## Facts

- Pharmacia and related entities owned and marketed XALATAN, a prescription glaucoma medication (latanoprost).
- Alcon, a competitor in ophthalmic pharmaceuticals, introduced TRAVATAN, a prescription glaucoma medication (travoprost).
- Pharmacia sued under the Lanham Act and New Jersey law for trademark infringement and dilution and sought a preliminary injunction barring Alcon’s continued use of TRAVATAN.
- The court held an evidentiary hearing spanning five days, considering witness testimony, affidavits, exhibits, and deposition transcripts.
- Alcon presented a professionally conducted confusion survey of ophthalmologists and optometrists reporting a very low net confusion rate (about 1.5%) and supported by testimony from the survey’s supervising expert and access to underlying data.
- Pharmacia did not present a confusion survey, despite having conducted other market research relating to TRAVATAN’s entry; internal research reflected that most surveyed ophthalmologists recognized XALATAN and TRAVATAN as different medications.
- Pharmacia attempted to rely substantially on expert opinion testimony to establish likely confusion in lieu of a confusion survey.

## Issues

1. Whether Pharmacia showed a likelihood of success on its Lanham Act and New Jersey trademark claims by demonstrating a likelihood of confusion between XALATAN and TRAVATAN among relevant purchasers for prescription glaucoma drugs.
2. Whether Pharmacia satisfied the requirements for preliminary injunctive relief, including likelihood of success on the merits, irreparable injury, balance of hardships, and the public interest.

## Decision

- The court denied Pharmacia’s motion for a preliminary injunction.
- Pharmacia failed to show a likelihood of success on the merits because the record did not support a likelihood of confusion between the marks in the relevant prescribing community.
- The court credited Alcon’s physician-focused survey showing minimal confusion and treated Pharmacia’s failure to offer comparable survey evidence as adverse to its position.
- Given the failure on likelihood of success, preliminary injunctive relief was not warranted.

## Legal Principles

- A preliminary injunction requires a showing of (at minimum) likelihood of success on the merits; in trademark cases this turns primarily on likelihood of confusion.
- In prescription-drug trademark disputes, the relevant audience for confusion analysis includes prescribing professionals, who are expected to exercise a high degree of care.
- Reliable, methodologically sound confusion surveys directed to the relevant decision-makers can be highly probative on likelihood of confusion.
- A court may draw a negative inference when a sophisticated plaintiff with the ability to conduct a confusion survey elects not to present one, particularly when other market research exists.
- New Jersey common-law trademark infringement and unfair competition standards track the federal likelihood-of-confusion analysis for infringement.

## Conclusion

The court denied preliminary injunctive relief because Pharmacia did not establish a likelihood of confusion between XALATAN and TRAVATAN among prescribing professionals, and Alcon’s credible survey evidence of minimal confusion weighed strongly against Pharmacia’s likelihood of success on its federal and New Jersey trademark claims.


Pharmacia Corp. v. Alcon Lab'ys, Inc., 201 F. Supp. 2d 335 (D.N.J. 2002)