in three chance, that his model has incorrectly
identified Travatan and Xalatan as an error pair, even making all
possible assumptions in Dr. Lambert's favor.*fn7 12/19 Tr., at 223
157. The 10% figure, however, is not credible. By manipulating the
universe of drug name pairs and the universe of error pairs, Dr. Lambert
can theoretically achieve positive predictive values that are sufficient
to make his model appear valid. Ultimately, however, Dr. Lambert's model
lacks predictive value because Dr. Lambert is unable to substantiate any
numbers that he has used in the model. Even more troubling, it
appears to the Court that in order for Dr. Lambert's model to reach
sufficiently high predictive values, for the following reasons it must
make assumptions about the number of relevant pairs that are sufficiently
unbelievable so as to lack any credibility.
158. The lack of real world reliability of Dr. Lambert's model was
illustrated by the Court's question C1 to both parties' experts. The
Court noted first that, if there were 8,000,000 error pairs (the number
Dr. Lambert posited in order to reach a prevalence of 10%, given his
total universe of drug name pairs), mathematically, the minimum number of
drug names required to produce 8 million error pairs must be 4,000.*fn8
12/20 Tr., at 72-73 (McCabe). This minimum number, moreover, can be
achieved only if one assumes that each one of the 4,000 drug names is
confusingly similar to every other one of the other drug names in the
group — i.e., each of the 3,999 other names. Id. Further, the
total number of drug names, assuming 87 million pairs of names, is around
13,000. 12/20 Tr., at 77 (Lambert). This means that, in order to render
Dr. Lambert's model capable of making a prediction with even 62%
accuracy, his model condemns at a minimum almost one-third of all drug
names as confusingly similar to another drug name. Id. In the Court's
estimation, absent evidence to the contrary, such an assumption about the
real-world state of drug names is simply not credible.
159. Dr. Lambert responded to the issues raised by the Court by
testifying that his model nonetheless identifies Travatan as falling into
the one-third of all drug names that he believes to be similar to another
drug name, conceding that the only way to tell which of these one-third
of names is actually likely to cause errors is to analyze other factors
for which his model does not account. 12/20 Tr., at 75-77 (Lambert). Not
only does this expose the inability of Dr. Lambert's statistical model
(and methodology) to assist traditional trademark infringement analysis,
it vastly understates the problem. Four thousand is the bare minimum
number of names mathematically required to produce 8,000,000 unique pairs
of names. For that number to be the actual number, each one of the 4,000
names would have to be confusingly similar to every one of the other
3,999 names. As Professor McCabe explained, it is extremely unlikely
— in the real world — that there would be 4,000 names each
confusingly similar to every one of the 3,999 other names in that group.
Id. at 73 (McCabe) ("that's not real world"). In reality, because almost
all of the names will be confusingly similar to only one or at most
several other names, it would take significantly more than 4,000 names to
produce 8,000,000 error pairs. Id. at 72-73. This means that the "fix"
Dr. Lambert proposes for his model is even more at odds with reality than
the Court's conservative 4,000 name estimate suggests.
160. Furthermore, the "Known Error Pairs" Dr. Lambert has identified
from "published lists" include not only pairs of names that have resulted
in error, but also an undetermined number of pairs of names that various
authors subjectively determined looked or sounded alike without actually
having resulted in any errors. Lambert Tr., at 203, 205-06. Professor
Lambert could not tell from the lists he examined how many of the 1,127
"Known Error Pairs" actually had been confused
or resulted in errors, and
how many simply reflect someone's subjective view that two names might be
possibly confused. Id. As a result, that a pair of names fits Professor
Lambert's profile as a "Known Error Pair" is even less useful as a guide
to the actual chance of error: What Dr. Lambert has constructed is a
test that arguably might indicate the existence of some spelling
similarity between two names, but his methodology is not a reliable
predictor of actual medical substitution, let alone trademark confusion.
161. Dr. Lambert's other opinion, that there is a 99% chance that the
Travatan name was not selected by chance, 12/18 Tr. 184, is entitled to
no weight at all. It is not informed by any analysis of or investigation
into the facts and circumstances under which the Travatan name was
selected, is not the subject of any peer review or analysis of its actual
and potential error rate, cannot be independently verified, and is not
probative of the ultimate issue that it seems to try to prove — that
the Travatan name was intentionally picked to cause confusion as to the
source of the Xalatan product. Id. at 184-86.
(5) The McCullough Survey
162. With respect to the application for a preliminary injunction on
its claim that the Travatan mark dilutes the Xalatan mark, Pharmacia
relies on the survey conducted by Walter McCullough. The survey did not
test for trademark confusion. McCullough Tr., at 28. According to
Pharmacia, McCullough's survey demonstrated a 14% dilution of the Xalatan
mark. Because the following mechanical and conceptual problems with the
survey limit its value, however, the Court finds that the true level of
dilution of the Xalatan mark was even less than the 14% proposed by
163. McCullough's survey contained a test cell and a control cell. In
the test cell, 199 ophthalmologists were shown a box of Travatan and
asked what other "products," if any, were brought to mind. Def. Ex. K
(DX01593-94) (McCullough Report at 5, 6). In the control cell, 112
ophthalmologists were shown a box of Lumigan, a competing drug marketed by
Allergan, Inc., and asked the same questions. Id. (DX01594) (McCullough
Report at 6).*fn9
164. If a test cell respondent answered Xalatan, they were asked four
times to specify "why" Xalatan came to mind. Id. (DX01593) (McCullough
Report at 5).
165. Any answers that indicated "name similarity" in the test cell
— including several that appeared to be referring to similarity of
the generic names — were coded as dilution responses. Id. at 6.
166. After netting out the dilution or "noise" results of the control
cell, Mr. McCullough opined that 15% of respondents thought Travatan
brought Xalatan to mind because of similarities in the trade names, Def.
Ex. K (DX01594) (McCullough Report at 6); 12/19 Tr., at 29-30
(McCullough); McCullough Tr., at 134.
167. At the hearing in this case, Mr. McCullough admitted to having
miscoded at least one response. 12/19 Tr., at 7-8, 26-27; McCullough
Tr., at 292-93. Simply by omitting that one, concededly wrongly coded
response, the dilution percentage dropped to, at best, 14%. 12/19
Tr., at 7-8 (McCullough); see also Def. Ex. K (DX01595-1639)
(McCullough Report at Ex. A (36 minus 1 "dilution" responses of 199 in test
cell (17.6%) and 4 of 112 "dilution" responses (3.6%) in control cell).
168. Even the 14% figure advanced by Pharmacia is suspect, as the
survey conducted by Mr. McCullough contained numerous flaws and
limitations that affected the reliability of his results. First, Mr.
McCullough did not survey a sample of the entire universe of consumers of
glaucoma medications; he surveyed ophthalmologists only, despite that
optometrists in all but three states nationwide prescribe glaucoma
medications. McCullough Tr., at 23-26. In its internal marketing
studies, on the other hand, Pharmacia surveys optometrists, Def. Ex. U
(DX02213) ("Xalatan Hot Issues"); Def. Ex. GG (DX02586) ("Xalatan Product
Information" excerpt), and Pharmacia budgeted over $500,000 in the year
2001 alone for marketing directly to optometrists. Def. Ex. U (DX02289)
(Xalatan U.S. Product Plan 2001).
169. Second, having already limited the value of the survey by
sampling only the universe of ophthalmologists, Mr. McCullough further
undercut the value of his survey by failing to take any steps to ensure
that the sample drawn from this universe was even representative of the
marketplace of ophthalmologists. He did nothing to screen for
respondents' years of experience or the size of their practices,
McCullough Tr., at 87, a flaw Pharmacia itself characterized as the
antithesis of good market research practices. Gurreri Tr., at 219.
170. Even assuming away these problems, there are other mechanical
flaws in the survey that cause the purported 14% dilution level to be
171. The hearing highlighted two specific mechanical problems with
Mr. McCullough's survey. First, Mr. McCullough did not apply the same
standard in coding the test and control cells. In the control cell, Mr.
McCullough did not code the following as a dilution answer: "because
it's in a similar class of product, it has similar endings." Def. Ex. JJ
(DX03007-13) ("Doctor 393"); 12/19 Tr., at 67. In the test cell,
however, at least three substantively identical answers were coded as
dilution. 12/19 Tr., at 66-69, 71, 74, 76 (McCullough). Compare Def.
Ex. JJ (DX 03023-29) ("Doctor 193") ("Because first, it is in the same
class of drugs. The name itself is reminiscent."); 12/19 Tr., at 69-72;
Def. Ex. JJ (DX02893-99) ("Doctor 282") ("The endings [sic] the same;
same medication; same type drug" and "same type medication in same
family"); 12/19 Tr., at 72-75; Def. Ex. JJ (DX02933-39) ("Doctor 348")
("Similar product" and "Similar name. Does the same thing. Both
medications work almost the same."); 12/19 Tr., at 75-76. This
inconsistent coding has the effect of exaggerating the net level of
reported dilution. Mr. McCullough admitted that if he "changed the
coding of these responses [he] could do something which would drive the
dilution level down." 12/19 Tr., at 75. In fact, when the three test
cell responses are recoded as non-dilution answers so that they are
consistent with Mr. McCullough's coding of the nearly identical control
cell response, the net dilution level falls to 12.5%. See Appendix A
(chart setting forth dilution shown by the McCullough Survey after
accounting for flawed responses).
172. The second problem that undermines the reliability of Mr.
McCullough's 14% figure is that it depends upon the inclusion of a set of
responses obtained by one interviewer (Susan Boyd) in Los Angeles,
California, under suspect circumstances. These responses stand out from
those obtained by the rest of the 55 interviewers nationwide in the
(a) Ms. Boyd was one of only two interviewers
nationwide to learn of the lawsuit during her work.
McCullough Tr., at 223-24.
(b) She was her own supervisor in the field. 12/19
Tr., at 50 (McCullough); McCullough Tr., at 247.
(c) She did more interviews on her own than Mr.
McCullough "would have liked her to do," 12/19 Tr.,
at 51 (McCullough), and more than any other
interviewer nationwide. Id. at 53-54.
(d) She alone was responsible for 9, or 25%, of the
answers coded as dilution. Id. at 54; McCullough Tr.,
(e) Half of the test cell interviews she conducted
were coded as dilution responses, a "success" rate
greater than any other interviewer nationwide. 12/19
Tr., at 54 (McCullough); McCullough Tr., at 240.
(f) She obtained 7 out of the 10 most "unusually
detailed" answers recorded nationally in the test and
control cells — answers in which a respondent
purportedly said that either "TAN," "ATAN" or the
"last 3 letters" were the reason for the association.
McCullough Tr., at 329-31; Def. Ex. JJ (DX02900-07,
DX02998-3005) (McCullough Dep. Ex. 29, 42); 12/19
Tr., at 55-61, 66 (McCullough); McCullough Tr., at
(g) Two of Ms. Boyd's other interviews included the
unusually specific (and curious) phrase "puts me in
mind of," a phrase that does not appear in any other
questionnaire. 12/19 Tr., at 62-65 (McCullough).
173. Mr. McCullough has testified that it would be appropriate to
"toss" interviews if they are suspicious. Id. at 48-49; McCullough Tr.,
at 168-69; see also Diamond Tr., at 121 (if an interviewer becomes aware
of the purpose of the survey, it is necessary to evaluate whether that
person "was more or less likely to produce confusion responses").
Eliminating the Boyd interviews as anomalous or, at best, unexplained,
drops the net dilution rate from 14% to 11.5%. See Appendix A to Alcon's
Post-Hearing Proposed Findings of Fact and Conclusions of Law. When
combined with the recoding of the three miscoded test cell responses, the
dilution level is reduced even further, to 10.4%. Id.
174. Pharmacia has defended Ms. Boyd's work by contending that the Los
Angeles market itself is anomalous. See, e.g., McCullough Tr. 275-78;
12/19 Tr. 19, 61, 66; 12/20 Tr. 150-51 (Diamond). Other than that, it
offers no explanation for why this market produced such an unusually
large percentage — nearly 25% — of all dilution answers.
12/19 Tr. 57, 61, 65-66 (McCullough); McCullough Tr. 341-42. If the Los
Angeles interviews are eliminated because of this unexplained anomaly,
then, with the three recoded test cell responses discussed above, see
supra Findings ¶ 219, the dilution level drops to 9.8%. See
Appendix A to Alcon's Post-Hearing Proposed Findings of Fact and
Conclusions of Law.
175. In light of this finding that the dilution level is 9.8% the
Court declines to further evaluate the McCullough survey to determine
whether or not it is so conceptually flawed that it would justify
Alcon's position that the cumulative net dilution should be further
reduced to 5.9%. Alcon's objection to the questions in McCullough's
survey asking what other "products" rather than what names or brands come
to mind appear to be the kinds of questions appropriate in survey
evidence to show actual dilution. See Patrick M. Bible, Defining and
Quantifying Dilution Under The Federal Trademark Dilution Act of 1995:
Using Survey Evidence To Show Actual Dilution, 70 U. Col. L. Rev. 295
(6) The Diamond Survey
176. Alcon produced evidence in the form of a survey of the relevant
that the marketplace is not confused. A well-designed survey
of ophthalmologists and optometrists conducted by Prof. Shari Seidman
Diamond shows a net confusion rate of 1.5%. Def. Ex. D (DX00239-40,
DX00246-47, DX00250) (Diamond Decl., ¶¶ 6, 26, 30) (there is "no
evidence that the name of Alcon's product Travatan is likely to cause
confusion with the name of Pharmacia's product Xalatan in the relevant
population," i.e., ophthalmologists and optometrists) Dr. Diamond also
testified at the evidentiary hearing. The Court found her to be a very
177. Professor Diamond is a professor of law and psychology at
Northwestern University School of Law and a senior research fellow at the
American Bar Foundation. She is the author of the Reference Guide to
Survey Research contained in the Federal Judicial Center's Reference
Guide on Scientific Evidence (1994, 2000), as well as a similar chapter
in West Publishing's four volume treatise, Modern Scientific Evidence
(1997, 2000), and several other well-respected articles in the field.
12/20 Tr., at 83-84 (Diamond); Def. Ex. D (DX00238-39) (Diamond Decl.,
¶¶ 1-3); id. (DX00251-64) (Shari S. Diamond)
178. Professor Diamond chose to survey a nationwide population of
ophthalmologists and optometrists because they are the market gatekeepers
with respect to the prescription glaucoma medications at issue in this
case. 12/20 Tr., at 85-86, 114-15 (Diamond). Ophthalmologists and
optometrists thus make the ultimate determination as to which medications
pharmacists will dispense and end-users — patients — will
receive. Id.; see also McCullough Tr., at 25-26. Pharmacia's survey
expert, Mr. Walter McCullough, also chose to survey ophthalmologists,
McCullough Tr., at 23-26, and Pharmacia routinely surveys only doctors,
not pharmacists or patients, in its internal marketing research. Gurreri
Tr., at 70, 72, 74-75, 120-21, 201, 218-19, 227-28, 235, 241-42, 277-78,
179. In order to ensure that the population surveyed was
representative of glaucoma prescribers, Professor Diamond considered
several lists of doctors from which to draw interviewees, including the
membership list for the American Ophthalmology Association. Professor
Diamond ultimately used a list assembled by the National Data Center
because it is widely used for research purposes within the pharmaceutical
industry and because it provided enough information about potential
respondents' practice size and years of experience to allow for a
stratified random sample. 12/20 Tr., at 86-87 (Diamond).
180. Because doctors are a particularly busy population of potential
respondents, id. at 86, Professor Diamond arranged for each one to
receive an advance letter, as well as follow-up phone calls, to schedule
interviews at a convenient time. Id. at 88.
181. The Diamond Survey tested for product source confusion. It asked
a series of questions based on a stimulus that was mailed to respondents
in a sealed envelope. Def. Ex. D (DX00243) (Diamond Decl., ¶ 16);
12/20 Tr., at 84, 88-89 (Diamond). There were two cells in the survey:
(1) a test cell of 200 prescribers that used a Travatan advertisement as
the stimulus; and (2) a control cell, also of 200 prescribers, that used
an identical Lumigan advertisement as the stimulus. Def. Ex. D (DX00243)
(Diamond Decl., ¶ 16); 12/20 Tr., at 89 (Diamond). The stimulus was
designed to focus the respondent's attention primarily on the name of the
product. 12/20 Tr., at 89-91 (Diamond).
182. The questions that Professor Diamond selected for the survey
("What company do you believe puts out the product whose advertisement
you just saw?;"
"Please tell me whether or not you believe the company
whose advertisement you just saw puts out any other medications for the
eye;" and "Please tell me whether or not you believe that the company
whose advertisement you just saw needs authorization, permission or
approval from some other company in order to put out the product
advertised."), id. at 100-02 (Diamond); Def. Ex D (DX00278-85) (sample
questionnaire), are a standard type and format of questions used to gauge
confusion in trademark cases. 12/19 Tr., at 91-94 (McCullough).
Pharmacia's survey expert, Walter McCullough, used virtually identical
questions in a trademark confusion survey he designed in a prior
infringement case. Def. Ex. LL (DX 03216-85) (Declaration of Walter
McCullough in Westchester Media Co. v. PRL USA Holdings, Inc.); see also
12/19 Tr., at 96-97 (McCullough).
183. Five percent of the test cell respondents confused the source of
Xalatan and Travatan and 3.5% of control cell respondents confused the
source of Xalatan and Lumigan, yielding net confusion of 1.5%. 12/20
Tr., at 108-09 (Diamond); Def. Ex. D (DX00239-40) (Diamond Decl., ¶
184. Professor Diamond selected the survey firm D.S. Howard &
Associates ("D.S. Howard") to conduct the survey because it specializes
in medical surveys and medical marketing research, fields surveys for
pharmaceutical companies for approximately 60% of its work and is staffed
by surveyors with an academic background and a reputation for attention
to detail. 12/20 Tr., at 91-92 (Diamond).
185. D.S. Howard took numerous measures to ensure that respondents did
not view the stimulus prior to the interview. First, during the screening
interview, respondents were explicitly instructed not to open the survey
materials until they were contacted for the interview. Corrigan Tr., at
111; 12/20 Tr., at 89 (Diamond). Second, the materials were sent to
respondents in a sealed envelope, with a sticker reminding respondents
not to open the envelope before the interview. Id.; Diamond Tr., at 43,
46. Finally, interviewers were specifically instructed to report any
indication that respondents had previously opened the envelope to Karen
Corrigan, who carefully supervised the interview process. Ms. Corrigan
credibly testified that she specifically received numerous reports from
the interviewers that they could hear the respondents opening the
envelopes. She also listened to tapes of the interviews (as did the
court), which confirmed that respondents did not view the stimulus prior
to the interview. Corrigan Tr., at 112-13; Diamond Tr., at 43-44.*fn10
Moreover, none of the doctors volunteered any statement that would even
lead to suspicion that they had opened the stimulus ahead of time. 12/20
Tr., at 110 (Diamond).
186. Interviewers were instructed to record absolute and accurate
verbatim responses and capture every word and sound uttered by
respondents, including the "humms" and "ahhs," even if doing so meant
simultaneously transcribing the responses
in less than perfect
penmanship. 12/20 Tr., at 93-94 (Diamond); Diamond Tr., at 94; Corrigan
Tr., at 92. In order to record some of the lengthier responses,
interviewers quickly recorded verbatim all of the statements of doctors
in ways that ensured they did not miss anything. Immediately following
the interview, they transcribed those responses, when necessary, in a
more legible fashion on a replacement or additional page. 12/20 Tr., at
96, 124-25 (Diamond); Diamond Tr., at 94; Corrigan Tr. 95-96.
187. A review of all the questionnaires, as well as monitoring reports
and tapes of the interviews, confirms that the responses were recorded
accurately and completely. 12/20 Tr. 96-97 (Diamond); Corrigan Tr. 99;
Def. Ex. VV (DX03888-4110) (transcripts of taped interviews and
accompanying recordings); Def. Ex. AAAA (SD0001-4601) (complete set of
Diamond Survey verbatims). There are no paraphrases, gaps or any other
indications that they do not represent what the respondents actually
said. Corrigan Tr., at 90, 99-100. The raw data collected for this
survey, in the form of the verbatim responses of doctors, was preserved
and was made available to Pharmacia and the Court for review. Diamond
Tr., at 17, 20, 97; Corrigan Tr., at 11, 98.
188. After deposing Prof. Diamond, Pharmacia also deposed Ms.
Corrigan. She testified at length regarding the steps she personally
took to ensure that Prof. Diamond's admonition, to capture all comments
made by the respondents to the substantive questions in the survey, was
followed. For example, Ms. Corrigan prepared a separate interviewer
training manual for the Diamond Survey, which included the explicit
instruction that interviewers record each doctor's comments verbatim.
Corrigan Tr., at 22-24. Ms. Corrigan personally trained the
interviewers, during which time she emphasized to the interviewers that
their "primary task" was to record every verbatim comment made by the
doctors accurately and completely. She also conducted mock interviews in
which she herself acted as respondent. Id. at 79, 92, 95. Finally, Ms.
Corrigan carefully reviewed each questionnaire, as well as the monitoring
reports and tapes. She concluded that the verbatim recording completed
for this survey was "exceptionally accurate." Id. at 100.
189. Pharmacia has accused Professor Diamond and Ms. Corrigan of
failing to control for the respondents' exposure to the stimuli and
destroying evidence. McCullough Reply Decl., ¶ 9; 12/19 Tr., at
77-78 (McCullough); 12/20 Tr., at 110, 121 (Diamond). The Court finds the
accusation to be without merit.
190. Walter McCullough, who leveled the charges on behalf of
Pharmacia, testified that one of the reasons that the Diamond survey was
entitled to no weight was the lack of stimuli control. 12/19 Tr., at 78
(McCullough). By that he meant that respondents in the Diamond survey had
opened up the envelope they were sent that contained the test stimulus
ahead of time. Id. He had no evidence that happened but assumed it had
"based on good research practice I think." Id. The court finds from its
listening of the tapes that the respondents did not view the stimulus
prior to the interview. See Dx. Ex. VV; W
191. McCullough admitted that he had no factual basis to support his
"assumption" that respondents "could have" opened the stimulus envelopes
ahead of time, 12/19 Tr., at 78 (McCullough), never listened to any of the
taped interviews to verify their accuracy, id. at 78-79, reviewed
only 10-20 (out of 400) verbatims, id. at 80, and did not see any
indicating any concern that the envelopes were opened. Id. at 79.
192. Similarly, Mr. McCullough has no evidence that any of the
verbatim transcriptions are anything but the complete contemporaneous
recordings of Professor Diamond's interviews. Id. at 80, 86-87. To the
contrary, the evidence on record clearly demonstrates that Professor
Diamond and Ms. Corrigan made concerted efforts, above and beyond that
found in many other surveys, to ensure that the verbatim recording of
each response was absolutely complete and accurate. 12/20 Tr., at 96-97
(Diamond); see also 12/19 Tr., at 94-95 (Mr. McCullough admitting that
his choice of words in criticizing Professor Diamond may have been "too
193. Indeed, the ophthalmologists and optometrists surveyed proved to
be so verbose that without the precautions taken by Ms. Corrigan and
Professor Diamond, they would likely have missed parts of the
interviewees' substantive responses. 12/10 Tr., at 96, 103, 105-106,
135-137, 147 (Diamond); Corrigan Tr., at 98-99.
194. The extensive verbatim responses demonstrate that
ophthalmologists and optometrists are highly sophisticated and can readily
distinguish Travatan and Xalatan. Def. Ex. II (DX02602) (Diamond Survey
test cell response 8746) (identifying Alcon as company that puts out
Travatan by "process of elimination" because "Pharmacia makes
Xalatan."); id. (DX02609) (test cell response 8736) (same); id. (DX02616)
(test cell response 22903) ("I know, I prescribe [Travatan]. I know about
it. I use it in place of Xalatan."); id. (DX02626) (control cell
response 171) ("[P]rostaglandins have been popular like with Travatan and
Xalatan lately. Those are two prostaglandins."); id. (DX02630) (control
cell response 402) ("Xalatan is made by Pharmacia there are two on the
market, another one on the market, Travatan."); id. (DX02637) (control
cell response 8669) ("I know Alcon is Travatan and Xalatan's a
competitor, it's Pharmacia.").
195. Mr. McCullough's other expressed concern about Professor
Diamond's survey — that it is likely that doctors were exposed to
information (such as an Internet website) during the interview allowing
them to associate Travatan with Alcon, 12/19 Tr., at 85, 89 (McCullough)
— has no basis in fact. Id. at 89-90. Moreover, the Diamond Survey
verbatims often make it clear that the doctors were speaking from
memory. 12/20 Tr., at 109-110 (Diamond). Many doctors made statements to
the interviewers that confirm they were opening the materials for the
first time during the interview. Corrigan Tr., at 112-13; Diamond Tr.,
at 43-44; see also supra, Findings ¶ 146 n. 21. In the one
instance, where a doctor apparently was looking at a pre-printed
prescription pad, Professor Diamond removed the verbatim from
consideration. 12/20 Tr., at 110 (Diamond).
196. Because physicians and pharmacists are a sophisticated population
in their area of expertise the differences between the Xalatan and
Travatan, their presentation and the products themselves are more
significant than any partial similarities.
X. THE RELATIVE RISKS OF TRAVATAN AND XALATAN
197. There is no evidence in this record to conclude that either
Xalatan or Travatan is more or less of a risk to pregnancy. Pharmacia
asks the court to find that there are potential risks to pregnant
patients and pregnant caretakers who use or handle Travatan, believing it
to be Xalatan, relying on Eisenberg Reply Decl., at § 21 (PX-11).
Pharmacia argues in support of its argument that Travatan has risks that
Xalatan doesn't by noting that
the FDA approved label (package insert)
for Travatan solution displays a significant precaution that women who
are pregnant or trying to become pregnant should not use the solution,
and should even "avoid direct exposure to the contents of the bottle."
See Harfstrand 12/17/01 Ex.(PX-1). However, Pharmacia notes, that no such
precaution is included on the potential risks to pregnant patients and
pregnant caretakers who use or handle Travatan believing it to be
Xalatan. Eisenberg Reply Decl., at § 21 (PX-11). In addition
Pharmacia points to the package insert for Travatan which indicates
significantly higher hyperemia (red eye) rates than Xalatan — a
problem that can lead to noncompliance and potential detrimental effects.
The court rejects Pharmacia's proposed finding because:
(a) The testimony of record is that Alcon voluntarily
included a clearer pregnancy warning on its package
insert, not that it was required to do so.
(b) Pharmacia uses similar language in other countries.
(c) As opposed to Pharmacia's experts' speculation,
Pharmacia has no empirical evidence or other data to
suggest the products pose different risks to
(d) Both drugs are FDA Pregnancy Category C and have
been approved as safe and effective by the FDA.
XI. COMPARATIVE EFFICACY OF XALATAN AND TRAVATAN
198. There is some small medical advantage of Travatan over Xalatan,
particularly for African Americans.
199. There is at least one known study published in a recognized
ophthalmological journal evaluating the safety and IOP — lowering
efficacy of two concentrations of travoprost (0.0015% and 0.004%)
compared with latanoprost 0.005% and timolol 0.5% in patients with
open-angle glaucoma or ocular hypertension. Netland, et al., "Travoprost
Compared With Latanoprost and Timolol in Patients With Open-angle
Glaucoma or Ocular Hypertension," 132 Am. J. Ophthalmology 472, 478
(2001) (Eisenberg Reply Decl.,, Ex. 2). The study reported a response
(i.e., there was a 30% or more reduction in IOP) rate of 54.7% to
travoprost .004%, 49.3% to travoprost .0015% and 49.6% to latanoprost.
XII. IRREPARABLE HARM TO ALCON
200. Pharmacia has contended that when it first objected to Alcon's
mark on February 7, 2001, five weeks before Alcon received FDA approval
for Travatan, Alcon should have changed the name of its product. By that
time, such a course was neither commercially feasible, nor reasonable
given Pharmacia's lengthy period of inaction.
201. The need to obtain both FDA and PTO approval (as well as the
approvals of health and trademark regulators worldwide) for a new name
would have resulted in the product being off-market for months while
those approvals were being obtained. Def. Ex. B (DX00024) (Barton
Decl., ¶ 25); 12/17 Tr., at 173 (Barton); 12/19 Tr., at 187-88
202. The Court rejects the opinion of Pharmacia's expert, Mr. George
Di Domizio, that "it's never too late to change a trademark," 12/17
Tr., at 196 (Di Domizio), and that a new mark could be approved in as
little as 30-60 days. Id. at 198-99. That opinion is contradicted by Mr.
Di Domizio's own testimony and other facts.
203. Mr. Di Domizio's testimony about the amount of time that the FDA
takes to approve a new name for a pharmaceutical product was inconclusive
at best. Although he initially testified that a new
name could be
approved "in a week or two," id. at 199 (Di Domizio), he conceded at the
hearing that the approval process is "situational" and could take "over a
year" or longer. Id. at. 203-05. Mr. DiDomizio gave inconsistent answers
when asked how many actual pharmaceutical products he had handled where
the FDA had approved a new name in the time frame he had suggested was
possible for Travatan. See id. at 199 (two such products), 200 (one such
product), 201 (two such products), 202 (three or four such products).
Moreover, these incidents involved name pairs that were not only far more
similar than Travatan and Xalatan, but also, as Mr. DiDomizio conceded,
were identified as confusing by the FDA itself. Id. at 202.
204. Pharmacia's own experience with the launch of its
still-unapproved glaucoma latanoprost-timolol combination product shows
that the process of selecting a new name for a prescription drug product
is time consuming, particularly when, as is true of both parties here,
the name is intended to be used on a worldwide basis.
205. Nor would it have been a reasonable business alternative for
Alcon to market Travatan under its generic name. Not only would Alcon
incur substantial costs in educating the medical community about the name
change, but none of that investment would ever translate into goodwill,
because no company can claim exclusive rights in a generic name. Di
Domizio Tr., at 230, 234-35. As Pharmacia's own expert put it, it is not
realistic to expect a company to "gamble away all future brand equity"
by marketing its product under its generic name. Di Domizio Reply
Decl., Ex. 4.
CONCLUSIONS OF LAW
I. Jurisdiction and Venue
1. Pharmacia's claims against Alcon are for unfair competition,
including trademark infringement under the Lanham Act,
15 U.S.C. § 1114(a), false designation of origin and false
representation under Section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a), violation of the federal dilution law, §
1125(c), and for violation of state unfair competition and anti-dilution
laws under the common law and N.J. Stat. § 56:3-13.20.
2. This Court has subject matter jurisdiction under
15 U.S.C. § 1121(a) and 28 U.S.C. § 1331, 1367 and 1338. This
Court has supplemental subject matter jurisdiction over all other claims
under 28 U.S.C. § 1367(a).
3. A substantial portion of the events giving rise to plaintiffs'
claims and Alcon's defenses occurred in this District. Venue is proper,
therefore, in this District. 28 U.S.C. § 1391(b).
II. The Preliminary Injunction Standard
4. Preliminary injunctive relief is an extraordinary and drastic remedy
that should not be granted unless the party seeking the injunction can,
upon a clear showing, demonstrate: (1) that there is a likelihood of
eventual success on the merits; (2) that there is a probability of
irreparable injury if relief is not granted; (3) that the non-moving
party will not suffer irreparable harm if the preliminary injunction is
issued; and (4) that preliminary injunctive relief is in the public
interest. Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC,
212 F.3d 157, 160 (3d Cir. 2000), cert. den'd, 531 U.S. 1071 (2001).
III. Likelihood of Success On The Merits
5. To satisfy its burden on the merits, Pharmacia must prove that
confusion from Alcon's use of Travatan is likely
or probable among
consumers. Checkpoint Sys., Inc. v. Check Point Software Tech., Inc.,
269 F.3d 270
, 279-80 (3d Cir. 2001); Versa Prods. Co. v. Bifold Co.,
50 F.3d 189
, 200 (3d Cir.), cert. den'd, 516 U.S. 808 (1995). Pharmacia
has failed to meet its burden of proof.
6. In A&H Sportswear Inc. v. Victoria's Secret Stores, Inc.,
166 F.3d 197, 205-06 (3d Cir. 1999) (en banc) (Victoria's Secret I), the
Third Circuit unanimously adopted a uniform "likelihood of confusion"
standard for all trademark infringement cases. Therefore the Court
rejects Pharmacia's argument that the Court should apply the "possibility
of confusion" standard in cases involving prescription drugs. It is this
Court's conclusion that Morgenstern Chemical Co. v. G.D. Searle & Co.,
253 F.2d 390, 394 (3d Cir. 1958), is no longer good law in this Circuit
for the following reasons. First, as the Third Circuit noted,
"`likelihood of confusion' is the language used in the Lanham Act."
Victoria's Secret I, 166 F.3d at 205. There is no basis in the Lanham
Act to draw any distinction in the substantive standard based on the
nature of the products at issue. Second, the Third Circuit cited
favorably and relied upon numerous decisions, from this Circuit and
elsewhere, applying the "likelihood of confusion" standard in trademark
cases involving pharmaceutical and other medical products. See id. at
205-06, 211 citing, Barre-National, Inc. v. Barr Laboratories, Inc.,
773 F. Supp. 735 (D.N.J. 1991); Vitek Sys. Inc. v. Abbott Labs.,
675 F.2d 190, 192 (8th Cir. 1992) (involving medical equipment) G.D.
Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385 (7th Cir. 1959)
(drugs); U.S. Surgical Corp. v. Orris, Inc., 5 F. Supp.2d 1201, 1209
(D.Kan. 1998) (rejecting "possibility of confusion" in case involving
surgical products), aff'd, 185 F.3d 885 (Fed. Cir. 1999); see also
Reedco, Inc. v. Hoffman-La Roche, Inc., 667 F. Supp. 1072, 1080 (D.N.J.
1987) (refusing to apply Morgenstern even before Victoria's Secret).*fn11
Third, Morgenstern was not a federal trademark case but a diversity
action based on New Jersey common law. The only New Jersey case that the
court relied on was Rubber & Celluloid Harness T. Co. v. Rubber-Bound
Brush Co.,88 A. 1913, 81 N.J. Eq. 419 (N.J. Ch. 1913), which is not a
trademark case, or one dealing with medical products, but a passing off
case involving brushes. Its vitality on the issue of whether a likelihood
of confusion standard or a possibility of confusion applies to trademarks
of medical products would appear to be negligible. This is particularly
so in light of the provision in N.J.S.A. 56:3-13a that federal law
trademark law is persuasive authority for the interpretation and
construction of New Jersey's trademark act.
7. Pharmacia has not proved that there is a likelihood of confusion
between Alcon's use of the Travatan mark and Pharmacia's use of the
Xalatan mark. In determining whether confusion is likely, the following
non-exclusive list of factors are relevant: (1) the degree of similarity
between the marks; (2) the strength of the owner's mark; (3) the price of
(4) the length of time the defendant has used the mark without
evidence of actual confusion; (5) the intent of the defendant; (6) the
evidence of actual confusion; (7) whether the goods are marketed through
the same channels of trade; (8) the similarity of the sales targets; (9)
the relationship of the goods in the mind of consumers; and (10) other
facts suggesting that consumers might expect the prior owner to
manufacture both products. A&H Sportswear, Inc. v. Victoria's Secret
Stores, Inc., 237 F.3d 198
, 215 (3d Cir. 2000) (Victoria's Secret II).
Not all the factors need be considered if some are dispositive.
Checkpoint Sys., 269 F.3d at 280. Moreover, the weight to be given any
particular factor is a fact-sensitive determination left to the discretion
of the trier of fact. Id.
8. Pharmacia has not proved that there is a likelihood of confusion
between Alcon's use of the Travatan mark and Pharmacia's use of the
9. Here, at least five factors — the length of time of
concurrent use without confusion, the sophistication of the market, the
channels of trade, Alcon's good faith in adopting the mark and the
dissimilarities in the dominant features of the marks —
dispositively weigh in Alcon's favor and indicate that confusion is not
a. The Absence Of Confusion In The Marketplace
10. Both Travatan and Xalatan have coexisted for over nine months.
Thousands of prescriptions for each have been written and filled.
Thousands of "detailing" visits have been made during this time period by
representatives of both companies. Despite this, and despite the
existence of voluntary and mandatory reporting systems that catalogue
mix-ups between prescription products, there is no evidence in the record
of any confusion. Although evidence of actual confusion is not necessary
to prove likelihood of confusion, Ford Motor Co. v. Summit Motor
Products, Inc., 930 F.2d 277, 292 (3d Cir. 1991), such concurrent use for
a substantial period of time with no confusion may create a "presumption
that there is little likelihood of confusion," and weighs heavily against
a finding of likely confusion. Barre-National, 773 F. Supp. at 744; see
also, Pignons S.A. de Mecanique de Precision v. Polaroid Corp.,
657 F.2d 482 (1st Cir. 1981); Aktiebolaget Electrolux v. Armatron Int'l,
Inc., 999 F.2d 1 (1st Cir. 1993) ("absence of actual confusion, or a
negligible amount of it, between two products after a long period of
coexistence on the market is highly probative in showing that likelihood
of confusion exists"); Gruner & Jahr USA Public. v. Meredith Corp.,
793 F. Supp. 1222, 1232-33 (S.D.N.Y. 1992) (where both parties products
have been on the market for six months, "we find that the absence of
evidence of actual confusion weighs heavily against a finding of
likelihood of confusion"), aff'd, 991 F.2d 1072 (2d Cir. 1993); Mars,
Inc. v. H.P. Mayer Corp., 1988 WL 86314, *2 (D.N.J. Aug. 17, 1988)
(finding that where "defendants have been distributing [the product in
question] for approximately six months without any evidence of actual
confusion occurring, that there is little to no likelihood" of
11. The FDA's approval of the Travatan mark, which is based on its own
pre-approval testing for confusing similarity, is entitled to some
deference. See Zeneca Inc. v. Eli Lilly & Co., 1999 WL 509471, at *34
(S.D.N.Y. July 19, 1999) ("as a recognized expert in evaluating data from
clinical trials, the FDA's conclusion . . . is persuasive evidence" in
assessing Lanham Act claims); Rhone-Poulenc Rorer Pharms., Inc. v. Marion
Merrell Dow, Inc., No. 93-0144-CV-W-1, 1994 U.S. Dist. LEXIS 20782, at
*13 (W.D.Mo. Sept. 30, 1994)
("[In a Lanham Act case,] . . . [i]f the
tests were conducted in a manner approved by the FDA and the results are
accepted as valid by the FDA, then they are deemed valid by this
Court."), aff'd in relevant part, 93 F.3d 511 (8th Cir. 1996);
Brandenfels v. Heckler, 716 F.2d 553, 555 (9th Cir. 1983) ("Determining
reliable scientific data is not the judicial function. Congress vested
that responsibility in the FDA.")
12. The Court rejects Pharmacia's argument that OPDRA, a lower-level
subdivision of the FDA, was somehow misled by earlier plans to market
Travatan in two concentrations. This ignores the fact that the final
decision of the FDA's Division Director to approve Travatan was made with
full knowledge that it would be marketed in one concentration. The
decision of the Division Director is entitled to the Court's deference.
See Serono Labs., Inc. v. Shalala, 158 F.3d 1313, 1320-21 (D.C. Cir.
1998) (district court erred in giving weight to lower-level FDA staff
reports; only Division Director's decision was entitled to deference).
13. The Court is aware that Pharmacia is not legally required to
conduct a confusion survey. But under the circumstances of this case,
Pharmacia's failure to conduct any confusion survey weighs against its
request for a preliminary injunction. Such a failure, particularly when
the trademark owner is financially able, justifies an inference "that the
plaintiff believes the results of the survey will be unfavorable." Charles
Jacquin et Cie, Inc. v. Destileria Serralles, Inc., 921 F.2d 467, 475 (3d
Cir. 1990); see also Eagle Snacks, Inc. v. Nabisco Brands, Inc.,
625 F. Supp. 571, 583 (D.N.J. 1985); Tyco Indus. Inc. v. Lego Sys. Inc.,
5 U.S.P.Q.2d 1023, 1033 (D.N.J. 1987), aff'd, 853 F.2d 921 (3d Cir.
14. Pharmacia's attempt to explain away its decision not to conduct a
confusion survey (economics) further supports the appropriateness of such
an inference, in light of the fact that from July 2000 forward, Pharmacia
conducted numerous surveys concerning the Travatan mark, but never
attempted to assess whether Travatan was likely to cause confusion with
Xalatan. Moreover, the results of that research show that over 95% of
ophthalmologists were aware of Travatan and Xalatan as distinct products.
The enormous sums Pharmacia invested in market research to prepare for
the Travatan launch stand in stark contrast to its failure to conduct a
confusion survey here, and fully warrant a negative inference regarding
likelihood of confusion.
15. Finally, Professor Diamond's well-designed survey of
ophthalmologists and optometrists, showing a net confusion rate of 1.5%,
Def. Ex. D (DX00239-40, DX00246-47, DX00250) (Diamond Decl. ¶¶ 6,
26, 30), provides further evidence to support the Court's conclusion that
no confusion is likely. Henri's Food Prods. Co. v. Kraft, Inc.,
717 F.2d 352, 358-59 (7th Cir. 1983) (holding that 7.6% confusion finding
is "a factor weighing against infringement"); Pfizer Inc. v. Astra
Pharm. Prods., Inc., 858 F. Supp. 1305, 1326 (S.D.N.Y. 1994) (adjusted
confusion rate of 7.27% in a survey is "low" and insufficient evidence of
likelihood of confusion); see also 5 McCarthy § 32:188, at 32-311
(4th ed. 2001) (generally, "figures below 20 percent become problematic
because they can only be viewed against the background of other
evidence . . .").
16. For all these reasons, the actual confusion factor strongly favors
b. The Sophistication Of The Relevant Market
17. The relevant market for the products is a significant factor,
when the market consists of sophisticated professionals.
Victoria's Secret II, 237 F.3d at 215, 225; Ford Motor Co., 930 F.2d at
293; Restatement (Third) of Unfair Competition, § 25, at 271 (1995)
(hereinafter "Restatement") ("Discerning purchasers are more likely to
recognize elements that distinguish two similar marks and are thus more
likely to retain separate mental associations for each of the
18. In trademark cases involving competing prescription drugs, the
relevant consumers are physicians because patients do not choose their
own prescription drugs. Smithkline Beckman Corp. v. Pennex Prods. Co.,
605 F. Supp. 746, 752-53 (E.D.Pa. 1985) ("Prescription drugs are a unique
commodity. It is the physician, not the consumer, who selects the
prescription."); Pennwalt Corp. v. Zenith Labs., Inc., 472 F. Supp. 413,
422 (E.D.Mich. 1979) ("[T]he dispensing physician is in fact the
individual who truly exercises the consumer-patient's freedom of choice
in the marketplace when issuing a prescription.") Physicians are capable
of fine distinctions between marks, making confusion even less likely.
Doral Pharmamedics v. Pharmaceutical Generic Developers, Inc.,
148 F. Supp.2d 127, 138-39 (D.P.R. 2001) (confusion between prescription
drugs "Exotic-HC" and "Genexotic-HC" unlikely); Pfizer Inc. v. Astra
Pharm. Prods., 858 F. Supp. at 1309, 1328 (identical XL suffix unlikely
to confuse physicians, "as sophisticated a group as one could imagine");
Barre-National, 773 F. Supp. at 742, 745 (sophistication made confusion
between "Barre" and "Barr" unlikely); Schering Corp. v. Thompson Med.
Co., 209 U.S.P.Q. 72, 74 (S.D.N.Y. 1979) (same; confusion between
"Polaramine" and "Prolamine" unlikely).
19. Both parties' surveys in this case confirm that doctors are a
20. Although Pharmacia argues about possible medication errors later
in the prescription chain, even assuming that such errors occur, they do
not establish trademark confusion. Medication errors include missed
doses, drugs given to the wrong patient, prescriptions filled with wrong
dosages and many other kinds of errors caused by any number of reasons,
including poor handwriting, verbal miscommunications or other breakdowns
in the dispensing chain. Misreading or mishearing a prescription is not
actionable under the Lanham Act, because trademark confusion is limited
to consumer confusion in the context of a purchasing decision. See Harlem
Wizards Entm't Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084,
1098 (D.N.J. 1997) ("Actual confusion is not the same as clear mistake or
misidentification on the part of consumers. . . . Moreover, there is no
evidence that these purported instances of actual confusion could have
any effect on consumer purchasing decisions"); Lang v. Ret. Living Publ'g
Co., 949 F.2d 576, 582-83 (2d Cir. 1991) (rejecting mistaken
communications as evidence of confusion because there was no link to any
21. When a consumer knows the identity of the product or service he or
she desires, but is mistakenly directed to another source (for example,
because of a mistake by directory assistance), the error is not evidence
of trademark confusion. Checkpoint Sys., 104 F. Supp.2d at 463
(misdirected communications based on directory assistance "not actionable
under the Lanham Act"), aff'd, 269 F.3d 270, 298 (3d Cir. 2001)
(distinguishing consumer confusion from error); citing, Duluth
News-Tribune v. Mesabi Pub'g Co., 84 F.3d 1093, 1098 (8th Cir. 1996));
see also Prime Media, Inc. v. Primedia, Inc., 33 F. Supp.2d 932, 939-40
(D.Kan. 1998) (calls misdirected to plaintiff by directory assistance
is not "the type of confusion the Lanham Act guards against"); Major
League Baseball Props., Inc. v. Sed Non Olet Denarius, Ltd.,
817 F. Supp. 1103, 1122 (S.D.N.Y. 1993) ("typographical errors"
do not constitute trademark confusion).
22. Because the evidence of record demonstrates that doctors (who play
the role of the ultimate consumer in prescription drug cases) are not
confused, to the extent that pharmacists make mistakes, they are
analogous to mistaken directory assistance operators. More importantly,
however, Pharmacia has no evidence of any misprescriptions between
Xalatan and Travatan.
23. The sophistication of consumers strongly favors Alcon.
c. Channels Of Trade And The Relevant Marketing Practices
24. Pharmacia's marketing executives specifically anticipated that
Alcon would market Travatan by expressly comparing and contrasting it to
Xalatan. The channels of trade particularly the myriad in-person
detailing visits by both companies — also reduce the likelihood of
confusion. Pfizer Inc. v. Astra Pharm. Prods., 858 F. Supp. at 1324
(doctors know they cannot receive information for competing drugs from
the same sales representative, "dispelling any issue concerning
likelihood of confusion"); American Home Prods. v. Barr Labs, Inc.,
656 F. Supp. 1058, 1069 (D.N.J. 1987), aff'd, 834 F.2d 368 (3d cir. 1987)
(no likelihood of confusion where comparative advertisements "essentially
beg consumers to distinguish [the defendant's] generic ibuprofen tablets
from Advil"); Warner Lambert Co. v. McCrory's Corp., 718 F. Supp. 389,
398-99 (D.N.J. 1989) (comparative statements "distinguish the two
products"); Pfizer Inc. v. Perrigo Co., 988 F. Supp. 686, 698 (S.D.N.Y.
25. The relevant marketing practices and the channels of trade
strongly favor Alcon.
d. Standards For Finding Bad Faith
26. The credible evidence does not support Pharmacia's assertion that
Alcon intentionally copied the "ATAN" part of the Xalatan mark. There is
no factual support for that proposition.
27. Even accepting Pharmacia's argument that Travatan was named by
copying the ending of Xalatan (which the Court rejects), such copying is
legally irrelevant for at least three reasons.
28. First, because the marks as a whole are not identical, no
presumption of intentional copying arises and Pharmacia retains the burden
of establishing likelihood of confusion. Barnes Group Inc. v. Connell
L.P., 793 F. Supp. 1277, 1302 (D.Del. 1992); see also 20th Century Wear,
Inc. v. Sanmark-Stardust, Inc., 815 F.2d 8, 10-14 (2d Cir. 1987); 3
McCarthy § 23:107, at 23-250.
29. Second, the reasoned judgment by counsel that Travatan was
available precludes a finding of bad faith.
30. Third, intentional copying is irrelevant when other factors
indicate that there is not a likelihood of confusion, American Home
Prods. Corp. v. Barr Labs., Inc., 834 F.2d 368, 371 (3d Cir. 1987), or
when the facts do not show that the defendant intended to deceive
consumers as to the product's source. Versa Prods., 50 F.3d at 205-06);
Victoria's Secret II, 237 F.3d at 226 ("[D]efendant's intent will
indicate a likelihood of confusion only if an intent to confuse consumers
is demonstrated via purposeful manipulation of the junior mark to
resemble the senior's.")
31. There is no evidence that Alcon intended doctors to be confused as
to the source or nature of Travatan.
32. Because there is no evidence that Alcon intended to deceive
consumers as to the source of the Travatan product (or even that it
intentionally copied the "ATAN" portion of the Xalatan mark), Alcon's
"adoption of a trademark with actual knowledge" of Xalatan may be
entirely "consistent with good faith." Lang, 949 F.2d at 583-84.
"Indeed, even if [Mr. Schira's] professional advice had been wrong, it
does not follow that [Alcon's] reliance on that advice would have
constituted bad faith." Mead Data Central, Inc v. Toyota Motor Sales,
U.S.A., 875 F.2d 1026, 1028 (2d Cir. 1989); see also A&H Sportswear Co.
v. Victoria's Secret Stores, Inc., 926 F. Supp. 1233, 1268 (E.D.Pa.
1996), aff'd, 166 F.3d 191 (3d Cir. 1999) ("[W]here Defendants relied on
advice of counsel, even if wrong, record insufficient to find Defendants
liable for `that species of bad faith which constitutes independent and
substantive proof of infringement.'") (emphasis added) (quoting,
Information Clearing House v. Find Magazine, 492 F. Supp. 147, 161
(S.D.N.Y. 1980)), aff'd, 166 F.3d 191 (3d Cir. 1999); Parenting
Unlimited, Inc. v. Columbia Pictures Television Inc., 743 F. Supp. 221,
230 (S.D.N.Y. 1990) ("[D]efendants relied on the advice of counsel from
the outset and should not be deemed to have acted in bad faith purely on
the basis of plaintiff's contention that their assessment of the mark's
availability was incorrect.").
33. Accordingly, the lack of bad faith favors Alcon.
e. Differences In The Marks And Packaging
34. Pharmacia bases its infringement and dilution claims on the shared
"ATAN" suffixes of the two names, ignoring the many dissimilarities in
the spelling, pronunciation and presentation of the marks. However,
"marks should be viewed in their entirety," rather than dissected.
Victoria's Secret II, 237 F.3d at 216.
35. Dissection of marks is particularly inappropriate in the
pharmaceutical context because suffix similarity is not uncommon and, for
that very reason, not likely to confuse highly trained doctors. See
Upjohn Co. v. Schwartz, 246 F.2d 254, 262 (2d Cir. 1957) ("`Syrocol'
[and] `Cheracol' . . . do not look or sound enough alike to justify a
holding of trademark infringement. The only similarity is in the last
syllable, and that is not uncommon in the names given drug compounds.")
36. Any claim by Pharmacia to exclusive rights to the suffix "ATAN" is
weak because of the number of other pharmaceutical products that use the
suffix (e.g., Rynatan, Phenatan, Germa-tan), and because of the existence
of similar marks in the glaucoma market (e.g., Alphagan, Betagan,
Lumigan). 2 McCarthy § 11:85, at 11-163 ("[I]n a `crowded' field of
similar marks, each member of the crowd is relatively `weak' in its
ability to prevent use by others in the crowd."); see also Victoria's
Secret II, 237 F.3d at 223-24 (third-party use weighs against finding
mark strength and likely confusion); Accu Personnel, Inc. v. Accustaff,
Inc., 823 F. Supp. 1161, 1166 (D.Del. 1993) (numerous similar marks
enable consumers to distinguish "on the basis of minute distinctions")
(citation omitted); Restatement § 13, at 110.
37. No particular number of other products or users are necessary to
show that concurrent use weakens claims to exclusivity. Castle Oil
Corp. v. Castle Energy Corp., Civ. A. No. 90-6544, 1992 WL 394932, at *12
(E.D.Pa. Dec. 29, 1992).
38. The relevant market regarding third party use is not limited to
ophthalmic solutions but is the overall pharmaceutical market.
Barre-National, 773 F. Supp. at 741 (liquid pharmaceuticals market too
narrow; market was all pharmaceutical products); A&H Sportswear Co.,
926 F. Supp. at 1267 (entire market within which goods were registered);
Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 517 (M.D.Pa. 1998)
("food industry," not just candy market, is relevant); see also
Victoria's Secret II, 237 F.3d at 223 ("[T]he extensive use of the term
in other [related] markets may also have a weakening effect on the
strength of the mark.").
39. The prominent display of the Pharmacia and Alcon house marks,
along with the distinctive packaging used by each company, further weigh
against likely confusion. Victoria's Secret II, 237 F.3d at 218-19
(house marks are significant in determining overall impression);
Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000)
(house mark "significantly reduces, if not altogether eliminates," any
likelihood of consumer confusion); Bristol-Myers Squibb Co. v.
McNeil-P.P.C., Inc., 973 F.2d 1033, 1046 (2d Cir. 1992) (same); American
Cyanamid, 800 F.2d at 309 (2d Cir. 1986) (same); Richards v. Cable News
Network, Inc., 15 F. Supp.2d 683, 690-91 (E.D.Pa. 1998) ("World Beat" and
"World Beat" not confusingly similar because of differences in
presentation); Harlem Wizards Entm't Basketball, 952 F. Supp. at 1096
(same; "Harlem Wizards" and "Washington Wizards"); Pfizer, Inc. v. Astra
Pharm. Prods., 858 F. Supp. at 1324 (same); Genovese Drug Stores, Inc.
v. TGC Stores, Inc., 939 F. Supp. 340, 346 (D.N.J. 1996) (house mark and
other visual differences); Barre-National, 773 F. Supp. at 742 (stylized
"b" distinguished "Barre" and "Barr"); Schmid Labs. v. Young Drug Prods.
Corp., 482 F. Supp. 14, 18 (D.N.J. 1979) (same); 3 McCarthy § 23:52,
at 23-141 to 23-142. Alcon made its mark even more distinct by using ALL
CAPS. Barnes, 793 F. Supp. at 302.
40. This factor strongly favors Alcon as well.
f. Pharmacia's Opinions Regarding Likelihood of Confusion
41. Because Pharmacia has no marketplace evidence of likely or actual
confusion, it emphasizes evidence in the form of expert opinion
testimony. This evidence is insufficient to overcome the marketplace
evidence that confusion is unlikely. Apart from consumer surveys, "[L]ay
or even expert opinion about the likelihood of confusion is inadmissible
or entitled to little weight." Richard L. Kirkpatrick, Likelihood of
Confusion in trademark Law, § 1.8.c, at 1-45 (PLI 1995); Barnes
Group, 793 F. Supp. at 1293, 1301-02 (expert opinion that confusion was
likely, offered without any supporting empirical data or marketplace
observations, could not be relied on).
42. The opinions of Dr. Eisenberg and Mr. Di Domizio with regard to
the likelihood of confusion between Travatan and Xalatan are based
primarily on a subjective evaluation of the marks in light of their
experience in the pharmaceutical industry (Di Domizio) or as an
ophthalmologist (Eisenberg). There are no reported trademark cases in
which a court has based its findings of a likelihood of confusion or
dilution on the types of "opinions" on which Pharmacia relies. The bases
for these opinions stand in stark contrast to the survey conducted by
Professor Shari S. Diamond, J.D., Ph. D., which demonstrates persuasively
a confusion rate of 1.5%. See John H. Harland Co. v. Clarke Checks,
Inc., 711 F.2d 966, 979 n. 23 (11th Cir. 1983) (lay opinion of bank
and opinion of attorney with no experience in relevant industry
and who conducted no confusion survey entitled to little weight).
43. Dr. Lambert's opinion on the likelihood of confusion similarly is
entitled to little weight. His statistical model cannot predict with
meaningful reliability in the real world whether Xalatan and Travatan are
accurately characterized as an "Error Pair," or if instead they represent
a "false positive" — that is, a pair of drug names improperly
classified by Dr. Lambert as confusingly similar. Because in the real
world there are many, many more non-confusing drug name pairs than
confusingly similar ones, it follows from the application of basic
statistical principles that the Travatan-Xalatan pair is likely to be a
false positive. In any event, Dr. Lambert was unable to opine with any
degree of certainty what numbers should be used to determine his model's
reliability, much less whether Travatan and Xalatan ever will be confused
in the real world. Lambert Tr., at 144-46.
44. Because the Court must assess confusion based on a well-defined
set of factors intended to measure what is likely to happen in the real
world, Checkpoint Sys., 269 F.3d at 279-80, Dr. Lambert's model lacks
significant probative value for the purposes for which it is offered.
Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 594 (1993) (courts
should consider error rate of scientific technique); Kumho Tire Co. v.
Carmichael, 526 U.S. 137, 153-54 (1999) (question is not whether method
is useful in general, but whether method is reasonable in reaching
conclusion about specific event at issue); General Electric Co. v.
Joiner, 522 U.S. 136, 146 (1997) ("A court may conclude that there is
simply too great an analytical gap between the data and the opinion
proffered."). The model is entitled to very little weight in a Lanham Act
case and cannot serve as the basis for a finding of likely confusion,
especially in light of contrary marketplace evidence and the FDA's
45. None of the expert opinions remaining after the Court's November
28 in limine ruling, therefore, is sufficiently compelling to overcome
the marketplace evidence demonstrating that confusion is not likely.
g. The Dilution Claim
46. Pharmacia also has not shown a likelihood of success on the merits
of its trademark dilution claims. In order to succeed on the merits of
its trademark dilution claim, Pharmacia must prove, inter alia, that:
(1) the Xalatan mark is famous,*fn12 and (2) Alcon's use of the Travatan
mark causes dilution of the capacity of
Xalatan to identify and distinguish its latanoprost product. Times Mirror,
212 F.3d at 162-63.
47. The Court recognizes that Pharmacia's claim for dilution is
separate and distinct from its claim for confusion.*fn13
dilution is not a "fallback protection" for invalid infringement claims.
I.P. Lund Trading v. Kohler Co., 163 F.3d 27
, 48 (1st Cir. 1998)
(affirming denial of preliminary injunction and cautioning against
crediting dilution claims involving competitive products where there is
no confusion). It is "up to the judiciary to apply . . . potent
[anti-dilution] laws with care and common sense lest they damage the
competitive system they are designed to enhance." 4 McCarthy §
24:114, at 24-250.
48. Pharmacia has failed to meet its burden on its dilution claim for
several reasons. First, a dilution plaintiff must be threatened by a
very similar, if not identical, mark. Courts have repeatedly rejected
dilution claims unless the marks are essentially the same, which they are
not here. American Cyanamid Co. v. Nutraceutrical Corp., 54 F. Supp.2d 379,
392-93 (D.N.J. 1999) (differently designed rainbows); Luigino's, Inc. v.
Stouffer Corp., 170 F.3d 827, 832 (8th Cir. 1999) ("Lean `N Tasty" mark
did not dilute "Lean Cuisine" mark); I.P. Lund, 163 F.3d at 50; Mead
Data, 875 F.2d at 1028-29 (finding "LEXIS" and "LEXUS" not substantially
similar for dilution purposes); Ringling Bros.-Barnum & Bailey Combined
Shows, Inc. v. B.E.Windows Corp., 937 F. Supp. 204, 211-12 (S.D.N.Y.
49. Indeed, differences such as the use of house marks "alone" can
defeat dilution claims. Astra Pharm. Prods., Inc. v. Beckman
Instruments, Inc., 718 F.2d 1201, 1209-10 (1st Cir. 1983) ("Astra" and
"Astra"); Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506
(2d Cir. 1996) (display of "Muppet Treasure Island" next to "Spa'am"
character "alone" could prevent dilution of Hormel's "Spam").
50. In the pharmaceutical context, because prescription drug packaging
is required to display generic names, the likelihood of dilution is
further diminished when, as is the case here, those generic names
differ. Pfizer, 858 F. Supp. at 1324.
51. Pharmacia's dilution claim suffers from two other obvious
infirmities. First, there are many other drug names that end in "AN,"
"TAN" and "ATAN." The existence of: (1) Alphagan, Betagan and Lumigan;
(2) the eleven other pharmaceutical products that end in "TAN," (3) the
seven other pharmaceutical products ending in "ATAN" that preceded
Xalatan,*fn14 disposes of Pharmacia's claim to exclusivity in the "ATAN"
suffix, the only part of the Travatan name that Pharmacia claims dilutes
52. Second, in the pharmaceutical field, professionals have been
trained to distinguish generic and proprietary names within a class of
drugs. This means that the sophistication and training of these
professionals must be taken into account. Times
Mirror, 212 F.3d at 168;
Astra Pharm. Prods., 718 F.2d at 1209-10; Restatement § 25 cmt. f, at
271 ("Discerning purchasers are more likely to recognize elements that
distinguish two similar marks and are thus more likely to retain separate
53. Moreover, courts should be wary of applying a dilution remedy when
it is invoked in trademark cases between competing products, especially
when there is no accompanying evidence of a likelihood of confusion.
I.P. Lund, 163 F.3d at 45 ("the archetypical problems [addressed by the
Federal Trademark Dilution Act] involved non-competing products as to
which there could, by definition, be no confusion"); Fed. Express Corp.
v. Fed. Espresso, Inc., 201 F.3d 168, 177-78 (2d Cir. 2000) (plaintiff's
inability to show likely confusion supported denial of preliminary
injunction on dilution claim); 4 McCarthy § 24:72, at 24-130.1 to
130.2 ("It is difficult to understand why an anti-dilution law is invoked
when parties operate in competitive or closely-related product or service
54. In light of the above, dilution is not likely.
55. The Court reaches this conclusion notwithstanding the McCullough
survey. In fact, if anything, the McCullough survey supports the court's
conclusion that Pharmacia has not met its burden of showing a likelihood
56. In claims for likelihood of confusion, case law teaches that a
finding of infringement requires a 15 to 20 percent range of confusion.
Gerald L. Ford, Dilution Surveys Update 1998 Practicing Law Institute,
537 PLI/Pat 551, 562 (1998). See also Xuan-Thao N. Nguyen, The New Wild
West: Measuring And Proving Fame And Dilution Under The Federal Trademark
Dilution Act, 63 Alb. L. Rev. 201 (1999) ("Courts in trademark
infringement cases have consistently relied on survey evidence in their
findings of likelihood of confusion in violation of the Lanham Act.
Survey evidence within a range of 25% to 50% is well accepted as solid
support for a finding of a likelihood of confusion." See fn. 270.)
57. A dilution claim may require a slightly higher number "because the
nature of the underlying cause of action is different. It is harder to
establish that consumers believe that a defendant's product is put out by
the plaintiff. That is harder to establish than it is to establish
dilution which simply requires a showing that defendant's product calls
to mind the plaintiff's brand name. [A plaintiff] doesn't have to make
the source association. [A plaintiff just [has] to show that the
plaintiff's brand is called to mind or that looking at the defendant's
product makes them think of plaintiff . . ." See Ford, Dilution Surveys
Update (1998). See also Gerald L. Ford, "Dilution Surveys New Challenges,"
Litigating Copyright, Trademark and Unfair Competition Cases (1997)
(suggestion that 15-20% should not be sufficient in dilution cases);
Xuan-Thao N. Nguyen, The New Wild West: Measuring and Proving Fame and
Dilution Under the Federal Trademark Dilution Act, 63 Albany L. Rev.
201, 237 (1999) ("To establish proof of dilution, survey evidence must
meet a minimum threshold of at least 20% of respondents making a mental
association between the famous mark and junior mark.").
58. Even fully crediting Mr. McCullough's survey, it is insufficient
on its face to support a preliminary injunction for trademark dilution.
That survey shows at best a dilution level of 14%.*fn16
That is less
than half of the lowest percentage of dilution in any reported decision
basing a finding of dilution on a survey. Wawa Dairy Farms v. Haaf, 40
U.S.P.Q.2d 1629 (E.D.Pa. 1996) (29%), aff'd, 116 F.3d 471 (3d Cir.
1997). Other courts have demanded a much higher percentage. Kellogg
Co. v. Exxon Mobil Corp., 192 F. Supp.2d 790, 806-808 (W.D.Tenn. 2001)
(70% association sufficient proof of blurring). Without dictating that
any particular level of dilution is necessary at a minimum, it is plain
that 14% is not adequate to sustain the extraordinary remedy sought here
— a preliminary injunction against an FDA-approved prescription
drug. Jerre B. Swann, Dilution Redefined for the Year 2000, 90 Trademark
Rep. 823, 860 n. 237 (2000) (required association is "substantial," not
merely "appreciable"); 5 McCarthy § 32:188, at 32-311.*fn17
59. That 14% figure, however, is entitled to little weight because of
the flaws in methodology and execution of the survey which led to court
to find that the dilution rate is 9.8%. Johnson & Johnson-Merck Consumer
Pharms. Co. v. Rhone-Poulenc Rorer Pharms., Inc., 19 F.3d 125, 134 (3d
Cir. 1994) ("The probative value of a consumer survey is a highly
fact-specific determination and a court may place such weight on survey
evidence as it deems appropriate.") (citation omitted); Barre-National,
773 F. Supp. at 745 (according "little weight" to survey with "several
major flaws which minimize its probative value"); Transfer Print Foils,
Inc. v. Transfer Print America, Inc., 720 F. Supp. 425, 432-33 (D.N.J.
60. Once it became evident that two of the interviewers learned of the
lawsuit, precautions should have been taken to ensure that any further
responses they elicited were scrutinized for any anomalies and, if any
appeared, were excluded. Paco Sport, Ltd. v. Paco Rabanne Parfums,
86 F. Supp.2d 305, 323 (S.D.N.Y. 2000) ("[T]he experts on both sides
agree that for survey results to be reliable, interviewers should not be
aware of the purpose of the survey . . . or the answers the sponsor wants
to receive. Interviewers occasionally fabricate answers instead of
completing interviews, and knowledge of the desired responses makes
cheating easier."), aff'd, 234 F.3d 1262 (2d Cir. 2000); Pittsburgh Press
Club v. United States, 579 F.2d 751, 758 (3d Cir. 1978). Because Ms.
Boyd's interviews (as well as the two other Los Angeles interviews)
sharply contrast with those obtained nationwide, they should not be
61. When taken in the context of the previous findings of fact and
conclusions of law, the McCullough survey with a dilution level of 9.8 %
(or 14 % for that matter) is inadequate to meet Pharmacia's burden of
proving likely success on its dilution claim.
62. The McCullough survey, accordingly, is inadequate to meet
Pharmacia's burden of proving likely success on its dilution claims.
63. The court rejects Pharmacia's contention that as Alcon continues
its marketing efforts to position Travatan to take market share from
Xalatan, the percentage of ophthalmologists who think Xalatan when they
see Travatan will increase with time. Pharamacia essentially argues that
dilution is a slowly progressing tort, see Times Mirror, 212 F.3d at 163
("gradual attenuation of the value of a famous mark . . . gives rise to
independent commercial tort for trademark dilution."); Liquid Glass
Enterprises, Inc. v. Dr. Ing. H.c.F. Porsche AG, 8 F. Supp.2d 398, 405
(D.N.J. 1998) (unauthorized use of trademark and trade dress likely to
slowly whittle away the distinctiveness of Porsche's marks); Nabisco v.
PF Brands, Inc., 50 F. Supp.2d 188, 210 (S.D.N.Y. 1999) ("over time, the
presence of Nabisco's goldfish-shaped cracker . . . likely to weaken.").
Here, Pharmacia's own dilution survey indicates (as modified by the
Court) a 9.8% dilution rate. There is no evidence that the dilution rate
will increase over time. Moreover, the Court has already concluded that
there is no likelihood of dilution. See, supra, Conclusions, at ¶
IV. IRREPARABLE HARM
64. Plaintiff contends that it has demonstrated irreparable harm
because it has made a strong showing of a likelihood of confusion. Jews
For Jesus v. Brodsky, 993 F. Supp. 282, 311.(D.N.J. 1998) ("[W]here a
plaintiff makes a strong showing of a likelihood of confusion, irreparable
injury follows as a matter of course"). Again, Pharmacia argues that
irreparable harm is generally presumed in a case of trademark dilution.
Eli Lilly, 233 F.3d 456, 469 (7th Cir. 2000). This line of law is
unavailing to Plaintiff, however, because Pharmacia has not made a
showing of likelihood of confusion, let alone a strong one, and the court
has concluded that Pharmacia has not met its burden of proving likely
success on its dilution claims. Any claim to irreparable injury is
undercut by its lengthy and inexcusable delay in bringing this action for
preliminary injunctive relief. This delay is a separate but equally
dispositive basis, apart from the weakness of Pharmacia's case on the
merits, for denying Pharmacia's motion for a preliminary injunction.
65. Actual or constructive notice is the governing standard for
measuring delay in moving for preliminary injunctive relief. Thus, courts
consider both a trademark plaintiff's actual knowledge of infringement
and its constructive knowledge. See, e.g., Commerce Nat'l Ins. Servs.
v. Commerce Ins. Agency, Inc., 995 F. Supp. 490, 502 (D.N.J. 1998)
(applying constructive knowledge standard), rev'd on other grounds,
214 F.3d 432 (3d Cir. 2000); Warner Lambert Co. v. McCroy's Corp.,
718 F. Supp. 389, 395 (D.N.J. 1989) (same); Reedco, 667 F. Supp. at
1081-82 (same); Calvin Klein Co. v. Farah Mfg. Co., 229 U.S.P.Q. 795,
797, 801 (S.D.N.Y. 1985) (same); Mego Corp. v. Mattel, Inc., 203
U.S.P.Q. 377, 383 (S.D.N.Y. 1978) (same).
66. A trademark plaintiff has a "duty to police" for allegedly
infringing uses, Commerce Nat'l, 995 F. Supp. at 502 (relief denied;
delay period for purposes of denying preliminary relief begins to run
when plaintiff "could have known . . . and should have known" of mark's
use), before seeking the extraordinary remedy of a preliminary
injunction. See also Reedco, 667 F. Supp. at 1081-82 (relief denied;
applying constructive knowledge standard based on plaintiff's
activities); Warner Lambert, 718 F. Supp. at 395
(relief denied; plaintiff's claim it had no actual knowledge rejected
given its practice of monitoring the marketplace); Calvin Klein, 229
U.S.P.Q. at 801 (relief denied; plaintiff was "chargeable" with knowledge
given its practice of monitoring the marketplace); Mego Corp., 203
U.S.P.Q. at 383 (relief denied; plaintiff held to have waited "until the
Eleventh Hour" when it "should have known . . . and could have known"
about defendant's plans earlier from trade journals).
67. The "should have known" standard is satisfied by contrasting the
full scope of a party's monitoring practices and the way it addressed
marks it truly regarded as violating its rights, with its inactivity with
respect to the mark it belatedly seeks to enjoin. Warner-Lambert,
718 F. Supp. at 395 (relying on evidence of "Warner-Lambert's practice" of
monitoring); Citibank N.A. v. Citytrust, 756 F.2d 273, 277 (2d Cir. 1985)
(evidence of plaintiff's practices in monitoring and opposing trademark
applications and use of other "resources and information sources"); Calvin
Klein, 229 U.S.P.Q. at 798 (evidence of "the extensive investigative
forces Calvin Klein employed throughout the relevant years"); see also
Andersen Consulting, LLP v. American Mgmt. Sys., Inc., 95 Civ. 5428, 1995
WL 510042, at *4 (S.D.N.Y. Aug. 28, 1995) (finding "incredible" that if
intellectual property was so valuable, plaintiff failed to thoroughly
read competitor's business proposal containing alleged trade secrets).
There is ample evidence in the record that during the relevant time
period, Pharmacia monitored for infringing uses of its trademarks, and
filed oppositions before the PTO to marks that it felt infringed its
intellectual property rights.
68. Pharmacia has had constructive or actual notice of Alcon's intent
to use the Travatan mark for its glaucoma product since at least May
1999, when the mark was published for opposition in the Official
Gazette. See, e.g., Commerce Nat'l, 995 F. Supp. at 502 (applying "could
have known and should have known" standard); Reedco, 667 F. Supp. at
1081-82 (publication in Official Gazette provided constructive
knowledge); Warner Lambert, 718 F. Supp. at 375 (rejecting no actual
knowledge defense given marketplace monitoring); Calvin Klein, 229
U.S.P.Q. at 801 (plaintiff "chargeable" with knowledge because of
marketplace monitoring); Mego Corp., 203 U.S.P.Q. at 383 (plaintiff
"should have known . . . and could have known"); Citibank N.A., 756 F.2d
at 277 ("It strains one's credulity to argue that a major financial
institution such as Citibank, with all its resources and information
sources, could not establish" earlier infringing use). Indeed, the very
purpose of publication for opposition in the Official Gazette is to allow
"[a]ny person who believes that he would be damaged by the registration
of a mark" to "file an opposition in the Patent and Trademark Office . . .
within thirty days after the publication . . ." 15 U.S.C. § 1063(a);
see also id. § 1062(a); 37 C.F.R. § 2.101.
69. By the summer and fall of 1999, Pharmacia had to have known of the
Travatan name, even if Pharmacia's delay is measured only from April
2000, when it concedes it knew of the Travatan mark. Such a delay
— one full year — knocks the bottom out of any claim of
immediate and irreparable harm. New Dana Perfumes v. The Disney Store,
Inc., 131 F. Supp.2d 616, 630 (M.D.Pa. 2001) (delay of two months in
sending demand letter and five months in moving for relief precludes
preliminary injunction); Warner Lambert Co., 718 F. Supp. at 393-95
(seven-month delay and failure to move against other potential infringers
"conclusively refutes" claim of irreparable
harm); Nabisco, Inc. v. PF
Brands, Inc., 191 F.3d 208, 222 (2d Cir. 1999) (delay is "perhaps more"
important in dilution cases than in infringement cases); Tough Traveler,
Ltd. v. Outbound Prods., 60 F.3d 964, 968 (2d Cir. 1995) ("[D]elay alone
may justify denial of a preliminary injunction.") (citation omitted).*fn18
70. Here, however, it is not simply the passage of time that refutes
Pharmacia's claims of irreparable harm. In this case, Pharmacia not only
knew about Alcon's Travatan mark, but also exhaustively market-tested and
analyzed that mark for at least eight months before seeking relief. It
also concluded, during those analyses, that the mark was not a
competitive threat, but a weakness.
71. Neither the parties' negotiations over patent issues, nor the
(remote) possibility that the FDA would not approve Travatan, excuses
Pharmacia's delay. First, nothing about either of those potential
developments prevented Pharmacia from asserting its rights.
Harley-Davidson, Inc. v. Estate of O'Connell, 13 F. Supp.2d 271, 280-81
(N.D.N.Y. 1998) (delay not excused by possibility that defendant would
never get zoning approvals); see also Gidatex, 13 F. Supp.2d at 419-20
(negotiations over contract validity did not affect plaintiff's ability
to bring trademark suit). Second, the "FDA might not approve it"
argument has been rejected under virtually identical circumstances.
Reedco, 667 F. Supp. at 1082. The policy excusing delays attributable to
settlement negotiations does not cover subjects not negotiated,
particularly when one party was less than candid about the range of topics
it wished to negotiate.
72. Moreover, the negotiations over the patent issues, if anything,
undercut Pharmacia's position. The record shows that from at least July
2000 through February 2001, Pharmacia engaged in negotiations with Alcon
over the possibility of resolving those patent issues by way of a
license. Pharmacia negotiated, presumably in good faith, on patent
issues alone, repeatedly referring to Travatan by name in those
negotiations. This justifiably created an expectation on Alcon's part
that any objections Pharmacia had to the Travatan product were limited to
the patent and not its trademark. This expectation then was reinforced
by Pharmacia's failure to oppose the Travatan mark anywhere in the
world, either before or after the commencement of the patent
73. Pharmacia is also not excused by its claim that it needed from
April or May 2000 to February 2001 to investigate whether it had a valid
trademark claim. Investigation is no excuse when the plaintiff is in
possession of all of the necessary facts constituting the alleged
infringement. See Gidatex, 13 F. Supp.2d at 420 (rejecting investigation
excuse "particularly as the `extent and nature' of [defendant's]
allegedly offending use was already known"); Richard Feiner & Co. v.
Turner Entm't Co., 98 F.3d 33, 35 (2d Cir. 1996); Markowitz Jewelry Co.
v. Chapal/Zenray, Inc., 988 F. Supp. 404, 407-08 (S.D.N.Y. 1997); Bear
U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 909 F. Supp. 896,
910 (S.D.N.Y. 1995) (plaintiff's failure to act sooner, particularly
previously faced no competition in that market, "undercut the
need for and urgency of a preliminary injunction").
74. Nor is Pharmacia's delay excused because of Alcon's asserted bad
faith in adopting the Travatan mark. First of all, the Court has
determined that there is no merit to Pharmacia's claim that Alcon acted
in bad faith. Furthermore, in order to excuse Pharmacia's delay,
Pharmacia must demonstrate that Alcon committed "fraudulent
infringement," Anheuser-Busch, Inc. v. Du Bois Brewing Co., 175 F.2d 370,
374 (3d Cir. 1949), as part of an effort to "foist upon the public the
(products) of the defendant as those of the plaintiff." Cuban Cigar
Brands N.V. v. Upmann Int'l, Inc., 457 F. Supp. 1090, 1098-99 (S.D.N.Y.
1978) (Weinfeld, J.), aff'd, 607 F.2d 995 (2d Cir. 1979); see also Joint
Stock Soc'y v. UDV North Am., Inc., 53 F. Supp.2d 692, 721 (D.Del. 1999)
(using the "fraudulent infringe[ment]" language); Swanson v. Georgetown
Collection, Inc., No. Civ. A No. 94-CV-1283, 1995 WL 72717, at *9
(N.D.N.Y. Feb. 14, 1995). For the reasons set forth earlier, no
inference of bad faith, much less fraud, is warranted.
75. Because Pharmacia inexcusably delayed raising any objection to the
mark until February of 2001, Alcon would be seriously prejudiced by the
granting of the present application for a preliminary injunction.
Indeed, that Pharmacia sat silently on its rights with full knowledge of
Alcon's intent to use the Travatan name gives rise to a separate laches
defense, see Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 192-93 (2d
Cir. 1996); Reedco, 667 F. Supp. at 1082; New Dana Perfumes,
131 F. Supp.2d at 627 n. 10; Warner-Lambert, 718 F. Supp. at 395; Barton Tr.
48-49. Alcon has changed trade names when timely objections were
raised, further weakening Pharmacia's claim on the merits.
V. BALANCING FACTORS
76. In determining whether a preliminary injunction should issue the
Court, of course, is required to balance the potential hardships that
either side will endure as a result of the injunction. Opticians Ass'n
of Am. v. Ind. Opticians of Am., 920 F.2d 187, 197 (3rd Cir. 1990).
Where, as here, a plaintiff's trademark case involving FDA-approved
medicines otherwise is weak, the public interest factor is paramount
because an injunction would deprive the public of an important medical
benefit. See Reedco, 667 F. Supp. at 1080-81 (refusing to enjoin advance
in psoriasis treatment); Hybritech Inc. v. Abbott Labs., 4 U.S.P.Q.2d
1001, 1003-04, 1014-15 (C.D.Cal. 1987) (relief denied on public interest
grounds despite other factors in plaintiff's favor), aff'd, 849 F.2d 1446
(Fed. Cir. 1988); Neuromedical Sys., Inc. v. Neopath, Inc., No. 96 Civ.
5245, 1998 WL 264845, at 16 (S.D.N Y May 26, 1998) (same); Ethicon
Endo-Surgery v. U.S. Surgical Corp., 855 F. Supp. 1500, 1517 (S.D.Ohio
77. Pharmacia could not substantiate its claim, made at the outset of
this case, that Travatan should be enjoined because it poses a greater
risk to pregnant women than does Xalatan. Neither pregnancy-associated,
nor any other, risks warrant enjoining Travatan, which the FDA has
approved as safe and effective.
78. Furthermore, Alcon would be harmed by any injunction, not only in
the cost of getting a new name and packaging approved by the FDA, but
also in lost sales during the time that its product would be off the
market. The harm Alcon would suffer would bear no relation to any
benefit it might have derived from the Travatan name, much less from any
similarity of Travatan to Xalatan. See Continental Group, Inc. v. Amoco
614 F.2d 351, 357 (3d Cir. 1980); Times Mirror, 212 F.3d at
168 (harm to defendant relevant to dilution claim). Alcon's legitimate
interest in providing an important new drug to the market, under whatever
name, would be substantially impaired.
VI. PREVAILING PUBLIC INTEREST
79. In a trademark case, this factor requires the court to consider
the right of the consuming public not to be deceived or confused by an
infringing mark. Optician's Ass'n, 920 F.2d at 197. Since the plaintiff
is unlikely to succeed on its claims of confusion or dilution, and since
the FDA has approved the Travatan mark, the court concludes that the
public interest would not be served by issuing a preliminary injunction
enjoining the use of the mark.
VII. PHARMACIA'S CLAIMS UNDER NEW JERSEY LAW
80. Pharmacia is not entitled to injunctive relief under the laws of
New Jersey and the common law. Both parties agree that in the Third
Circuit the test for common law infringement and unfair competition is
identical to the test for federal infringement and unfair competition.
Apollo Distrib. v. Jerry Kurtz Carpet Co., 696 F. Supp. 140, 143 (D N.J.
1988) Similarly, New Jersey's statutory unfair competition law, N.J.S.A.
56:4-1, is equivalent to Section 43(a) of the Lanham Act. Id. at 143; see
also J & J Snack Foods Corp. v. Nestle USA, Inc., 149 F. Supp.2d 136, 157
81. N.J.S.A. 56:3-13a also provides that "[t]he interpretation and
construction of the federal Trademark Act of 1946 shall be examined as
persuasive authority for the interpretation and construction of this 1995
amendatory and supplementary act."
82. Therefore, since the Court has concluded that the plaintiff is
unlikely to succeed on the merits of its federal claims, it also
concludes that the plaintiff will be unlikely to succeed on the remaining
state statutory and common law claims.
83. Pharmacia's dilution claim under N.J.S.A. 56:3-13.20 is now barred
as a matter of law because the PTO has issued Travatan a federal
registration. 15 U.S.C. § 1125(c)(3); see also Viacom Inc. v. Ingram
Enters., Inc., 141 F.3d 886, 888 (8th Cir. 1998) ("[T]he FTDA also
provides a complete defense to state law dilution claims to owners of
valid, federally registered marks."); Westchester Media Co. v. PRL USA
Holdings, Inc., 103 F. Supp.2d 935, 976-77 (S.D.Tex. 1999), aff'd on
relevant grounds, 214 F.3d 658 (5th Cir. 2000) (applying statute to
preclude state law dilution claim because mark at issue is federally
For the reasons discussed, the plaintiff's motion for a preliminary
injunction is denied.