Kos Pharms., Inc. v. Andrx Corp.

Kos Pharms., Inc. v. Andrx Corp.

Opinion

 [*703]  OPINION OF THE COURT

OBERDORFER, Senior District Judge.

This is an appeal from the denial of preliminary relief in a trademark infringement action. Plaintiff-appellant Kos Pharmaceuticals, Inc. ("Kos") owns the mark ADVICOR, which it uses in connection with cholesterol-altering drugs [**2]  available by prescription. Kos sought a preliminary injunction preventing defendants-appellees Andrx Corporation and Andrx Laboratories, Inc. (collectively, "Andrx") from using the mark ALTOCOR in connection with sales of Andrx's own cholesterol-altering prescription drugs. The district court denied the requested relief, and this appeal followed. Because the denial of the preliminary injunction was premised on legal errors, we reverse. We remand the case to the district court with directions to enter a preliminary injunction on an expedited basis.

I. BACKGROUND

Unless otherwise noted, the following facts are undisputed. On October 3, 2000, Kos filed an application with the United States Patent and Trademark Office (the "PTO") to register ADVICOR as the mark for a new medication designed to improve cholesterol levels. This new drug combines 20 milligrams of lovastatin (which lowers LDL, or "bad" cholesterol) with varying strengths (500, 750, or 1000 milligrams) of an extended-release formulation of niacin (which increases HDL, or "good" cholesterol). Kos has been selling its proprietary extended-release form of niacin  [*704]  under the trade name Niaspan since 1997. In July 2001 Kos [**3]  began advertising, and in December 2001 began selling, its new combination drug, Advicor. ²

Shortly after Kos began marketing Advicor, it learned that Andrx planned to use the mark ALTOCOR for its own new anticholesterol medication, which would contain only a single active ingredient, an extended-release form of lovastatin, in varying strengths (10, 20, 40 or 60 milligrams). Andrx announced on January 31, 2002 that it had received preliminary marketing approval for Altocor from the United States Food and Drug Administration (the "FDA"). On February 5, 2002, the PTO published for opposition the ALTOCOR mark, which Andrx had applied to register in December 2000.

Kos tried to dissuade or otherwise prevent Andrx from using the ALTOCOR mark several times, both before and after Andrx began selling its new drug. On April 1, 2002, Kos wrote to [**4]  Andrx that, in its view, the proposed use of the mark ALTOCOR "would constitute trademark infringement and unfair competition." JA at 273. It advised Andrx to "refrain from using ALTOCOR or any other mark which is likely to cause confusion with ADVICOR for pharmaceutical preparations." Id. Kos described its prior use of ADVICOR for its own cholesterol-altering medication and stated further that:

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