Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA887789
`04/04/2018
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
`
`Signature
`
`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91234098
`
`Plaintiff
`Allergan, Inc.
`
`KENNETH L WILTON
`SEYFARTH SHAW LLP
`2029 CENTURY PARK EAST , SUITE 3500
`LOS ANGELES, CA 90067
`UNITED STATES
`Email: kwilton@seyfarth.com, jgimble@seyfarth.com, ttabdocket@seyfarth.com,
`hinchey_susan@allergan.com, matthew.brady@allergan.com,
`lgregory@seyfarth.com
`Response to Board Order/Inquiry
`
`Kenneth L. Wilton
`
`kwilton@seyfarth.com, lgregory@seyfarth.com, jgimble@seyfarth.com
`
`/s/ Kenneth L. Wilton
`
`04/04/2018
`
`2018-04-04 - Opposer Submission re Suspension.pdf(15828 bytes )
`2018-04-04 - Wilton Decl.pdf(10947 bytes )
`Exh 1 - 2017-04-05 - 1 - AI - Complaint with exhibits - Reduced.pdf(3968910
`bytes )
`Exh 2 - 2017-05-24 - 24 - Dima Answer.pdf(187148 bytes )
`Exh 3 - 2018-03-01 - 79 - AL - Joint Stip of Dismissal of KBC Media Relations w-
`o Prejudice.pdf(159749 bytes )
`Exh 4 - 2017-07-21 - 40 - Court - Order Granting Preliminary Injunctive Re-
`lief.pdf(41671 bytes )
`Exh 5 - WIPO Record for IR No 1266937.pdf(32453 bytes )
`Exh 6 - 2016-02-18 - EU Application for Invalidity.pdf(4980923 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 79/975,292
`
`ALLERGAN, Inc.,
`
`Opposer,
`
`Opposition No. 91234098
`
`v.
`
`DERMAVITA Limited Partnership,
`
`Applicant.
`
`And Related Counterclaims
`
`OPPOSER ALLERGAN, INC.’S RESPONSE TO ORDERS REGARDING POSSIBLE
`
`SUSPENSION OF PROCEEDINGS [23 TTABVUE, 25 TTABVUE]
`
`

`

`I.
`
`INTRODUCTION
`
`On March 22 and March 31, 2018, the Board issued Orders [23 TTABVUE, 25
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`TTABVUE] requiring the parties to submit the operative pleadings in the civil action
`
`encaptioned Allergan, Inc. v. Dermavita Limited Partnership, et al., Case No. 8:17-cv-00619,
`
`which is pending in the United States District Court for the Central District of California (“Civil
`
`Action”). This submission responds to those Orders.
`
`On a preliminary note, counsel for Opposer apologizes for not bringing the pendency of
`
`the Civil Action to the Board’s attention at an earlier date. While not an excuse, counsel believes
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`the substantive claims and the procedural history of the Civil Action are unlikely to have a
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`bearing on this proceeding pursuant to 37 C.F.R. § 2.117(a). Nonetheless, Opposer understands
`
`that the Board may exercise its discretion to suspend these proceedings, and briefly outlines
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`below the progress and status of the Civil Action. The operative pleadings and orders are
`
`attached as exhibits to the accompanying declaration of Kenneth L. Wilton.
`
`In addition, Section 510.02(a) of the TBMP indicates that the Board “may also, in its
`
`discretion, suspend a proceeding pending the final determination of … a foreign action between
`
`the parties, wherein one party challenges the validity of a foreign registration upon which the
`
`other party’s subject application is based.” As explained below, a related company of Opposer
`
`has filed a revocation proceeding against Applicant’s Basic Registration underpinning the
`
`Section 66a application at issue. Opposer therefore includes information regarding that
`
`revocation proceeding in this submission.
`
`II.
`
`PROCEDURAL HISTORY OF CIVIL ACTION
`
`The Civil Action was filed on April 5, 2017, naming Applicant, Dima Corp. S.A. and
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`KBC Media Relations LLC as defendants. A copy of the Complaint is attached as Exhibit 1 to
`
`the Wilton Declaration. Opposer’s Complaint, alleging trademark infringement, unfair
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`competition, dilution, false advertising and conspiracy, was based on a press release issued by
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`Dima Corp. stating that, under license from Applicant, it would be selling cosmetic products in
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`the United States under the mark “Juvederm.” [Wilton Decl. Ex. 1 at Ex. C.] The Complaint
`
`

`

`does not mention or relate to any attempt by Applicant to provide the services identified in the
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`application at issue in this proceeding. Dima Corp. answered the Complaint on May 24, 2017.
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`[Wilton Decl. ¶ 4 & Ex. 2.] Dima Corp. did not attack the validity of Opposer’s JUVEDERM-
`
`formative registrations. [Id.] KBC Media Relations LLC, the agency through which the press
`
`release was issued, was later dismissed without prejudice. [Wilton Decl. ¶ 5 & Ex. 3.]
`
`On July 21, 2017, the District Court issued an order granting preliminary injunctive relief
`
`against Dima Corp. [Wilton Decl. ¶ 6 & Ex. 4.] The Order precludes Dima Corp., and those
`
`acting in active concert with it, from using the JUVEDERM trademark in connection with the
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`advertising or sale of Dima Corp.’s products in the United States or in commerce affecting the
`
`United States. [Id.]
`
`In response to the Complaint, Applicant filed two motions to dismiss for lack of personal
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`jurisdiction. [Wilton Decl. ¶ 7.] The first such motion was denied without prejudice to allow for
`
`jurisdictional discovery to be taken; the latter was granted on January 3, 2018. [Id.] The Order
`
`on the second motion is attached as Exhibit 1 to Applicant’s response to the Board’s Order. [24
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`TTABVUE 6-14.]
`
`As Applicant is aware, Opposer has informed the Court and Applicant that it intends to
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`seek entry of judgment under Fed. R. Civ. P. 54(b) against Dermavita in order to appeal the
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`dismissal order. [Wilton Decl. ¶ 8.] Unless and until the District Court’s Order is appealed and
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`reversed, however, Applicant will not be substantively involved in determining the merits of the
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`Civil Action. [Id.]
`
`III.
`
`PROCEDURAL HISTORY OF EUIPO PROCEEDING
`
`As noted above, the Board, in its discretion, may suspend a proceeding where “one party
`
`challenges the validity of a foreign registration upon which the other party’s subject application
`
`is based.” TBMP § 510.2(a). The Application at issue was filed by Applicant pursuant to the
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`Madrid Protocol and Section 66a of the Trademark Act (15 U.S.C. § 1141a) and is based on
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`International Registration No. 1266937. The Basic Registration (15 U.S.C. § 1141(2)) for
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`Applicant’s IR is EU Reg. No. 014016737. [Wilton Decl. ¶ 9 & Ex. 5.] Allergan Holdings
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`2
`
`

`

`France SAS, a related company of Opposer, has filed in the European Union Intellectual
`
`Property Office (EUIPO) an Application for a Declaration of Invalidity of EU Reg. No.
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`014016737. [Wilton Decl. ¶ 10 & Ex. 6.]
`
`Applicant has not yet responded to Application, and it is not clear when Opposer’s
`
`Application for a Declaration of Invalidity will be decided. [Wilton Decl. ¶ 11.] If the
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`Application is successful, Applicant’s Basic Registration will be cancelled, as will its
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`International Registration and, consequently, the Application at issue. 15 U.S.C. § 1141j(a). If
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`that occurs, Applicant will have the opportunity to transform its pending application to a national
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`application. 15 U.S.C. § 1141j(c).
`
`IV.
`
`CONCLUSION
`
`Opposer will provide any additional information related to the Civil Action and the
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`EUIPO Proceeding upon request.
`
`Date: April 4, 2018
`
`By:
`
`SEYFARTH SHAW LLP
`
`/s/ Kenneth L. Wilton
`Kenneth L. Wilton
`kwilton@seyfarth.com
`2029 Century Park East, Suite 3500
`Los Angeles, CA 90067-3021
`Telephone: (310) 277-7200
`Facsimile: (310) 201-5219
`
`Lauren M. Gregory
`lgregory@seyfarth.com
`1075 Peachtree St. NE, Suite 2500
`Atlanta, Georgia 30309
`Telephone: (404) 885-1500
`Facsimile: (404) 892-7056
`
`Attorneys for Opposer
`ALLERGAN, INC.
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on April 4, 2018, pursuant to 37 C.F.R. § 2.119(b), I caused
`
`OPPOSER ALLERGAN, INC.’S RESPONSE TO ORDERS REGARDING POSSIBLE
`
`SUSPENSION OF PROCEEDINGS [23 TTABVUE, 25 TTABVUE] to be served on
`
`Applicant by e-mailing a copy thereof to Applicant’s correspondence e-mail address of record as
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`follows:
`
`TANJA PROEHL
`GREER BURNS & CRAIN LTD
`300 SOUTH WACKER DRIVE, SUITE 2500
`CHICAGO, IL 60606
`aziegler@gbc.law, tproehl@gbc.law,
`tmdocket@gbclaw.net
`
`/s/ Lauren M. Gregory
`Lauren M. Gregory
`
`45586494v.4
`
`4
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application No. 79/975,292
`
`ALLERGAN, Inc.,
`
`Opposer,
`
`Opposition No. 91234098
`
`v.
`
`DERMAVITA Limited Partnership,
`
`Applicant.
`
`And Related Counterclaims
`
`DECLARATION OF KENNETH L. WILTON
`
`I, Kenneth L. Wilton, declare:
`
`1.
`
`I am an attorney licensed to practice in the State of California and a partner in the
`
`Los Angeles office of Seyfarth Shaw LLP. I and my firm represent Opposer Allergan, Inc.
`
`(“Opposer”) in this Opposition proceeding challenging United States Trademark Application
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`Serial No. 79/975,292 (the “Opposed Application”) filed by Applicant Dermavita Limited
`
`Partnership (“Applicant”). I make this declaration in support of Opposer’s Response to Orders
`
`Regarding Possible Suspension of Proceedings.
`
`2.
`
`On April 5, 2017, Opposer filed a Complaint against Applicant, Dima Corp. S.A.
`
`(“Dima Corp”), and KBC Media Relations LLC (“KBC”) to initiate a civil action in the United
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`States District Court for the Central District of California captioned Allergan, Inc. v. Dermavita
`
`Limited Partnership et al., Case No. 8:17-cv-00619 (the “Civil Action”). A true and correct copy
`
`of the Complaint is attached as Exhibit 1.
`
`45602149v.2
`
`

`

`3.
`
`Opposer’s Complaint, alleging trademark infringement, unfair competition,
`
`dilution, false advertising and conspiracy, was based on a press release issued by Dima Corp.
`
`stating that, under license from Applicant, it would be selling cosmetic products in the United
`
`States under the mark “Juvederm.” It did not mention or relate to any attempt by Applicant to
`
`provide the services identified in the Opposed Application.
`
`4.
`
`Dima Corp. answered the Complaint on May 24, 2017. A true and correct copy of
`
`Dima Corp.’s Answer is attached as Exhibit 2. Dima Corp. did not attack the validity of
`
`Opposer’s JUVEDERM-formative registrations.
`
`5.
`
`KBC, the agency through which the press release was issued, was later dismissed
`
`from the Civil Action without prejudice. A true and correct copy of the Stipulation dismissing
`
`KBC is attached as Exhibit 3.
`
`6.
`
`On July 21, 2017, the District Court issued an order enjoining Dima Corp., as well
`
`as those in active concert with it, from using the trademark JUVEDERM in connection with the
`
`advertising or sale of Dima Corp.’s products in the United States or in commerce affecting the
`
`United States. A true and correct copy of this order is attached as Exhibit 4.
`
`7.
`
`Applicant filed two motions to dismiss the Civil Action for lack of personal
`
`jurisdiction. The first was denied without prejudice to allow the parties to take jurisdictional
`
`discovery. The second was granted on January 3, 2018.
`
`8.
`
`Opposer has informed the District Court and Applicant that it intends to seek
`
`entry of final judgment under Fed. R. Civ. P. 54(b) against Applicant in order to appeal the
`
`dismissal order. Unless and until the District Court’s order is appealed and reversed, however,
`
`Applicant will not be substantively involved in determining the merits of the Civil Action.
`
`45602149v.2
`
`2
`
`

`

`9.
`
`Applicant filed the Opposed Application pursuant to the Madrid Protocol and
`
`Section 66a of the Trademark Act based on International Registration No. 1266937. The Basic
`
`Registration for Applicant’s International Registration is EU Reg. No. 014016737. A true and
`
`correct copy of the WIPO record for Applicant’s International Registration is attached as Exhibit
`
`5.
`
`10.
`
`Allergan Holdings France SAS, a related company of Opposer, has filed an
`
`Application for a Declaration of Invalidity of EU Reg. No. 014016737 in the European Union
`
`Intellectual Property Office (the “EUIPO Application”). A true and correct copy of the
`
`Application is attached as Exhibit 6.
`
`11.
`
`Applicant has not yet responded to the EUIPO Application, and it is not clear
`
`when the Application will be decided.
`
`I declare under penalty of perjury under the laws of the United States that the foregoing is
`
`true and correct. Executed this 4th day of April, 2018 at Los Angeles, California.
`
` __ /s/ Kenneth L. Wilton____________
`Kenneth L. Wilton
`
`45602149v.2
`
`3
`
`

`

`Exhibit 1
`Exhibit 1
`
`

`

`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 1 of 28 Page ID #:1
`
`SEYFARTH SHAW LLP
`KENNETH L. WILTON (SBN 126557)
`E-mail: kwilton@seyfarth.com
`2029 Century Park East, Suite 3500
`Los Angeles, California 90067-3021
`Telephone: (310) 277-7200
`Facsimile:
`(310) 201-5219
`
`CARRIE P. PRICE (SBN 292161)
`E-mail: cprice@seyfarth.com
`560 Mission Street, Suite 3100
`San Francisco, California 94105-2930
`Telephone: (415) 397-2823
`Facsimile:
`(415) 397-8549
`
`Attorneys for Plaintiff
`ALLERGAN, INC.
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`SOUTHERN DIVISION
`
`ALLERGAN, INC.,
`
`Plaintiff,
`
`v.
`
`DERMAVITA LIMITED PARTNERSHIP,
`DIMA CORP. S.A. and
`KBC MEDIA RELATIONS LLC,
`
`Defendants.
`
`Case No.
`
`8:17-cv-00619
`
`COMPLAINT FOR:
`
`INFRINGEMENT OF FEDERALLY
`REGISTERED TRADEMARKS
`(15 U.S.C. § 1114);
`
`FEDERAL UNFAIR
`COMPETITION
`(15 U.S.C. § 1125(a));
`
`FEDERAL DILUTION
`(15 U.S.C. § 1125(c));
`
`FEDERAL FALSE ADVERTISING
`(15 U.S.C. § 1125(a)); AND
`
`CONSPIRACY
`
`DEMAND FOR JURY TRIAL
`
`COMPLAINT OF ALLERGAN, INC.
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`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 2 of 28 Page ID #:2
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`Plaintiff Allergan, Inc. (“Allergan”), through undersigned counsel, hereby alleges
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`COMPLAINT
`
`as follows:
`
`NATURE OF THE CASE
`
`1.
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`In 2007, Allergan introduced to the United States market an injectable
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`pharmaceutical product called JUVÉDERM, a dermal filler administered by healthcare
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`professionals and indicated for improving the appearance of facial lines and wrinkles to
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`yield a more youthful appearance. Since 2007, Allergan has added a number of products
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`under its JUVÉDERM family of marks, referred to collectively herein as the
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`“JUVÉDERM Products.” The JUVÉDERM Products have been hugely successful:
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`sales in the United States have exceeded two billion dollars since 2007.
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`2.
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`On March 17, 2017, in the face of Allergan’s undisputed and incontestable
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`ownership rights in its JUVÉDERM trademark in the United States, Defendant Dima
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`Corp. S.A. announced via a press release issued by Defendant KBC Media Relations
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`LLC, that it had acquired a “full license” from Defendant Dermavita Limited Partnership
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`“to develop and market cosmetics products under the Juvederm trademark” and that it
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`intended to immediately introduce skincare products that would be available in “2000+
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`doctor’s offices in the United States by June 2017.” Defendants’ false and misleading
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`announcement has already caused confusion in the marketplace, and Defendants’
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`infringement will cause confusion among doctors and users of Allergan’s JUVÉDERM
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`products, irreparably harming Allergan.
`
`3.
`
`Also, Defendant Dermavita Limited Partnership currently maintains
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`websites at WWW.DERMAVITA.NET and WWW.DERMAVITA-ONLINE.COM that market
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`products under the “Juvederm” name. On the WWW.DERMAVITA.NET website, Dermavita
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`Limited Partnership markets these products in the United States, to United States
`
`consumers, under the heading “USA Offers.”
`
`4.
`
`This suit seeks to immediately address the impact of Defendants’ brazen
`
`decision to ignore and interfere with Allergan’s intellectual property rights, and to protect
`2
`COMPLAINT OF ALLERGAN, INC.
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`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 3 of 28 Page ID #:3
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`the consuming public, by prohibiting Defendants from marketing and selling a product in
`
`the United States under an identical, and obviously confusingly-similar, “Juvederm”
`
`mark.
`
`JURISDICTION AND VENUE
`
`5.
`
`This is an action for trademark infringement, unfair competition, dilution
`
`and false advertising under the United States Trademark Act, 15 U.S.C. §§ 1051, et seq.,
`
`as amended, and for conspiracy under California common law. Allergan’s claims for
`
`infringement of its federally registered trademarks, federal unfair competition, federal
`
`trademark dilution and federal false advertising arise under the United States Trademark
`
`Act, and are within the subject matter of the jurisdiction of this Court pursuant to 15
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`U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a). Allergan’s claim for relief for
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`conspiracy under the common law of the State of California is within the subject matter
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`jurisdiction of this Court pursuant to 28 U.S.C. §§ 1338(b) and 1367.
`
`6.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)
`
`because this judicial district is where the claim arose and where Allergan is suffering
`
`harm.
`
`7.
`On information and belief, Dermavita Limited Partnership develops,
`manufactures, markets, distributes, and sells “cosmeceutical”1 products for sale and use
`throughout the world, including the United States and the State of California.
`
`8.
`
`This Court has specific personal jurisdiction over Dermavita Limited
`
`Partnership because Dermavita Limited Partnership has committed, or aided, abetted,
`
`contributed to and/or participated in the commission of, the tortious act of trademark
`
`infringement and the other claims herein alleged that have led to foreseeable harm and
`
`injury to Allergan in the State of California.
`
`1 As noted by the U.S. Food & Drug Administration, “[w]hile the Federal Food, Drug,
`and Cosmetic Act (FD&C Act) does not recognize the term ‘cosmeceutical,’ the cosmetic
`industry uses this word to refer to cosmetic products that have medicinal or drug-like
`benefits.” See HTTPS://WWW.FDA.GOV/COSMETICS/LABELING/CLAIMS/UCM127064.HTM
`(last visited April 5, 2017).
`
`3
`COMPLAINT OF ALLERGAN, INC.
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`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 4 of 28 Page ID #:4
`
`9.
`
`On information and belief, Dima Corp. S.A. is a licensee of Dermavita
`
`Limited Partnership and develops, markets, distributes, and sells cosmeceutical products
`
`for sale and use, specifically to the United States and the State of California.
`
`10.
`
`This Court has specific personal jurisdiction over Dima Corp. S.A. because
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`Dima Corp. S.A. has committed, or aided, abetted, contributed to and/or participated in
`
`the commission of, the tortious act of trademark infringement and the other claims herein
`
`alleged that have led to foreseeable harm and injury to Allergan in the State of California.
`
`11.
`
`On information and belief, KBC Media Relations LLC has been retained by
`
`Dermavita Limited Partnership and/or Dima Corp. S.A. to market and promote the sale of
`
`their cosmeceutical products, and has taken affirmative steps to market and promote the
`
`sale of those products in the United States and the State of California.
`
`12.
`
`This Court has specific personal jurisdiction over KBC Media Relations
`
`LLC because KBC Media Relations LLC has committed, or aided, abetted, contributed to
`
`and/or participated in the commission of, the tortious act of trademark infringement and
`
`the other claims herein alleged that have led to foreseeable harm and injury to Allergan in
`
`the State of California.
`
`THE PARTIES
`
`13.
`
`Plaintiff Allergan is a Delaware corporation with a place of business at 2525
`
`Dupont Drive, Irvine, California 92612.
`
`14.
`
`On information and belief, Defendant Dermavita Limited Partnership
`
`(“Dermavita”) is a limited partnership organized and existing under the laws of the
`
`country of Lebanon, with places of business at Spears str., Al Itihad building. Floor 6,
`
`Mussaitbeh, Al Sanayeh Beirut, Lebanon and/or Corniche El-Mazraa, Main Road
`
`Lebanon & Gulf Bank Building, 4th Floor, Beirut, Lebanon.
`
`15.
`
`On information and belief, Defendant Dima Corp. S.A. (“Dima Corp.”) is a
`
`corporation organized and existing under the laws of the country of Luxembourg, with a
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`place of business at 98, rue de Bonnevoie, L-1260 Luxembourg.
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`4
`COMPLAINT OF ALLERGAN, INC.
`
`

`

`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 5 of 28 Page ID #:5
`
`16.
`
`On information and belief, Defendant KBC Media Relations LLC (“KBC
`
`Media”) is a limited liability company organized and existing under the laws of the State
`
`of New Jersey, with a place of business at 230 Kings Highway East, Suite 121,
`
`Haddonfield, New Jersey, 08033.
`
`Allergan Owns The Family Of Famous JUVÉDERM Marks.
`
`FACTUAL BACKGROUND
`
`17.
`
`Allergan and its subsidiaries manufacture, develop, sell and advertise an
`
`extensive array of pharmaceutical products and medical devices, including injectable
`
`dermal fillers indicated to reduce the appearance of facial lines and wrinkles and create a
`
`more youthful appearance.
`
`18.
`
`Since at least 2004 in Europe, and since at least 2007 in the United States,
`
`Allergan and its subsidiaries and predecessors-in-interest have continuously used
`
`JUVÉDERM-formative marks (the “JUVÉDERM Marks”) in connection with a line of
`
`injectable dermal fillers (the “JUVÉDERM Products”). Allergan’s predecessors-in-
`
`interest began marketing the JUVÉDERM Products under the JUVÉDERM Mark as
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`early as 2001.
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`19.
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`The primary active ingredient in Allergan’s JUVÉDERM Products is
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`hyaluronic acid.
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`20.
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`Since their introduction, Allergan’s JUVÉDERM Products have been
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`extremely successful. The JUVÉDERM Products are approved in 112 countries, and
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`more than 34 million units have been sold worldwide.
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`21.
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`Allergan directly, and through its subsidiaries, owns all right, title and
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`interest in and to the JUVÉDERM Marks globally, as well as the following United States
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`registrations of its JUVÉDERM Marks on the Principal Register:
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`a. Registration No. 3,706,974, granted November 3, 2009, for the mark
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`JUVEDERM in International Class 5 for “pharmaceutical preparations for
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`the treatment of glabellar lines, facial wrinkles, asymmetries and defects and
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`5
`COMPLAINT OF ALLERGAN, INC.
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`

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`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 6 of 28 Page ID #:6
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`conditions of the human skin, all to be sold and marketed only to licensed
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`physicians, surgeons, and healthcare professionals.”
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`b. Registration No. 4,380,506, granted August 6, 2013, for the mark
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`JUVEDERM VOLIFT in International Class 5 for “Pharmaceutical
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`preparations for the treatment of glabellar lines, facial wrinkles, asymmetries
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`and defects and conditions of the human skin; biological dermal implants,
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`namely, visco-supplementation solutions for filling wrinkles.”
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`c. Registration No. 4,380,507, granted August 6, 2013, for the mark
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`JUVEDERM VOLBELLA in International Class 5 for “Pharmaceutical
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`preparations for the treatment of glabellar lines, facial wrinkles, asymmetries
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`and defects and conditions of the human skin; biological dermal implants,
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`namely, visco-supplementation solutions for filling wrinkles.”
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`d. Registration No. 4,481,317, granted February 11, 2014, for the mark
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`JUVEDERM VOLUMA in International Class 5 for “Pharmaceutical
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`preparations for the treatment of glabellar lines, facial wrinkles, asymmetries
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`and defects and conditions of the human skin; biological dermal implants,
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`namely, visco-supplementation solutions for filling wrinkles.”
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`22.
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`Each of the foregoing registrations is valid and subsisting, and copies of the
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`certificates of registration for each are attached hereto as Exhibit A and incorporated
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`herein by reference.
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`23.
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`In total, Allergan currently owns applications to register and/or registrations
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`of more than 220 JUVÉDERM-formative marks in nearly 100 countries.
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`24.
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`Between 2007 and 2016, sales in the United States of the JUVÉDERM
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`Products exceeded $2.17 billion dollars.
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`25.
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`Similarly, through 2015, sales of the JUVÉDERM Products in the European
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`Union exceeded $900 million dollars.
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`26.
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`Between 2007 and 2016, the JUVÉDERM Products were supported by more
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`than $122 million dollars in advertising in the United States.
`6
`COMPLAINT OF ALLERGAN, INC.
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`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 7 of 28 Page ID #:7
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`27.
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`As a result of Allergan’s extensive use and promotion of the JUVÉDERM
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`Marks in connection with the JUVÉDERM Products and their indications, and the
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`quantity of sales of the JUVÉDERM Products, the JUVÉDERM Marks have become
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`famous in the United States, and became famous in the United States long before
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`Defendants commenced the infringing acts complained of herein.
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`28.
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`The JUVÉDERM Marks, and the goodwill associated therewith, are of
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`substantial value to Allergan both in the United States and globally.
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`DERMAVITA’S UNLAWFUL ACTIVITIES
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`Dermavita Had Knowledge Of Allergan’s Rights In The JUVÉDERM Marks.
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`29.
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`By reason of Allergan’s ownership of United States trademark registrations
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`for the JUVÉDERM Marks, at the time it commenced the activities complained of herein,
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`Dermavita had, at minimum, constructive notice of Allergan’s rights in and to the
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`JUVÉDERM Marks, and on information and belief, had actual knowledge of Allergan
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`and Allergan’s rights in and to the JUVÉDERM Marks.
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`Dermavita Has Intentionally Infringed Allergan’s JUVÉDERM Marks.
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`30.
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`31.
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`On information and belief, Dermavita was incorporated on May 3, 2007.
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`Beginning in early 2015, Dermavita commenced an intentional, calculated
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`campaign to systematically trade off, and/or dilute, the goodwill associated with
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`Allergan’s JUVÉDERM Marks. Dermavita’s campaign has been wide-ranging, and
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`includes, without limitation:
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`a. adopting “Juvederm” as a mark (the “Infringing Mark”);
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`b. using the Infringing Mark as a mark on its websites and offering for sale and
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`selling products related to Allergan’s JUVÉDERM Products under the
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`Infringing Mark (the “Accused Products”);
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`c. on information and belief, licensing use of the Infringing Mark to third
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`parties, including without limitation Dima Corp.;
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`d. issuing a press release announcing its intention to introduce and widely
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`distribute “Juvederm” cosmeceutical products into the United States by June
`7
`COMPLAINT OF ALLERGAN, INC.
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`2017, actions that inevitably will confuse the relevant consuming public into
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`believing that Dermavita, Dima Corp. and their Accused Products are in
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`some manner associated or affiliated with Allergan and the JUVÉDERM
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`Marks and Products, when they are not;
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`e. developing and publicizing a “Juvederm” mobile application to promote the
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`Accused Products and purportedly prescribe them to consumers; and
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`f.
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`retaining KBC Media to advertise and promote the Accused Products in the
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`United States.
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`32.
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`These actions by Dermavita and Dima Corp., as described below, represent a
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`willful and unlawful attempt to confuse the public and interfere with Allergan’s
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`established business conducted under its JUVÉDERM Marks for the purpose, on
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`information and belief, of trying to force Allergan to expend time, energy and money to
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`stop Dermavita and Dima Corp., either through costly litigation or settlement.
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`Dermavita Has Attempted To Register And Has Registered Confusingly
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`Similar Marks.
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`33.
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`On April 30, 2015, Dermavita filed trademark application No. 014016737 in
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`the European Union Intellectual Property Office (“EUIPO”) to register the mark
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`“JUVEDERM” for cosmetic and anti-wrinkle preparations and, purportedly, services
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`related to those goods. Allergan, through one of its subsidiaries, is seeking to cancel this
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`registration.
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`34.
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`On November 11, 2015, Dermavita filed another trademark application with
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`the EUIPO to register the mark “JUVEDERM” for pharmaceutical preparations, medical
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`devices, plastic bags, and training services in the fields of medicine, cosmetics and
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`aesthetics. This application was assigned No. 014790182. Allergan, through one of its
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`subsidiaries, has opposed this application.
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`35.
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`On June 17, 2015, Dermavita filed Application Serial No. 79173350 (the
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`“‘350 Application”) with the United States Patent and Trademark Office seeking to
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`register the mark “JUVEDERM” for goods and services in two International Classes.
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`COMPLAINT OF ALLERGAN, INC.
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`That application has since been sub-divided into two separate applications. In the ‘350
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`Application, Dermavita seeks to register the mark “JUVEDERM” for:
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`“Cosmetics for use by the end consumer, namely, cosmetic creams,
`emulsions, lotions, liquids and solutions being milks, gels and oils for
`use on the face, body, hands, feet, and neck, all of which for external
`use only; non-medicated exfoliating cosmetic preparations for the
`skin, cosmetic skin care preparations, namely, skin peels, cosmetics
`for smoothing the skin, cosmetics for hair conditioning and care of the
`hair and scalp; cosmetic sunscreen preparations in the form of
`emulsions, lotions, milks, gels, and oils; cosmetic preparations for
`skin whitening, skin whitening creams, hair and nail decolorants for
`cosmetic purposes, cosmetics for lightening the color of the skin, fair
`complexion cream” in International Class 3;
`In the second application, Application Serial No. 79975292 (the “‘292
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`36.
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`Application”), Dermavita seeks to register the mark “JUVEDERM” for:
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`“Advertising, marketing and promotion services; commercial trading
`services in the nature of direct marketing services, promotional
`marketing and representation services for sales to the public sector;
`providing consumer product information via the Internet; business
`management analysis, business research and business information
`management services” in International Class 35.
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`37.
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`In all, Dermavita has filed more than 60 applications to register
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`“JUVEDERM”-formative marks in more than 50 jurisdictions worldwide, most of which
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`are being opposed by Allergan or one of its subsidiaries.
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`Dermavita Has Offered For Sale And Sold Products Under The Infringing Mark.
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`38.
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`Dermavita operates several websites that offer its products for sale in the
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`United States. For example, as shown on the following page, the site located at the URL
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`WWW.DERMAVITA-ONLINE.COM includes products being offered for sale under the
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`Infringing Mark that bear a striking resemblance to Allergan’s JUVÉDERM Products:
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`COMPLAINT OF ALLERGAN, INC.
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`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 10 of 28 Page ID #:10
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`ALLERGAN’S PRODUCT
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`ACCUSED PRODUCT
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`39.
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`Another site operated by Dermavita, the site located at the URL
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`WWW.DERMAVITA.NET, includes a page that is specifically directed to offering the
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`Accused Products in the United States:
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`40.
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`The “USA Offers” include six separate “Juvederm” products: “Juvederm
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`NRG Cream,” “Juvederm NRG Serum,” “Juvederm NRG Mask,” “Juvederm Purelife
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`Mask,” “Juvederm Hydralift Mask,” and “Juvederm EyePerfector.” See Exhibit B
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`attached hereto and incorporated herein by reference.
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`41.
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`Like Allergan’s JUVÉDERM Products, several of the products offered by
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`Dermavita prominently state that they contain “hyaluronic acid,” as shown below
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`(highlighting added):
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`COMPLAINT OF ALLERGAN, INC.
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`Case 8:17-cv-00619 Document 1 Filed 04/05/17 Page 11 of 28 Page ID #:11
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`HOnle (cid:9)otters
`
`chz vedef)m
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`NRG Mask
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`HYAWRONIC ACID + COLLAGEN
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`Moisturizing & Restoring
`Bioceliulose Face Marc
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`Masque Biocellulose
`d'ilydratation et de Resta uration
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`Juvederm NRG Mask: $20.00
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`$ 20.00
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`Juvederm NRG Mask
`Soothes and hydrates the skin, giving it a radiant appearance
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`Key Ingredients:
`-lyaluronic acid, .:allagen, Fucogel®, Aloe Vera, Glycerin
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`Indication:
`• Hydrates and nourishes the skin
`• Removes dead cells
`• Regenerate the cells
`• Improves the skin's elasticity and resistance
`• Enhances the skin's softness and firmness
`• Anti-aging
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`8 ml (cid:9)
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`Usage:
`Unfold the mask