What Does it Take to Be Famous?

Trademark law provides additional protection for famous trademarks.  We have all heard of the famous trademarks COCA-COLA, KODAK, and WIMBLEDON.  Although many trademark owners try, it is very difficult to achieve famous status.  You may recall my post in June, “Are You Famous Enough?”, where the Trademark Trial and Appeal Board (the “Board”) rejected the argument that the mark MOTT’S was famous based on Samuel Mott being a famous historical figure.  Recently, however, the wonder drug that provides people with their youth again, BOTOX®, was found to be famous.

From 1998, when BOTOX® started on the market, through 2012, BOTOX® (http://www.botoxcosmetic.com) earned $10 billion.  With that amount in sales, it is not surprising that the mark was found to be famous by the Board.  In addition, Hollywood loves BOTOX®.  The Real Housewives are big fans of BOTOX®.  One of the Real Housewives of Orange County even gave out BOTOX® coupons as a party favor. Even in Minnesota, I have heard of BOTOX parties that are thrown in connection with charity events.  For example, a fundraiser for Smile Network International (a Minnesota-based non-profit, humanitarian organization that provides life-altering, reconstructive surgeries and related healthcare services to impoverished children and young adults in developing countries) involved BOTOX®.  Accordingly, it is not surprising that the Board found the mark to be famous.

An applicant sought to register the mark “BOTULEX” in connection with the goods described as “non-medicated skin preparations for topical application to skin.”  Not surprisingly, Allergan, Inc., owner of the BOTOX® mark and brand, filed an opposition to the application for registration of this mark.  The Board found that the mark was famous.  In addition, the marks were found to be similar.  They sound similar and look similar with the beginning and ending using the same letters.

What other trademarks do you know that have been found to be famous by the Board or a federal court?  What trademarks do you think should be considered famous?