Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA117199
`ESTTA Tracking number:
`12/28/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91171530
`Plaintiff
`Kosmedix
`Defendant
`LABORATOIRES D'ESTHETIQUE APPLIQUEE
`
`Proceeding.
`Applicant
`
`Other Party
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly,
`Kosmedix hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`Kosmedix has secured the express consent of all other parties to this proceeding for the suspension
`requested herein.
`Kosmedix has provided an e-mail address herewith for itself and for the opposing party so that any order on
`this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`Respectfully submitted,
`/Kurt Lewis/
`Kurt Lewis
`kurt@lewisscheid.com
`Fred.Meyers@ladas.net
`12/28/2006
`
`

`
`lS44l3,99,
`
`Filed O5.i18/2005
`Case “I:O§~Cv—0Q9:38~LTB Documentt
`CIVIL COVER SHEET
`The JS-44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as pro-
`vided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of
`initiating the civil docket sheet (SEE INSTRUCTIONS ON THE REVERSE OF THIS FORM).
`
`Paget Of‘:
`
`|.(a) PLAINTIFFS
`
`KOSMEDTX» INC‘) 3 Texas C01‘p01‘3Ii01’1
`
`b COUNTY OF RESIDENCE OF FIRST LISTED PLAINTIFF Denver
`)
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`(
`
`DEFENDANTS ALLERGAN, INC., a Delaware corporation;
`INAMED CORPORATION, a Delaware corporation; LABORATOIRES
`D'ESTHETIQUE APPLIQUEE CORPORATION, a French corporation
`COUNTY OF RESIDENCE OF FIRST LISTED DEFENDANT
`(‘N “-3- PLA'NT'FF CASES)
`IN LAND CONDEMNATION CASES, USE THE LOCATION
`TRACT OF LAND INVOLVED
`
`NOTE:
`
`(C) ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER)
`Kurt S. Lewis, Lewis Scheid LLC, 2300 Fifteenth Street, Suite 320, Denver, CO
`80202; (303) 534-5040
`
`ATTORNEYS (‘F KNOWN)
`
`II. BASIS OF JURISDICTION (PLACE AN ‘X’ IN ONE BOX ONLY)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES
`(For Diversity Cases Only)
`
`(PLACE AN ‘X’ IN ONE BOX FOR
`PLAINTIFF AND ONE FOR DEFENDANT))
`
`D 1 U.S. GOVERNMENT
`PLAINTIFF
`
`E 3 FEDERAL QUESTION
`(U.S. Government Not a Party)
`
`U 2 U.S. GOVERNMENT
`DEFENDANT
`
`D 4 DIVERSITY
`(Indicate Citizenship of Parties in
`Item I”)
`
`PTF
`_
`__
`U 1
`Citizen of This State
`Citizen of Another State U 2
`
`Citizen or Sublject of a
`F°re'gn Coun ry
`
`D 3
`
`DEF
`D 1
`D 2
`
`D 3
`
`Incorporated or Principal Place
`of Busmess In Th_'S _State
`Incorporated and Principal Place
`of Business In Another State
`Foreign Nation
`
`PTF
`E 4
`
`E 5
`
`D 6
`
`DEF
`D 4
`
`D 5
`
`D 6
`
`IV. NATURE OF SUIT (PLACE AN IN ONE BOX ONLY)
`CONTRACTS
`TORTS
`110 lnsurance
`D
`120 Marine
`130 Miller Act
`140 Negotiable Instrument
`150 Recovery of Over ayment
`& Enforcement o Judgment
`151 Medicare Act
`152 Recove
`of Defaulted
`Student oans (Excl.
`Veterans)
`1“'s:t;m‘§e‘::Tl:2avm°"*°*
`160 Stockho|der’s Suits
`190 other contract
`..
`.
`195 Contract Product Liability
`
`PERSONAL INJURY
`310 Airplane
`315 AI."PI.a."e P"°d”°t
`Liability
`s|ander
`32o Assault, Libel &
`
`i
`
`330 F_(le;:II¢)eliIlal:|yEmp|oyers
`340 Marine
`345 Marine Product
`L‘ b'l'
`ssoM'3m'r"v’enicie
`355 Motor Vehicle .
`Product Liability
`360 Other Personal Injury
`
`
`
`|:l|:l|:l|:l|:l|:l|:l|:l|:l
`
`PERSONAL INJURY
`362 PerS°nal lnlu
`-
`Med" Malpr-ac Ice
`365 Personal |nJgITItyT
`368 Asbestos Personal
`P'°d“°* '-la
`I
`'
`P d
`t
`l:‘lIaub"l-Ylllyr° “C
`PERSONAL PROPERTY
`370 other Fraud
`-
`-
`§Z.‘iIi2‘IL".'iTJ:2S;".°
`Property Damage
`335 Property Damage _
`Product Liability
`
`REAL PROPERTY
`210 Land Condemnation
`220 Foreclosure
`230 R (L
`d
`Efgctmeeanste an
`240 Torts to Land
`245 Tort Product Liability
`290 All other Real
`Property
`
`CIvIL RIGHTS
`441 Voting
`442 Employment
`443 H
`'
`/
`A‘¢):::|rrrT1%dations
`444 Welfare
`440 Other Civil Rights
`
`PRISONER PETITIONS
`510 Motions to Vacate Sentence
`HABEAS CORPUS.
`'
`530 General
`535 993*“ P°"a'*Y
`54° ""_a'_‘da_"‘“‘ 8‘ °'d°'
`550 Civil Rights
`_
`l
`555 Prisoner Conditions
`
`V. ORIGIN (PLACE AN “
`
`” IN ONE BOX ONLY)
`
`IXOrigina| Proceeding
`
`D Removal from
`State Court
`
`D Remanded from
`Appellate Court
`
`D Reinstated or
`Reopened
`
`IIIIIIIIII
`
`:
`
`_
`
`610 Agrlcullure
`620 Other Food and Drug
`625 Dru Related Seizure
`gal r°pe'Ty 21 use
`63° Lnu°r Laws
`640 RR‘ & Truck
`650 Airline Regs.
`660 Occupational
`Safetymealth
`°°°°*“°'
`
`710 Fair Labor Standards
`Act
`720 T-ab°'.’M9mT-
`Relatlons
`730 'Eab°rIM9m£'
`DFsI::‘l"';2[‘l§e Act
`740 Rallway Labor Act
`790 Eme;t'l':E°r
`791 Emil Rel
`lnc
`Security Act
`
`BANKRUPTCY
`D 422 Appeal 28 U561“
`g 423 wlllldrawl 28 use
`157
`
`PROPERTY RIGHTS
`
`D 820 Copyrights
`R 830 Patent
`8 84°rrademark
`
`SOCIAL SECURITY
`
`861 HlA(,l395fl.I
`862 Black Lung (923)
`,6, Dlwmlww (4o5(g))
`864 SSID Title XVI
`865 Rsl l4o5lg))
`
`FEDERAL TAX SUITS
`
`D 870 Taxes (U-S- Plaintiff
`or Defendant)
`D 871 |£%SU—S'I':t1i7rl¢5iogarty
`
`OTHER STATUTES
`400 Slale Reapportionrnent
`410 Antitrust
`430 Banks and Banking
`450 CommerceI|CC Ratesl
`etc
`460 De ortation
`470 Ragketeer Influenced
`and corrupt
`organlzallons
`810 Selective Service
`ssosecurmes:
`°°"l"l°dl*le5’EX°l‘a"9e
`875 Customer Challenge
`12 use 3410
`891 Agrlcullural Acts
`'
`'
`'
`'
`892 Exglpomlc Stabilization
`893 Environ mental Matters
`894 Enerlllyllllocallon Ad
`895 Freedom of Information
`Act
`900 Appeal of Fee
`Determination Under
`Equal Access to Justice
`950 Constitutionality of
`890 ofaategtjtfes A l.
`er
`3 U °l'Y C l°"5
`
`D Transfer from
`another district
`(specify)
`
`D Multidistrict
`Litigation
`
`D Appeal to District
`Judge from Mag.
`Judgment
`
`(CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEF STATEMENT OF CAUSE. DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
`VI
`Federal False Advertising and Unfair Competition, 15 U.S.C. Section 1l25(a); Declaratory Judgment, 28 U.S.C. § 2201
`
`D CHECK ll: THlS ls A CLASS
`ACTION UNDER F'R'C'P- 23
`
`DEMAND $ In]-unctive Relief
`Unspecified Damages
`
`CHECK YES only If demanded in complaint:
`JURY DEMAND K YES
`D NO
`
`May 18, 2006
`FOR OFFICE USE ONLY
`RECEIPT #
`
`AMOUNT
`
`(SEE INSTRUCTIONS)
`
`JUDGE
`
`DOCKET NUMBER
`
`SIGNATURE OF ATTORNEY OF RECORD
`
`s/Kurt S. Lewis
`
`APPLYING IFB
`
`JUDGE
`
`MAG. JUDGE
`
`v"_
`
`DATE
`
`

`
`Case‘E:0ES—cv—OG938-LTE3 Documentt
`
`Fiie-ad Q5/18./‘£006
`
`Pagetofzfi
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF COLORADO
`
`Civil Action No.
`
`KOSMEDIX, INC., a Texas Corporation,
`
`Plaintiff,
`
`V.
`
`ALLERGAN, INC., a Delaware corporation;
`INAMED CORPORATION, a Delaware corporation; and
`LABORATOIRES D’ESTHETIQUE APPLIQUEE CORPORATION, a French corporation,
`
`Defendants.
`
`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
`
`WITH JURY DEMAND
`
`Plaintiff Kosmedix, Inc. (“Kosmedix”) through its attorneys, Lewis Scheid, LLC and Hill
`
`& Robbins, P.C., states and alleges the following as its Complaint for Damages and Injunctive
`
`Relief with Jury Demand (“Complaint”) against Defendants Allergan, Inc. (“Allergan”), Inamed
`
`Corporation (“Inamed”), and Laboratoires D’Esthetique Appliquee Corporation (“Laboratoires”)
`
`(collectively referred to herein as “Defendants”). All of the allegations and other factual
`
`contentions which are made upon information and belief were formed after inquiry reasonable
`
`under the circumstances and are premised on the belief that the same are likely to have
`
`evidentiary support after a reasonable opportunity for further investigation and discovery.
`
`

`
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`Page2of2ES
`
`I.
`
`INTRODUCTION
`
`l.
`
`Kosmedix brings this action for declaratory judgment, federal unfair competition
`
`and false designation of origin pursuant to § 43(a) of the Lanham Act, 15 U.S.C. § ll25(a),
`
`common law unfair competition and misappropriation, violation of the Colorado Consumer
`
`Protection Act, C.R.S. § 6-l-l0l, et seq., unjust enrichment, and civil conspiracy arising from
`
`Defendants’ unauthorized use of the mark JUVEDERM to market and promote aesthetic
`
`skincare products in competition with Kosmedix’s JUVIDERM brand aesthetic skincare
`
`products in the United States.
`
`II.
`
`PARTIES
`
`2.
`
`Kosmedix is a corporation organized and existing under the laws of the State of
`
`Texas, registered with the state of Colorado, with its principal place of business located at 7847
`
`E. Severn Place, Denver, Colorado 80230. Kosmedix is a dermatological skincare company that
`
`markets and sells aesthetic skincare products in the United States.
`
`3.
`
`Allergan is a corporation organized, existing, and doing business under the laws
`
`of the State of Delaware, with its principal of business located at 2525 Dupont Drive, Irvine,
`
`California 92612. Allergan is a pharmaceutical company engaged in, among other things,
`
`research, development, manufacture, and sale of aesthetic skincare products in the United States
`
`and elsewhere. Allergan acquired Defendant Inamed in March 2006, and Inamed is now a
`
`wholly owned subsidiary of Allergan.
`
`4.
`
`Inamed is a corporation organized, existing, and doing business under the laws of
`
`the state of Delaware, with its principal place of business located at 5540 Ekwill Street, Suite D,
`
`

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`
`Santa Barbara, California 93111-2336.
`
`Inamed is engaged in research, development,
`
`manufacture and sale of aesthetic skincare products in the United States and elsewhere.
`
`In
`
`January 2004, Inamed acquired the exclusive rights to develop, market and distribute products
`
`under the mark JUVEDERM in the United States. As of March 2006, Inamed merged with and
`
`became a wholly owned subsidiary of Allergan. Upon information and belief, Inamed is
`
`currently developing, marketing, and distributing products bearing the JUVEDERM mark as a
`
`wholly owned subsidiary of Defendant Allergan.
`
`5.
`
`Laboratoires is a French corporation with its principal place of business located at
`
`31 rue des Colonnes du Trone, Paris, France. Upon information and belief, Laboratoires is a
`
`member of the Corneal Group in France and is the owner of the JUVEDERM mark in France.
`
`III.
`
`JURISDICTION AND VENUE
`
`6.
`
`This Court has original jurisdiction pursuant to 15 U.S.C. § 1121, 15 U.S.C. §
`
`1125(a) and 28 U.S.C. §1338(a) because this is a civil action arising under the Lanham Act, 15
`
`U.S.C. § 1051, et seq. This Court also has jurisdiction over Plaintiff’ s claims under Colorado
`
`law pursuant to 28 U.S.C. § 1338(b) and 28 U.S.C. § 1367.
`
`7.
`
`Venue is proper pursuant to 28 U.S.C. § 1391(b)(2), § 1391(c), and § 1391(d)
`
`because: (a) a substantial part of the events giving rise to these claims occurred in this judicial
`
`district, as described herein; (b) each Defendant was subject to personal jurisdiction in this
`
`district at the time the action was commenced; and (c) Defendant Laboratoires is an alien, as
`
`described above, and thus, may be sued in any district.
`
`

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`8.
`
`Personal jurisdiction exists because each Defendant and/or its agents, partners, or
`
`joint venturers have solicited, conducted and transacted business within the State of Colorado,
`
`thereby purposefully availing themselves of the privilege of acting in the State of Colorado.
`
`Defendants Inamed and Allergan are both publicly traded corporations who engage in business
`
`nationwide, including in Colorado, and who market, distribute and sell their goods and services
`
`nationwide, including in Colorado.
`
`In addition, Defendants have advertised, marketed, and/or
`
`offered goods or controlled the offering of goods bearing infringing marks and designations in
`
`this District, and have directed, targeted, and inflicted injurious consequences on Kosmedix in
`
`Colorado.
`
`IV.
`
`FACTS
`
`9.
`
`Kosmedix is a dermatological products company who has been and currently is
`
`engaged in the research, development, distribution, and sale of aesthetic skincare products.
`
`10.
`
`Kosmedix’s products include a wide range of skincare products including, but not
`
`limited to, cleansers, masques, moisturizers, creams and other serums and solutions for general
`
`skin care and treatment of lines, wrinkles, stretch marks and other skin imperfections. All of the
`
`Kosmedix’s products are marketed, advertised and sold under
`
`the mark “JUVIDERM”
`
`(hereinafter referred to as the “JUVIDERM Mark” or “JUVIDERM Brand”).
`
`ll.
`
`Kosmedix has advertised, marketed and sold its JUVIDERM Brand products
`
`throughout the United States, including Colorado, since at least as early as 2002. Kosmedix’s
`
`advertisement, marketing, and sale of its JUVIDERM Brand products has been continuous and
`
`uninterrupted since that time.
`
`

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`l2.
`
`Kosmedix has promoted and advertised the JUVIDERM Brand products in
`
`various local, regional and national sources, including, but not limited to, print, internet, and
`
`television media directed at the market for skincare products generally, and the market for
`
`treatment of wrinkles and other skin imperfections and other anti-aging products in particular.
`
`13.
`
`The JUVIDERM Brand products are also advertised, marketed, and sold to the
`
`public through dermatology clinics.
`
`In addition, Kosmedix has prominently displayed the
`
`JUVIDERM Mark on letter heads,
`
`invoices, and on the product containers and displays
`
`associated therewith.
`
`14.
`
`Kosmedix has expended hundreds of thousands of dollars advertising and
`
`marketing its products under the JUVIDERM Mark and establishing the JUVIDERM Mark as
`
`indicator of source, origin, and quality.
`
`15.
`
`As a result of Kosmedix’s use and promotion of the JUVIDERM Mark, the
`
`JUVIDERM Mark gained strong public recognition and the public had come to identify the
`
`goods offered under the JUVIDERM Mark as originating from, sponsored by, or associated with
`
`Kosmedix. The public came to distinctly associate the JUVIDERM Mark solely with Kosmedix
`
`as a source of high quality goods.
`
`16.
`
`By virtue of its continuous use of the JUVIDERM Mark as a means to identify
`
`and distinguish its skincare products from those made and sold by others, Kosmedix owns
`
`nationwide common law rights to use the JUVIDERM Mark.
`
`17.
`
`On October 9, 2003, Kosmedix filed a federal trademark application for its
`
`JUVIDERM Mark with the United States Patent and Trademark Office (“PTO”), Serial No.
`
`

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`78/311,516 (“KosmediX’s Trademark Application”). Kosmedix’s Trademark Application was
`
`filed pursuant to 15 U.S.C. § 1051(a) as a trademark used in United States commerce.
`
`18.
`
`According to a CNNMoney.com article dated February 5, 2006, “in 2005
`
`Americans spent more than $12.5 billion on cosmetic procedures, the majority of which were
`
`noninvasive...With baby boomers and more men looking for creative ways to slow the aging
`
`process, the ‘medical-aesthetic’ economy. . .could easily surpass $20 billion by the end of 2006.”
`
`Even given this huge increase in popularity of noninvasive cosmetic procedures, the article still
`
`described the market as “very underpenetrated.”
`
`19.
`
`Defendants are also engaged in research, development, distribution and sale of
`
`aesthetic skincare products, including but not limited to, many of the same goods that Kosmedix
`
`offers for treatment of wrinkles and other skin imperfections. Upon information and belief,
`
`Defendants either intend to sell or are selling, in the United States, aesthetic skincare products
`
`under the mark JUVEDERM.
`
`20.
`
`Defendants’ JUVEDERM products are made with the same active ingredient as at
`
`least one of Kosmedix’s JUVIDERM Brand products — hyaluronic acid.
`
`Defendants’
`
`JUVEDERM products are designed to reduce signs of aging by smoothing lines and wrinkles of
`
`the human skin.
`
`21.
`
`On May 19, 2003, Laboratoires filed a federal trademark application with the
`
`PTO,
`
`for
`
`the mark “JUVEDERM,” Serial No. 78/251,561
`
`(“Laboratoires Trademark
`
`Application”).
`
`

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`
`22.
`
`Laboratoires Trademark Application was filed pursuant to 15 U.S.C. § 105 l(b), as
`
`a trademark which Laboratoires has a bona fide intention of using in United States commerce.
`
`Laboratoires Trademark Application was also filed pursuant to 15 U.S.C. § ll26(e) (Section
`
`44(e) of the Lanham Act) as a United States application relying on ownership of foreign
`
`registration as a basis for registration in the United States. The foreign registration which served
`
`as the basis for filing pursuant to 15 U.S.C. § ll26 is Trademark No. 002196822 for the mark
`
`JUVEDERM registered June 25, 2002, with the Office for Harmonization in the Internal Market
`
`(“Laboratoires Foreign Registration”).
`
`23.
`
`On December 11, 2003, the PTO issued an office action to Laboratoires based on
`
`a likelihood of confusion with another pending mark called REJUVEDERM.
`
`In response to the
`
`office action, Laboratoires argued that its goods are only sold to plastic surgeons and are injected
`
`into the human skin to counteract wrinkles. Thus, the marks were not likely to be confused
`
`because of sophistication of the plastic surgeons and availability of the products, even though
`
`they have tangentially similar purposes (anti-aging remedies). The examining attorney at the
`
`PTO rejected this argument stating “the [e]nd user of the JUVEDERM dermal implant could
`
`easily assume that the same company makes the REJUVEDERM face cream as a daily
`
`complement to the implants. As such, confusion as to the source of the goods is likely.”
`
`Thereafter,
`
`the
`
`examining attorney suspended the
`
`application until determination of
`
`registerability of the prior pending application for the REJUVEDERM mark.
`
`24.
`
`On August 19, 2004, Defendant Inamed filed two separate federal trademark
`
`applications with the PTO for the marks .|[ J VEDERM SUB Q and JUVEDERM SUPERQ, for
`
`

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`use in connection with pharmaceutical preparations for the treatment of glabellar lines, facial
`
`wrinkles, asymmetries and defects and conditions of the human skin, Serial Nos. 78/470,603
`
`(“‘603 Application”) and 78/470612, respectively (“‘6l2 Application”).
`
`The Inamed ‘603
`
`Application and ‘612 Application were filed pursuant to 15 U.S.C. § 105 l(b), as trademarks that
`
`Inamed has a bona fide intention of using in United States commerce. Both the ‘603 Application
`
`and the ‘612 Application have been suspended based on a likelihood of confusion with
`
`Laboratoires Trademark Application.
`
`25.
`
`On May 19, 2005, Defendant Inamed filed a federal trademark application with
`
`the PTO for the mark “JUVEDERM” in connection with pharmaceutical preparations for the
`
`treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the
`
`human skin, Serial No. 78/633,566 (“‘566 Application”). The ‘566 Application was filed under
`
`15 U.S.C. § l05l(b) as a trademark that Inamed has a bona fide intention of using in United
`
`States commerce. On December 14, 2005, the ‘566 Application was suspended based in part on a
`
`likelihood of confusion with Kosmedix’s Trademark Application for the JUVIDERM Mark.
`
`26.
`
`Defendants have actual knowledge of Kosmedix’s ownership and prior use of the
`
`JUVIDERM mark. The Defendants have continued to promote and market their JUVEDERM
`
`products despite this knowledge.
`
`27.
`
`Defendants have begun a national marketing campaign to promote the sale of the
`
`aesthetic skincare products under the mark JUVEDERM. Among other things, Gary Monheit,
`
`M.D., touted Defendants JUVEDERM products in a presentation to the annual meeting of the
`
`American Society for Derrnatologic Surgery held on September 30 — October 3, 2004. A
`
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`summary of Dr. Monheit’s presentation was published in the November/December 2004 issue of
`
`Aesthetic Buyers Guide, where he described the .II 1 VEDERM products as having the “potential
`
`9
`to become the mainstay of facial fillers.’ Dr. Monheit is an associate clinical professor of
`
`dermatology and ophthalmology at the University of Alabama at Birmingham and has conducted
`
`research for and consulted with Inamed.
`
`28.
`
`Dr. Monheit similarly touted Defendants JUVEDERM products in 2004 in the
`
`Cosmetic Surgery Times and later in April 2005 in the Dermatology Times, a leading
`
`newsmagazine for dermatologists.
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`29.
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`On March 3, 2006, Inamed announced in a press release that Dr. Monheit would
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`be presenting its Phase III clinical data for Inamed’s JUVEDERM products at the 64th Annual
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`Meeting of the American Academy of Dermatology in San Francisco, California. The American
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`Academy of Dermatology describes itself on its website as “the largest, most influential and
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`most representative of all dermatologic associations. With a membership of over 13,700, it
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`represents virtually all practicing dermatologists in the United States.” Dr. Monheit is the
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`president of the American Society of Derrnatologic Surgery.
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`30.
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`Inamed’s press release described its JUVEDERM products as “an important
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`9
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`advancement in the treatment of facial wrinkles.’
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`This press release was distributed to and
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`published in the Healthcare Sales & Marketing Network News, Pharmacy Choice-
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`Pharmaceutical News and MSN Money, among other sources, which were circulated on the
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`intemet.
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`31.
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`On November 8, 2005, Defendants Inamed and Laboratoires, acting in concert,
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`instituted an adversary proceeding in the PTO, opposing registration of Kosmedix’s JUVIDERM
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`Mark. That proceeding was given Opposition No. 91167450 (“Opposition Proceeding”).
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`32.
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`In the Opposition Proceeding and Notice of Opposition filed in connection
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`therewith, Defendants Inamed and Laboratoires admit that KosmediX’s JUVIDERM Mark is
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`likely to cause confusion, mistake or deception by causing the public to believe that the goods
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`offered in connection with Kosmedix’s JUVIDERM Mark originate from, or are otherwise
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`sponsored or endorsed by Defendants Inamed and Laboratoires, by virtue of Defendants Inamed
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`and Laboratoires use of the mark JUVEDERM.
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`33.
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`In the Opposition Proceeding and the Notice of Opposition filed in connection
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`therewith, Defendant Inamed also alleges that it adopted and began to use its JUVEDERM mark
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`at least as early as May 2004, and that the JUVEDERM mark has been continuously used in the
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`United States since that time. Defendant Inamed also admits that there have been extensive
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`sales, advertising and promotion of the JUVEDERM mark.
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`34.
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`Inamed began a clinical study of the JUVEDERM product in the United States
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`during the fourth quarter of 2004 and completed the filing of a premarket approval application
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`with the Food and Drug Administration (“FDA”) in December 2005.
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`35.
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`Upon information and belief, Defendants intend to begin a large-scale national
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`advertising campaign in June 2006 to promote their JUVEDERM products in the United States.
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`36.
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`Upon information and belief, Defendants’ JUVEDERM products are sold in the
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`United States. Among other things, American clinics, like Contour Dermatology & Cosmetics
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`Surgery Center
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`located in California, advertise injectable filler
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`information and include
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`Defendants’ JUVEDERM products as products they offer for sale.
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`37.
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`Upon information and belief, Defendants have caused to be published on the
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`internet, a transcription of an Allergan conference call that took place on March 27, 2006, which
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`discusses the acquisition if Inamed by Allergan and the integration of Inamed’s business with
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`Allergan. In that document, Inamed’s products are repeatedly referred to as “Juviderm.”
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`38.
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`During March and April 2006, Defendants offered to purchase Kosmedix’s rights
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`in its JUVIDERM Mark for a nominal amount.
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`39.
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`Defendants JUVEDERM mark is nearly identical in sound and appearance to
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`Kosmedix’s JUVIDERM Mark.
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`40.
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`Upon information and belief, some of the packaging associated with Defendants’
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`products is similar in design and overall look and feel to some of Kosmedix’s packaging of its
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`JUVIDERM Brand products.
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`41.
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`Defendants use or intend to use the JUVEDERM mark on goods that are either
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`identical or highly related to Kosmedix’s JUVIDERM Brand products.
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`42.
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`Upon information and belief, Defendants promote and either intend to sell or are
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`selling, in the United States, products under the JUVEDERM mark through the same channels of
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`trade and to the same customers and types of customers to whom the Plaintiff has sold and
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`continues to sell its JUVIDERM Brand products.
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`43.
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`Despite actual knowledge of Kosmedix prior use of and rights in the JUVIDERM
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`Mark, Defendants, severally and in concert, continue to advertise, market, promote, and sell
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`competing goods under the confusingly similar mark JUVEDERM. Defendants’ use of the
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`JUVEDERM mark to market, advertise, promote and sell competing goods constitutes
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`infringement of Kosmedix’s JUVIDERM Mark and is likely to cause confusion, deception or
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`mistake as to the source, origin, affiliation, sponsorship or approval of Defendants’ goods by
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`Kosmedix.
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`In addition, Defendants sale and supply of goods to third parties knowing, or having
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`reason to know, that such third parties will use the goods to infringe Plaintiffs JUVIDERM
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`Mark is likely to cause confusion, deception or mistake as to the source, origin, affiliation,
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`sponsorship or approval of Defendants’ goods by Kosmedix.
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`44.
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`As described in paragraph 37 above, Defendants have caused to be published on
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`the internet, a transcription of an Allergan conference call that took place on March 27, 2006,
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`which discusses the acquisition if Inamed by Allergan and the integration of Inamed’s business
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`with Allergan.
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`In that document, Inamed’s products are repeatedly referred to as “Juviderm.”
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`Defendants’ use of Kosmedix’s JUVIDERM Mark is likely to cause confusion, deception or
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`mistake as to the source, origin, affiliation, sponsorship or approval of Defendants’ goods by
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`Kosmedix.
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`45.
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`Defendants have committed acts of contributory trademark infringement by
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`distributing the infringing products to third party dealers, distributors and retailers knowing that
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`those third parties would sell and distribute such products under the infringing JUVEDERM
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`mark.
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`46.
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`Despite actual knowledge of Kosmedix prior use of and rights in the JUVIDERM
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`Mark, Defendants, severally and in concert, continued to supply such third parties with products
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`bearing the infringing JUVEDERM mark and upon information and belief have take no steps to
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`stop such third party infringements using products supplied by Defendants.
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`47.
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`Kosmedix is aware of instances of actual confusion among consumers as to the
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`source of products offered under the JUVIDERM Mark, and as to whether Kosmedix offers the
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`products offered under the mark JUVEDERM, and as to whether there is affiliation between the
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`companies offering the products under the JUVIDERM and JUVEDERM marks.
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`In addition,
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`there is significant confusion among the public, as is evidenced by such things as a New York
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`Times April 30, 2006 article entitled “Fill’er Up!” wherein the writer references “Juviderm” as
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`the next inj ectable dermal filler to be approved by the FDA.
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`48.
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`Upon information and belief, Defendants’ conduct, individually, and in concert,
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`has or will,
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`if allowed to continue, destroy substantially all of Kosmedix’s value in its
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`JUVIDERM Mark and the extensive advertising and marketing done to promote the mark.
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`49.
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`Upon information and belief, as a result of the significant confusion in the
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`marketplace, and/or the potential confusion in the marketplace, and/or a potential controversy
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`between the parties, Kosmedix has been foreclosed from offering its JUVIDERM products in the
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`retail marketplace.
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`50.
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`Defendants’ acts of infringement and contributory infringement of Kosmedix’s
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`JUVIDERM Mark have been committed knowingly nationwide, in interstate commerce, within
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`the State of Colorado, and under the jurisdiction of this Court.
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`V.
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`CLAIMS FOR RELIEF
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`FIRST CLAIM FOR RELIEF
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`(Declaratory Judgment pursuant to 28 U.S.C. § 2201 and F.R.C.P. 57)
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`51.
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`Kosmedix incorporates herein by reference each and every allegation in the
`
`preceding paragraphs.
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`52.
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`Kosmedix has been and currently is engaged in the research, development and
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`sale of aesthetic skincare products under the JUVIDERM Mark.
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`53.
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`Through its continuous and uninterrupted use of the JUVIDERM Mark, as
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`detailed herein, Kosmedix owns exclusive rights to use the JUVIDERM Mark in connection with
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`aesthetic skincare products and related products in the United States.
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`54.
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`Defendants’ alleged use of the mark JUVEDERM in connection with their
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`competing aesthetic skincare products in the United States post-dates any such use by Kosmedix
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`of its JUVIDERM Mark in the United States. Thus, Kosmedix’s rights are superior to those of
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`Defendants, in the United States.
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`55.
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`Upon information and belief, Defendants’
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`intend to launch a large scale
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`nationwide advertising campaign in the United States during June 2006 to promote their products
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`under the JUVEDERM mark.
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`56.
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`Defendants Inamed and Laboratoires have opposed Kosmedix’s Trademark
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`Application filed with the PTO.
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`57.
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`Defendants’ activities have given rise to an actual controversy regarding the
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`validity, ownership and right to use the .|[ J V IDERM and .|[ J VEDERM marks.
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`58.
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`Kosmedix is entitled to declaratory judgment that its JUVIDERM Mark is valid
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`and enforceable and the property of Kosmedix, at common law and pursuant to the Lanham Act,
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`15 U.S.C. §§ 1051, et seq.
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`SECOND CLAIM FOR RELIEF
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`(Federal Unfair Competition and False Designation of Origin)
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`59.
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`Kosmedix incorporates herein by reference each and every allegation in the
`
`preceding paragraphs.
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`60.
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`Kosmedix’s JUVIDERM Mark had become uniquely associated with Kosmedix
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`and indicated to purchasers that
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`the sole source of the JUVIDERM Brand products was
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`Kosmedix.
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`61.
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`Defendants’
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`acts
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`as alleged herein constitute, among other
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`things,
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`false
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`designations of origin,
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`false or misleading descriptions of fact, or
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`false or misleading
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`representations of fact which are likely to cause confusion or mistake, or to deceive the public as
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`to the origin, sponsorship, affiliation, or approval of the goods of Defendants, and otherwise
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`constitute infringement and unfair competition in violation of 15 U.S.C. § ll25(a).
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`62.
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`The Defendants’ acts of infringement and contributory infringement, unless
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`enjoined by the Court, will continue to cause irreparable damages to Kosmedix’s business
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`reputation and good will and its JUVIDERM mark, which is symbolic thereof.
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`It is difficult to
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`ascertain the amount of compensation which would afford adequate relief for such continuing
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`acts and Kosmedix has no adequate remedy at law.
`
`63.
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`The acts of the Defendants in using the JUVEDERM mark have caused, and are
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`likely to continue causing, damages to Kosmedix. Kosmedix is unable currently to calculate the
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`monetary value of the damages it has suffered as a result of Defendants’ aforesaid conduct.
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`Those damages include, but are not limited to, diminution in value of Plaintiff s good will and
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`the value of its JUVIDERM Mark, destruction of identity, foreclosure of markets, lost sales and
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`profits, lost business opportunities, sales made by Defendants, their retailers and distributors and
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`other third parties using Defendants infringing JUVEDERM mark, or any other mark that is
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`substantially similar to Kosmedix’s JUVIDERM Mark, lost royalties, loss of business reputation
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`and damages for actual and prospective advertising needed to attempt to correct damages and
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`confusion created by Defendants and by sales of Defendants products through third parties.
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`64.
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`Defendants’ acts have been committed willfully and intentionally, making this an
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`exceptional case and entitling Kosmedix to recover its costs of the action and reasonable
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`attorneys’ fees pursuant to 15