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PHARMACIA CORP. v. ALCON LABORATORIES
May 14, 2002
PHARMACIA CORP., PHARMACIA AB, PHARMACIA ENTERPRISES S.A. AND PHARMACIA & UPJOHN CO., PLAINTIFFS,
ALCON LABORATORIES, INC., DEFENDANT.
The opinion of the court was delivered by: Bassler, District Judge:
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.
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
1. Plaintiff Pharmacia Corporation is a Delaware corporation with its
principal place of business located at 100 Route 206 North, Peapack, New
Jersey 07977. Pharmacia Corporation is the parent corporation of the
other plaintiffs: Pharmacia AB (formerly known as Pharmacia & Upjohn
AB), a company organized under the laws of Sweden; Pharmacia Enterprises
S.A. (formerly known as Pharmacia & Upjohn S.A.), a company organized
under the laws of Luxembourg; and Pharmacia & Upjohn Company, a company
organized under the laws of Delaware) (collectively, "Pharmacia").
2. Defendant Alcon Laboratories, Inc. ("Alcon") is a Delaware
corporation and a wholly-owned subsidiary of Alcon Holdings, which is a
wholly-owned subsidiary of Alcon Universal Limited, which is a wholly
owned subsidiary of Nestle S.A. Alcon's principal place of business is
6201 South Freeway, Fort Worth, Texas 76134.
3. Pharmacia and Alcon are pharmaceutical companies that manufacture
and market, inter alia, ophthalmic preparations for the treatment of the
eye disease glaucoma.
B. THE NATURE OF THE ACTION
4. Pharmacia initiated this civil action on March 30, 2001 under the
Lanham (Trademark) Act of 1946, 15 U.S.C. § 1051, et seq. (the
"Lanham Act") and New Jersey statutory and common law.
II. THE EYE DISEASE GLAUCOMA AND THE GLAUCOMA MARKET
6. There is no dispute about the nature of the eye disease glaucoma
and the glaucoma market. This case is about the medications used in the
treatment of glaucoma, a disease of the eye marked by increased
intraocular pressure ("IOP") within the eye. Elevated IOP is caused by
excess fluid within the eye that can result in damage to the optic disk
and cause gradual loss of vision. Left untreated, glaucoma can result in
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.
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.
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.
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.
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.
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 ...