Full opinion text
OPINION (Amended) BASSLER, District Judge. This is an action arising under the Lan-ham Act, 15 U.S.C. § 1051, et seq. and the laws of the State of New Jersey for trademark infringement and trademark dilution. The Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331 and 1338. This Court has supplemental subject matter jurisdiction over all other claims under 28 U.S.C. § 1367(a). Venue is proper in this District. 28 U.S.C. § 1391(b). Plaintiff Pharmacia Corporation and its related companies filed a complaint on March 30, 2001 against Alcon Laboratories Inc., seeking a preliminary injunction against the use of an existing trademark. The application for a preliminary injunction was submitted to the Court for determination on the basis of five days of testimony of witnesses at an evidentiary hearing, as well as affidavits, exhibits and the transcripts of testimony given upon oral depositions. FINDINGS OF FACT The Court makes the following findings of fact and conclusions of law pursuant to Rule 52 of the Federal Rules of Civil Procedure. To the extent that any of the findings of fact might constitute conclusions of law, they are adopted as such. Conversely, to the extent that any conclusions of law constitute findings of fact, they are adopted as such. I.THE PARTIES AND THE NATURE OF THE ACTION A. THE PARTIES 1. Plaintiff Pharmacia Corporation.is a Delaware corporation with its principal place of business located at 100 Route 206 North, Peapack, New Jersey 07977. Phar-macia Corporation is the parent corporation of the other plaintiffs: Pharmacia AB (formerly known as Pharmacia & Upjohn AB), a company organized under the laws of Sweden; Pharmacia Enterprises S.A. (formerly known as Pharmacia & Upjohn S.A.), a company organized under the laws of Luxembourg; and Pharmacia & Upjohn Company, a company organized under the laws of Delaware (collectively, “Pharma-cia”). 2. Defendant Alcon Laboratories, Inc. (“Alcon”) is a Delaware corporation and a wholly-owned subsidiary of Alcon Holdings, which is a wholly-owned subsidiary of Alcon Universal Limited, which is a wholly owned subsidiary of Nestle S.A. Alcon’s principal place of business is 6201 South Freeway, Fort Worth, Texas 76134. 3. Pharmacia and Alcon are pharmaceutical companies that manufacture and market, inter alia, ophthalmic preparations for the treatment of the eye disease glaucoma. B. THE NATURE OF THE ACTION 4. Pharmacia initiated this civil action on March 30, 2001 under the Lanham (Trademark) Act of 1946, 15 U.S.C. § 1051, et seq. (the “Lanham Act”) and New Jersey statutory and common law. 5. On April 16, 2001, Pharmacia moved for a preliminary injunction to enjoin defendant Alcon from infringing and diluting Pharmacia’s federally registered Xalatan trademark in connection with Aleon’s use of the name Travatan for the sale of a prostaglandin-based product used for the treatment of the eye disease glaucoma. II.THE EYE DISEASE GLAUCOMA AND THE GLAUCOMA MARKET 6. There is no dispute about the nature of the eye disease glaucoma and the glaucoma market. This case is about the medications used in the treatment of glaucoma, a disease of the eye marked by increased intraocular pressure (“IOP”) within the eye. Elevated IOP is caused by excess fluid within the eye that can result in damage to the optic disk and cause gradual loss of vision. Left untreated, glaucoma can result in blindness. 7. There is no known cure for glaucoma. The goal in treating patients with glaucoma and ocular hypertension is to decrease and maintain the IOP to within normal limits. 8. Three million Americans, primarily those age 40 and over, now suffer from the disease. One million are African-Americans, for whom the disease strikes with greater frequency, is more severe and is more difficult to treat. 9. The newest class of prescription drugs used to treat elevated IOP associated with glaucoma are “prostaglandin analogues.” They reduce IOP by increasing the outflow of fluid from the eye. The three largest-selling prostaglandin analogue products are Xalatan, Lumigan and Travatan. Pharmacia markets Xalatan; the generic name of its active ingredient is “latanoprost.” Aleon markets Travatan; the generic name of its active ingredient is “travoprost.” Allergan, Inc. (“Allergan”) markets Lumigan; the generic name of its active ingredient is “bimatoprost.” 10. Travatan, Xalatan and Lumigan can be dispensed only with a doctor’s prescription. 11. Surveys of ophthalmologists conducted by Pharmacia in May and August of 2001 show over 95% awareness of the brand names of all major glaucoma medications, including Travatan and Xalatan. 12. The Xalatan mark as a whole is strong and is a “famous” mark among ophthalmologists. III. PHARMACIA AND THE DEVELOPMENT OF THE XALATAN PRODUCT AND NAME 13. Alcon does not dispute Pharmacia’s sales figures, advertising expenditures or that Xalatan has received media coverage. 14. Prior to Pharmacia’s introduction of Xalatan, no prostaglandin product for glaucoma was available on the market in this country and many doctors were uncertain about its use because the product was widely believed to cause inflammation, pain and other detrimental effects in eyes. 15. Xalatan was a commercial success from the beginning; in its first year, sales in this country were approximately $26 million. 16. Since 1996, sales in this country have continued to increase: In 1997 sales were $126 million; in 1998 sales were $197 million; in 1999 sales were $247 million and in 2000 they were $295 million. 17. In those years, worldwide sales of Xalatan were 139, 282, 452 and 615 million dollars. 18. From its launch of Xalatan in 1996, Pharmacia undertook a massive marketing and educational campaign designed to educate the medical field about its new product and its benefits, and to encourage practitioners to switch their patients to Xalatan. This marketing and educational campaign was particularly important because of the general unfamiliarity with the use of prostaglandins for ocular indications. 19. Pharmacia has spent over $100 million educating doctors about the benefits of using prostaglandin products in the eye, and demonstrating the effectiveness of Xa-latan solution. Such efforts have included seminars, publications and face-to-face meetings. 20. By 1998, Xalatan solution had become the leading branded drug for the topical treatment of glaucoma and ocular hypertension, capturing 22.5% of dispensed glaucoma prescriptions in the United States. 21. In the thirteen month period from January 2000 to January 2001, the Xalatan solution was the leader in its class of drugs dispensed. 22. Pharmacia spent large sums of money for market research for Xalatan related research in 2001. Gurreri Tr., at 368-70; Def. Ex. W (DX02498). 23. The Xalatan and Travatan products will be prescribed, dispensed and used by the same groups: physicians, pharmacists and other health care professionals and glaucoma patients. IV. SELECTION OF THE XALATAN NAME 24. The Xalatan trademark was derived by combining the “LATAN” prefix from its generic name, latanoprost, with the “XA” portion of the code name PHXA41 used by Pharmacia during the product’s development. 25. In 1997, Pharmacia obtained Federal trademark registration No. 2,118,188 for its Xalatan trademark. 26. The following paragraphs (a) thru (g) support the finding that what identifies Pharmacia’s product in the marketplace and is the dominant part of the Xalatan mark is the prefix “XAL” and not the suffix “ATAN.”. (a) When Pharmacia adopted the Xala-tan mark, it was aware of seven pharmaceutical marks with the suffix “ATAN” and ten more with the suffix “TAN.” Def. Ex. I (DX00751-52) (Battle Dep. Ex. 1); 12/21 Tr., at 14-16 (Battle). (b) At least three other pharmaceutical trademarks currently in the market bear trademarks with the suffix “ATAN.” Def. Ex. H (DX00614) (Mintz Deck, ¶ 4); id. (DX00624-40) (Mintz Deck, Ex. 3-5) (Ryn-atan, Phenatan, Germ-tan). (c) At least 11 other pharmaceutical trademarks currently in the market bear trademarks with the suffix “TAN.” Id. (DX00641-72, DX00679-729) (Mintz Deck, Exs. 6-16). (d) “AN” is the most common suffix among generic names for pharmaceutical products and the sixth most common suffix among registered trademarks in U.S. Category 005 (Pharmaceuticals). Def. Ex. G (DX00580-89) (Bruce L. Lambert, et at., “Descriptive Analysis of the Drug Name Lexicon,” 56 Drug Information J.163, 170 Tbl. 3 & 171 Tbl. 4 (2001)); 12/18 Tr., at 189-91 (Lambert). (e) Timolol is the generic name of the active ingredient of many products in a class of drugs called “beta-blockers,” which traditionally have been the “first-line” topical treatment for lowering elevated IOP. Def. Ex. O (DX02073) (Harfstrand Deck, ¶ 14). For its proposed timolol-latanop-rost combination product, all of the marks Pharmacia filed with the Food and Drug Administration (“FDA”) and the United States Patent and Trademark Office (“PTO”) begin with “Xal,” none contain either the “ATAN” or “TAN” suffixes. Def. Ex. I (DX01203-28) (PTO filings for Xalaplus, Xalaplus T, Xaltimol, Xalacom, Xalacomb, Xalitol and Xalcom); Garanzini Tr., at 62,99-100; Def. Ex. I (DX01259)(in-ternal Pharmacia notes referring to “Xal family”); Garanzini Tr., at 59-69, 77-96, 108-109, 112-19, 122-29 (describing “Xal” names submitted to FDA); Linvill-Neal Tr., at 80-81 (only “XALA” part of Xalatan name considered for inclusion in new combination product name); Garanzini Tr., at 182-33 (“Xalatan family” trademarks begin with “Xal”); 12/20 Tr., at 226-27 (Gurreri) (Pharmacia refers to Xalatan and Xalcom products as the “Xalatan family” or “Xala-tan franchise”). (f) In 1993 when Eli Lilly, a major pharmaceutical company that monitored trademarks approved by the PTO saw that the Xalatan mark had been approved, it opposed that mark as confusingly similar to Lilly’s mark, Oxalactam. Pharmacia responded by emphasizing that Xalatan “starts with the letter X, which makes it special.” Def. Ex. I (DX01260) (facsimile from Gunnell Nilsson to Doreen Lute, dated December 8,1993). (g) In 2000, Pharmacia defended its “Xalcom” mark against an opposition filed by Alcon in Spain by again arguing that “[t]he letter X at the beginning of the word ... demands the most attention from the consumer.” Id. (DX01082)(translation of Pharmacia brief in opposition). Y. ALCON AND THE DEVELOPMENT OF THE TRAVATAN PRODUCT 27. Alcon invested more than ten years and over $100 million to bring the Trava-tan product to market. Def. Ex. E (DX00330) (Kreuger Decl. ¶ 6). 28. Because prior to FDA approval of a drug, companies are permitted to promote new drugs only on a limited basis, Alcon’s marketing investment in the Travatan product, prior to FDA approval, was just over $1 million. Barton 10/25 Tr., at 65-66; Gurreri Tr., at 213, 282-86. 29. Since approval by the FDA, Alcon has spent over $15 million on the sales and marketing of Travatan. Def. Ex.B (DX00024) (Barton Decl.^ 26); 12/17 Tr., at 150 (Barton). In 2002, Alcon’s planned marketing expenditures are $38 million. Def. Ex. B (DX00024) (Barton Deck, ¶26.). 30. This investment has resulted in the recognition of the Travatan name; Phar-macia’s marketing studies measuring ophthalmologists’ familiarity with the Tra-vatan name show a “total awareness” of over 95%. Gurreri Tr., at 226, 232-36; Def. Ex. I (DX00938, DX00945) (Wave II Awareness/Usage Study)(excerpts); Def. Ex. QQQ (DX04757, DX04767)(same)(com-plete); 12/17 Tr., at 150 (Barton). VI. ALCON’S SELECTION OF THE TRAVATAN MARK 31. Although Alcon was aware of Phar-macia’s mark Xalatan, the record does not support Pharmacia’s contention that Alcon copied Pharmacia’s mark with an intent to confuse consumers or that Alcon chose the “ATAN” suffix in order to trade off the success and name recognition of Xalatan. Alcon has credibly explained the origin and marketing goals behind the adoption of the Travatan mark. 32. Alcon’s Trademark Committee selected the name Travatan after a global search and clearance process, that started in 1994 when Alcon’s Research and Development team was early in the process of formulating the drug. Def. Ex. B (DX00018)(Barton Deck, ¶ 4). 33. In July 1997, the United States Adopted Names Council (“USAN”) proposed the generic name “travoprost” as an alternative to Alcon’s suggested generic names. Def. Ex. B (DX00031) (July 7, 1997 USAN Letter). In September 1997, Alcon consented to the name “travoprost,” id. (DX00082) (Sept.12, 1997 Letter of Charles L. Schmidt), and, in March 1998, USAN formally adopted it. Def. Ex. GGG (DX04210-12) (Mar.25, 1998 USAN Letter). 34. Before Alcon learned of the travop-rost name, it was considering trademark names for the product such as “alcoprost,” “prostalon” and “prostal.” See Def. Ex. B (DX00030)(Aug.8, 1994 Memo); id. (DX00033)(Jan.8, 1996 Memo). In connection with the name travoprost, Alcon began to consider potential trademarks that integrated the prefix “trav.” Id. (DX00035-36) (Barton Deck, Ex.4); 12/17 Tr. 161-62 (Barton). Other possible names included “Travodin” and “Travo-press.” Most of these names appended common drug suffixes to a prefix taken from or evocative of the generic “travop-rost.” Def. Ex. B (DX00019) (Barton Deck, ¶¶ 7-8); id. (DX00035) (Barton Deck, Ex. 4). 35. There is sufficient credible evidence for this court to find that Alcon’s selection and adoption of the name Trava-tan was done in “good faith.” 36. Travatan was created by taking the prefix “travo” of travoprost, changing the “o” to an “a,” and combining the resulting prefix “trava” with what is a common pharmaceutical suffix-“tan” in order to create a coined name. Def. Ex. B (DX00020-21) (Barton Decl.,¶¶ 11,14); 12/17 Tr., at 154-56, 161-62, 171 (Barton); see also Def. Ex. H (DX000614)(Mintz Decl.¶ 4 (listing drug names ending in “a-t-a-n”)). 37. The court finds credible the testimony of Barton and Sehira at the eviden-tiary hearing that Alcon did not create the Travatan trademark by copying the “ATAN” ending of Xalatan. 12/17 Tr., at 171 (Barton); 12/19 Tr., at 184-85 (Sehira). Rather, suffixes other than “TAN” were rejected because they did not sound or look as good as Travatan. Def. Ex. B (DX00020-21) (Barton Deck, ¶¶ 10-14); id. (DX00036) (Barton Deck, Ex. 4); id. (DX00042-43) (Barton Deck, Ex. 6). 38. Travoprost, bimatoprost and lata-noprost all are pronounced in practice as if they ended in “aprost.” Barton 7/18 Tr., at 27-28; Nesi Tr., at 46-47, 92-93; Di Domizio Tr., at 226-27; Def. Ex. B (DX00020) (Barton Decl.,1[ 13); 12/17 Tr., at 142, 170-171 (Barton). The prefix “TRAVA” was selected over “TRAVO” because: (1) the assonance of the repeated A vowel was desirable; and (2) the FDA generally does not approve of brand names that contain too much of the generic name. 12/17 Tr., at 156 (Barton); Def. Ex. K (DX01432) (Di Domizo Deck, Ex.2); Def. Ex. B (DX00020) (Barton Deck, ¶ 12). 39. Alcon considered several other marks and selected Travatan but only after its first choice “PRAVATIN,” was considered to be too close to “PREVATAIN,” a mark for a dry-eye product marketed by Allergan, Inc. 12/17 Tr., at 135-36, 140, 166-69, 172-73, 177 (Barton); 12/18 Tr., at 25-26, 47-48, 50-51 (Gill); Def. Ex. DDD (DX04145-65)(PRAVATIN trademark search report). 40. Because of the importance of the product, even after the Travatan name was tentatively selected, Tim Sear, Alcon’s CEO, repeatedly urged the generation of additional potential names throughout the first half of 1998. Def. Ex. B (DX00022) (Barton Deck, ¶ 20); id. (DX00046-47) (Barton Deck, Ex. 8). 41. The minutes of the meeting of Alcon’s Trademark Committee on November 19, 1997 contain the statement that: “The proposed trademark is Travatan which should compete well with Pharma-cia’s Xalatan’s trademark.” PX-25 at DP 002210. The Court does not accept the sinister connotation urged by Pharmacia. Alcon ultimately selected the Travatan mark as a trademark because it is suggestive of the generic ingredient “travoprost,” Barton 7/18 Tr., at 27; Gill Tr., at 51, 72; Def. Ex. B (DX00018, DX00020) (Barton Decl., ¶¶ 5,11), and because it is easy to spell, pronounce, write and remember, because it is different from the names of its competitors’ products, and because it creates a brand identity unique to Alcon. Barton 7/18 Tr., at 29, 64-65; Def. Ex. B (DX00019-22) (Barton Decl., ¶¶ 8,11,14,18). Because of these characteristics Alcon concluded the Travatan name “competes well” against the Xalatan name. Def. Ex. B (DX00022) (Barton Deck, ¶ 18); 12/17 Tr., at 151, 163-64, 172, 179 (Barton); 12/18 Tr., at 35(Gill); 12/19 Tr., at 126-28 (Schi-ra). 42. To determine whether the Trava-tan name was “clear,” Alcon conducted both its own database trademark search and ordered an external one, conducted by Thompson & Thompson. 12/17 Tr., at 172 (Barton); 12/18 Tr., at 6-8, 12-13, 22-23, 29-30 (Gill); 12/19 Tr., at 138-40, 154-56 (Schira); Def. Ex. B (DX00055-100) (Barton Deck, Ex. 9). The internal search disclosed the existence of Xalatan, Def. Ex. B (DX00059), but the Thompson & Thompson search did not list Xalatan as a potential conflict. (DX00101-31) (Thompson and Thompson Search) 12/18 Tr., at 12. 43. The internal trademark search and the Thompson and Thompson trademark search revealed eleven other marks that end in the suffix “TAN,” out of which three marks end in “ATAN”. 44. The “ATAN” portion of the Xalatan mark is weak. 45. At the evidentiary hearing Alcon’s in-house intellectual property counsel, Jeffrey Schira Esq. testified, as did Alcon’s manager of trademark services, Anna Gill. The Court found their testimony very credible. Both Mr. Schira and Ms. Gill participated in the trademark clearance of the Travatan name. Schira Tr., at 73-75, 103, 107, 124; Gill Tr., at 12-13, 76, 124. Mr. Schira is an experienced trademark attorney. 12/19 Tr., at 141, 195; Schira Tr., at 8-10, 17-18. His clearance of the Travatan name was part of his usual practice of reviewing and providing his “final approval” for all prospective marks. Schi-ra Tr., at 15-16, 69-70, 76, 102-103, 110-12; Gill Tr., at 12-13. 46. Ms. Gill has had over twenty years experience in trademark reviewing and clearance. As part of the clearance process, Ms. Gill would investigate potential marks and provisionally “clear” them before bringing the file to Mr. Schira for review. Until this litigation, none of the marks Ms. Gill had cleared during her long career ever resulted in a trademark dispute. 12/18 Tr., at 27-28, 48 (Gill). But only if Mr. Schira also agreed with Ms. Gill that the mark was available would the Trademark Committee be allowed to adopt it. 12/19 Tr., at 134-35, 138-39, 155-56, 164, 192-93 (Schira); Schira Tr., at 59-62; 12/18 Tr., at 4-5, 21, 23 (Gill); 12/17 Tr., at 169-70 (Barton). 47. Although Mr. Schira was aware of the Xalatan mark at the time he reviewed the Travatan mark, he compared both the front end of the mark and the back end of the mark, and determined that there was not a likelihood of confusion. Schira Tr., at 79-92; 12/19 Tr., at 161. 48. Both Ms. Gill and Mr. Schira also concluded that Pharmacia did not have exclusive rights to the “ATAN” suffix because of the number of other pharmaceutical products that also end in the suffixes “ATAN” and “TAN,” and the number of other glaucoma products that end in “AN.” 12/19 Tr., at 171-73 (Schira); Schira Tr., at 74, 83, 91-93, 127-28; 12/18 Tr., at 13, 31, 38 (Gill). 49. It is worth noting that the PTO, the FDA and various other foreign regulatory authorities have all approved the Tra-vatan mark. 12/19 Tr., at 185-91 (Schira). And when Alcon, during the clearance process, identified “TRIVITAN,” a mark for an ophthalmic product marketed by Merck & Co. (“Merck”) in Argentina, it successfully negotiated a co-existence agreement with Merck. 12/18 Tr., at 47 (Gill). 50. Alcon filed an intent-to-use application for Travatan with the PTO on June 3, 1998. Def. Ex. B (DX00023)(Barton Decl, ¶ 23). 51. The PTO determined that the Tra-vatan mark was not confusingly similar to any other existing mark and published the mark for opposition on May 18, 1999. Id. (DX00023) (Barton Decl., ¶ 23); id. (DX00163-64)(Barton Decl., Ex.12). 52. In addition, the brand names for all prescription drugs, such as Travatan, must be approved by the FDA before they can be used in the United States. The FDA has the authority to reject any proposed name that “because of similarity in spelling or pronunciation, may be confused with the proprietary name or the established name of a different drug or ingredient.” 21 C.F.R. § 201.10(c)(5); see also 12/17 Tr., at 173 (Barton); Garanzini Tr., at 62-64. 53. Prior to October 1999, the FDA name review process was conducted under the auspices of the FDA’s Labeling and Nomenclature Committee (“LCN”), a division of the FDA’s Center for Drug Evaluation and Research (“ODER”). The LCN was composed of nine health professionals from different divisions within the FDA. The LCN reviewed' the submitted name for potential confusion with other drug names. If it found no such confusion likely, the LCN recommended that the name be approved by the CDER Medical Reviewer, an FDA Division Director who had ultimate approval authority over the drug. Def. Ex. E (DX00335) (Kreuger Decl., ¶ 24); id. (DX00339-43) (Kreuger Decl., Ex. 2). 54. In 1999 Alcon submitted the Trava-tan mark to the LCN, which after conducting its review recommended that Travatan was “acceptable for use.” Def. Ex. E (DX00331-35)(Kreuger Decl., ¶¶ 13-17); Id. (DX00345)(Kreuger Decl., Ex. 3)(OP-DRA Report). 55. The FDA implemented a new and more rigorous screening process designed to eliminate potentially confusing names. That process is now overseen by the Office of Post-Marketing Drug Risk Assessment (“OPDRA”), which tests proposed names on outpatient and inpatient prescriptions in a simulated clinical setting. Def. Ex. C (DX00173-75) (De Santis Decl., ¶¶20, 24). The purpose of this process is to reduce the risk of approving a new drug name that might result in medication errors. Di Domizio Tr., at 241. 56. OPDRA conducted a study, employing ninety-four healthcare professionals, to determine under simulated real-world conditions whether Travatan would be confused with other U.S. drug names due to similarity in visual appearance with handwritten prescriptions or verbal pronunciation of the name.” Def. Ex. E (DX00346) (OPDRA Report). 57. OPDRA tested two handwritten prescriptions, one of which read “D/C Tra-vatan today” with no reference to concentration, or strength of the drug. Id. (DX00346-47) (OPDRA Report at 3-4). It also tested two verbal prescriptions transmitted by telephone. Id. 58. The OPDRA study found “there were no erroneous interpretations of this proprietary name with other U.S. marketed drug products” in any of the four simulated prescriptions tests it conducted, including the handwritten test where no concentration of Travatan was specified. Id. (DX00334) (Krueger Decl., ¶ 21); id. (DX 00347) (OPDRA Report). As a result, OPDRA recommended that the FDA approve the Travatan name. 59. At the time OPDRA initially tested the Travatan name, Alcon had submitted data on two concentrations of travoprost: 0.0015% and 0.004% 60. In December 2000, prior to approving the Travatan product, the FDA recommended to Alcon, and Alcon agreed, that Travatan be marketed only in one concentration: 0.004%. Krueger 6/20 Tr., at 28, 30-31; Krueger 10/30 Tr., at 12, 33-34. As a result, the FDA was aware that Tra-vatan would be marketed in one concentration (travoprost ophthalmic solution 0.004%) well before it issued its final approval of the Travatan product in March 2001. Def. Ex. E (DX00335) (Krueger Decl., ¶ 25). 61. On March 16, 2002, the FDA’s ODER Medical Reviewer and Division Director, Robert DeLap, approved the Tra-vatan name as part of the FDA approval to market Travatan. Def. Ex. E (DX00331, DX00335)(Krueger Ded.,n 11, 24). 62. In addition to approving drug names, the FDA also must approve the way the name is presented on all product packaging. The FDA approved the packaging for Travatan and did not find it to be confusingly similar to any other packaging, including Xalatan. Def. Ex. E (DX00335-36) (Krueger Decl., ¶¶ 27-28). 63. Although Pharmacia could have petitioned the FDA at any time to reconsider its approval of the Travatan name and/or packaging, it did not. Bee 21 C.F.R. § 10.30 Pharmacia never contacted the FDA with its concerns about the Travatan name, Gurreri Tr. 204-07, nor did it ask its paid consultant, Mr. George Di Domizio, to use his experience with and connections with the FDA to intercede on Pharmacia’s behalf. Tr. 97. 64. The packaging for both Travatan and Xalatan prominently displays their manufacturers’ respective house marks. Def. Ex. E (DX00336)(Krueger Decl., ¶ 28): Def. Ex. Ill (Xalatan package); Def. Ex. JJJ (Travatan package). In addition, Alcon emphasizes its well-known house mark in promoting its products. Guerri Tr., at 165-66; Def. Ex. V (DX03305) (Agenda for May 6,1998 Trademark Committee Meeting). 65. Alcon has also submitted the Tra-vatan name for regulatory review in more than fifty countries. None has raised any concern with the name. Moreover, despite opportunities to do so, Pharmacia did not oppose any of these submissions. Def. Ex. B (DX00023-24)(Barton Decl., ¶ 24); 12/19 Tr. 186-91 (Schira); 12/18 Tr. 29 (Gill). YII. PHARMACIA’S KNOWLEDGE OF THE TRAVATAN MARK 66. Pharmacia did not move for preliminary injunctive relief until April 2001 although it had constructive knowledge as early as the Spring of 1999 and actual knowledge commencing in June of that year and going forward.. Although the Court does not find that Pharmacia timed the lawsuit to cause maximum disruption of the Alcon launch of Travatan, such delay must mean that Pharmacia did not initially consider Aleon’s use of Travatan to infringe on its trade mark. 67. Pharmacia had constructive (if not actual) knowledge of the Travatan name as early as May 18, 1999, when Travatan was published in the Official Gazette. Phar-macia certainly had actual knowledge of the Travatan name through (1) its internal and external competitive intelligence reporting from the summer of 1999 forward and (2) its extensive testing of the Trava-tan name in internal market research beginning in the summer and fall of 2000 when it designed strategies to counter the anticipated Travatan launch. Gurreri Tr. 154-55. 68. Pharmacia failed to diligently monitor its trademarks. 69. The PTO approved the Travatan mark for publication on April 16, 1999 and then published the Travatan mark for opposition in the Official Gazette on May 18, 1999. Def. Ex. SS (DX03875-76) (Trava-tan Prosecution History); Def. Ex. B (DX00163-64) (Barton Deck, Ex. 12) (Official Gazette excerpts). 70. Of course publication in the Official Gazette is “notice to the world that Alcon” planned to use the mark Travatan. 12/21 Tr. 62 (Battle). The purpose of such publication is to provide “any person who believes that he would be damaged by the registration of a mark” the opportunity to object to registration by the PTO. 15 U.S.C. § 1063(a). 71. Although Pharmacia’s head intellectual property lawyer, Mr. Battle testified that when he joined Pharmacia in October 1999 “there was nobody to monitor” the Official Gazette, 12/21 Tr. 63 (Battle), in fact Pharmacia did monitor trademark filings in 1999 in several ways: (a) It had a “strong in-house intellectual property component” that monitored trademark filings and formally opposed at least seven trademarks that Pharmacia believed were likely to infringe or dilute its marks. Jacobs-Meadway Tr., at 13-14, 25-27, 41-44; Def. Ex. I (DX01160-1202) (Pharmacia oppositions filed in or about 1999). (b) Pharmacia also engaged multiple outside law firms to protect its trademarks, including one that acted as a trademark watch service and monitored the Official Gazette. Jacobs Meadway Tr., at 25-31, 36-38, 40-44; 12/21 Tr. 63 (Battle). (c) Pharmacia subscribed to a number of trade journals and other publications that reported on the approval of the Tra-vatan mark, including a well-known trade publication, Pharmaceutical Approvals Monthly, and the PTO’s Official Gazette. Def. Ex. I (DX01253-54) (2d Int. Ans.Nos.2-3). (d) Mr. Battle’s predecessor at Pharma-cia was Ray Arner. He was head of Global Intellectual Property and prior to October 1999 (and Battle’s arrival at Pharmacia), had responsibility for Phar-macia’s trademarks. Ray Arner monitored the PTO’s Official Gazette for trademark filings in May of 1999, when the Travatan mark was published for opposition. Jacobs-Meadway Tr., at 22, 25; 12/21 Tr., at 20 (Battle). (e) As previously noted, Pharmacia received the Pharmaceutical Approvals Monthly. In its June 1999 issue, which featured articles about Pharmacia’s products, it reported Alcon’s intent tto use the Travatan mark for its travoprost product. Def. Ex. B (DX00165-66) (Barton Deck, Ex. 13) (excerpts). 72. Despite the fact that Xalatan in 1999 “had the biggest sales worldwide in the entire corporation,” and that the Xala-tan product and brand name are “extremely important” to Pharmacia, 12/17 Tr., at 79-80 (Harfstrand), and although Pharma-cia opposed the registration of at least seven marks that it believed infringed on various marks, it did not oppose Travatan. 73. Pharmacia has an entire department devoted to Global Competitive Intelligence (“GCI”). It is inconceivable to this Court that information about Travatan did not reach executives of Pharmacia well in advance of Alcon’s launch of Travatan on March 16, 2001. 74. Information about Travatan was collected by GCI and circulated periodically to senior marketing executives in what was called “Competitor Outlook & Review” reports. 12/20 Tr., at 154-55 (Gurreri); Gurreri Tr., at 43-51. 75. One source of Global Competitive Intelligence information that is of particular significance was an ophthalmic congress regularly held in Europe by the European Society of Ophthalmology (“SOE”). Nesi Tr., at 28-42. 76. The 1999 SOE Congress was a “major convention! ]” in the industry. 12/17 Tr., at 91 (Harfstrand). 77. Pharmacia was a “Main Sponsor” of the 1999 SOE Congress, which that year was held in Stockholm, Sweden from June 27-July 1, 1999. Harfstrand Tr., at 79-80; 12/17 Tr., at 92-93. 78. At this June 1999 SOE Congress, Alcon’s Vice President of Pharmaceutical Products, Research and Development, Dr. Stella Robertson, made a public presentation on the clinical results achieved with Travatan. Def. Ex. J (DX01261) (Robertson Deck, Ex. 2). 79. The first slide in Dr. Robertson’s presentation read, “Dose Response Evaluation Travoprost Ophthalmic Solution Tra-vatan.” Def. Ex. J (DX01269) (Robertson Deck, Ex 2). It is important to note that an abstract of the presentation was published in the conference’s “Abstract Book,” which was distributed to all conference attendees. Def. Ex. I (DX 01025)(Abstract Book excerpt); Def. Ex. J. (DX01262)(Robertson Deck, ¶ 4); 12/17 Tr., at 94-95 (Harfstrand). The title of the presentation actually included the designation “Travatan Trade mark” and was listed both in the Abstract Book and in the “Final Program” that contained the schedule of events at the Congress. Def. Ex. I (DX01025) (Abstract Book excerpt); Def. Ex. O (DX02002) (Final Program excerpt); Def. Ex. J (DX01262) (Robertson Deck, ¶¶ 3-6); 12/17 Tr., at 94-97 (Harfstrand). 80. Alcon’s Travatan presentation was made on June 30, 1999 at 2:00 o’clock as part of a one-and-one half hour session on glaucoma therapies, in the same room as, and along with a presentation on the use of latanoprost, the active ingredient in Xala-tan. Def. Ex. OO (DX02001-02)(1999 SOE Final Program excerpts). 81. Pharmacia claims that it was unaware or not made aware of Dr. Robertson’s presentation. That claim defies belief for the following reasons: (a) Dr. Anders Harfstrand, then Phar-macia’s Vice President for the Global Ophthalmology Business, the highest ranking marketing executive responsible for Xalatan, attended the 1999 SOE Congress. 12/17 Tr., at 93 (Harfstrand). (b) Also in attendance at the Congress were at least seven Pharmacia employees or agents including Paul Chaney, Pharma-cia’s current Vice President for the Global Ophthalmology Business, who was then primarily responsible for marketing Xala-tan in the United States; Michael Garanzi-ni, Pharmacia’s Senior Global Product Manager for Xalatan and Dr. Stephen Obstbaum, a Pharmacia declarant and outside consultant paid to attend such meetings.' 12/17 Tr. 93 (Harfstrand); Harfst-rand Tr., at 79-81; 99; Garanzini Tr., at 15, 137-38; Def. Ex. I (DX01024) (SOE Abstract Book Excerpt). (c) Pharmacia engaged outside private investigators to monitor Alcon’s activities. Pharmacia retained TJN (“TJN”) at $15,-000-$30,000 per meeting, to attend ophthalmic conferences, including the 1999 SOE Congress, and keep tabs on Pharma-cia’s prostaglandin analogue competitors. Nesi Tr., at 18, 32-33, 36; 12/17 Tr., at 90-92 (Harfstrand); 12/20 Tr., at 155-56 (Gur-reri). (d) At the time of the 1999 SOE Congress, Pharmacia was involved in a European patent opposition proceeding with Alcon over Xalatan (which Pharmacia lost on July 2, 1999, just two days after Dr. Robertson’s presentation). Def. Ex. 0 (DX02006-08) (Pharmacia European Patent Register File). Dr. Harfstrand retained TJN to, among other things, gather information on Travatan in connection with that patent opposition and its eventual appeal. Harfstrand Tr., at 63-64; 12/17 Tr. 90 (Harfstrand). (e) The “Final Program” and a blown-up reproduction of the page reprinting the abstract of Dr. Robertson’s presentation resided in Pharmacia’s files and was produced to Alcon during discovery. Def. Ex. CCCC (PH072589) (1999 SOE Final Program); Def. Ex. O (DX02001-02) (Final Program excerpts); Def. Ex I (DX01110) (blown-up Robertson abstract); 12/17 Tr., at 126-27 (Harfstrand). (f) Given that twenty pages of the Final Program were devoted to glaucoma, that the one page summary in the Abstract Book identified the three panels presenting papers on glaucoma, and that the two page list of symposia in the Abstract Book identified the glaucoma symposia held at the Congress, Dr. Harfstrand’s explanation that he missed Dr. Robertson’s presentation and the references to Travatan in the 1999 SOE Abstract Book and Final Program because they were difficult to find rings a little hollow. 12/17 Tr., at 118-19 (Harfstrand); Def. Ex. 0 (DX02001)(Final Program table of contents); Def. Ex. I (DX01023) (Abstract Book listing free papers by topic); Def. Ex. I (DX01022) (Abstract Book listing symposia by topic). 82.Moreover, Pharmacia also had constructive knowledge of the Travatan presentation. Dr. Harfstrand acknowledged that he engaged TJN, 12/17 Tr., at 90, until the patent litigators took over the TJN contracts. Dr. Harfstrand’s investigative agent attended the Travatan presentation on his behalf. 12/17 Tr., at 90-92 (Harfstrand); Def. Ex. I (DX01112-18) (TJN Report.) 83. Dr. Robertson’s presentation on the clinical results achieved with Travatan at the June 1999 SOE Congress was reported in Global Competitive Intelligences’s October 1999 Competitor Outlook & Review which described Alcon’s product as “the first potential competitor ... identified ... in late-stage head-to-head studies v. Xalatan.” Def. Ex. I (DX01048) (Harfstrand Def. Ex. 15) (excerpts). The Review referred to Travatan by name (misspelling it “Travotan”) and contained information relating to Alcon’s launch plans. (DX01048-49); 12/17 Tr., at 100-04 (Harfstrand); Harfstrand Tr., at 138-42. Top Pharmacia executives received copies of the Global Competitive Intelligence Competitor Outlook & Review reports. 12/20 Tr., at 154-55 (Gurreri); 12/17 Tr. 97-98, 100-102 (Harfstrand); Gurreri Tr., at 47 Garanzini Tr., at 142-43; Battle Tr., at 71. 84. The October 1999 Competitor Outlook & Review was the first Global Competitive Intelligence document distributed after the 1999 SOE Congress. 85. Six months later, in April 2000 (one year before Pharmacia filed its ex parte application for immediate injunctive relief), Global Competitor Outlook & Review again referred to “Travatan” (spelled correctly), reporting that Alcon would be filing for approval “this quarter.” Def. Ex. I (DX00846-52) (same); Gurreri Tr., at 43-45; 12/17 Tr., at 98-99 (Harfstrand). 86. Although Dr. Harfstrand testified that he had not read any of the Competitor Outlook & Review Reports in Pharmacia’s files discussing the Travatan mark because they “were boring and usually lack of news in them,” 12/17 Tr., at 77, preferring instead to throw them away, id. at 98, other Pharmacia executives paid more attention to them. Mr. Chaney requested to have someone “make [a] file for me of these reports” and “keep them centrally.” Def. Ex. I (DX01042)(October 1999 Report with handwritten notes). Carl Battle, Esq. Pharmacia’s vice president for intellectual property, testified that although he could not remember exactly how he first learned of the Travatan “in approximately May” of 2000 it was from “some document” distributed within Pharmacia. 12/21 Tr., at 7, 10, 23, 38 (Battle). 87. In any event “based on this report ... [ by] April of 2000 Pharmacia knew that Alcon had been testing their product called Travatan ...” Gurreri Tr., at 51; 12/20 Tr., at 157-61 (Gurreri). 88. In July of 2000, Dr. Harfstrand, Mr. Chaney, Mr. Gurreri and others with marketing responsibility for Xalatan participated in a “Therapeutic Area Review” for Pharmacia’s ophthalmic business. To help prepare them, Global Competitive Intelligence distributed a memo to Dr. Harfstrand, Mr. Chaney and others. The memo included a chart that summarized the status of competitive ophthalmic products and which listed Travatan by name, its anticipated launch date, its perceived strengths, its perceived weaknesses, and relevant commercial considerations. While the chart does list as an important “commercial consideration” the connection of Travatan to Alcon and its sales force, it does not indicate any concern about the Travatan name. 12/17 Tr., at 104 (Harfst-rand); 12/20 Tr., at 162 (Gurreri); Def. Ex. QQ (DX03453-59) (Therapeutic Area Review Memo); Id.; Def. Ex. RR (DX03859T-X) (Therapeutic Area Review Chart); Def. Ex. QQ at DX03456; Def. Ex. RR at DX03859; 12/20 Tr., at 162-66 (Gur-reri). 89. Throughout the summer of 2000, Pharmacia tested the appeal to ophthalmologists of both the Travatan product and the Travatan name against Xalatan by conducting “War Games” and other market research. As a part of the preparation for these “War Games,” certain Pharmacia executives were dubbed “Team Travatan” and instructed to think like Alcon to develop a message that would anticipate how Alcon would likely promote Travatan. 12/20 Tr., at 166-78(Gurreri); Guerri Tr., at 81-86; Def. Ex. W (DX0239-56) (Xala-tan Games Kick-Off Meeting); 12/20 Tr., at 167-69 (Gurreri); Garanzini Tr., at 187-93. 90. At no point during this process did any Pharmacia marketing executive give any thought to the possibility that the Travatan mark was likely to cause confusion with or dilute the Xalatan mark, or that Alcon was attempting to do so by naming its product Travatan. # 12/20 Tr., at 174-75 (Gurreri); Gurreri Tr., at 109, 117, 129-30, 153; Garanzini Tr., at 145; Linvill-Neal Tr., at 122. 91. By October 2000, Pharmacia’s internal marketing department repeatedly had evaluated the Travatan name. According to Pharmacia, Travatan was a “mini-van” trademark' — a “weakness,” and not a threat. 12/20 Tr., at 178-81 (Gur-reri); Gurreri Tr., at 109-18, 166-68; Def. Ex. I (DX00881) (Global Commercial Team Workshop Notes & Presentation Slides). 92. In the various analyses by Pharma-cia, none identified the Travatan trademark as an issue. Def. Ex. U (DX02271) (Xalatan U.S. Product Plan 2002 listing “vigorous defense of three main patents” as a “strategic initiative”); 12/20 Tr., at 179-80 (Gurreri). 93. While document after document from 1999 through early 2001 reflects that Pharmacia analyzed what it knew of Aleon’s clinical studies, launch dates and marketing concepts for Travatan, and repeatedly tested the Travatan name and drug profile with ophthalmologists, none identify the Travatan mark as a problem. Def. Ex. I (DX01029-39); Id. (DX01111-18); Id. (DX01119-40); Id. (DX00846-52); Id. (DX011410-50); Def. Ex. (DX03859L-R); Def. Ex. QQQ(DX04719-800A); Def. Ex. QQ (DX04719-800A); Id. (DX03603-57); Id. (DX03723-76); Id. (DX03509-83). 94. Throughout almost all of this period, Pharmacia perceived Lumigan, and not Travatan, as the prime competitive threat until late January or early February 2001, when Pharmacia received its first indication that Travatan would be the greater competitive threat. CDC, a marketing research firm hired by Pharmacia, distributed a report dated early February 2001 stating that, “[i]t appears Travatan will provide the greatest threat to Xalatan.” Gurreri Tr., at 106, 141-42; Def. Ex. QQQ (DX04884)(CDC Report); 12/20 Tr., at 208-12 (Gurreri); Def. Ex. I (DX00904); Def. Ex. QQQ (DX05006). 95. In connection with negotiations over patent issues Alcon told Pharmacia about its plans to market Travatan as early as June 30, 2000. Def. Ex. A (DX0002)(Arno Deck, ¶ 3); Id. (DX005-06) (Arno Deck, Ex. A); 12/21 Tr., at 10-12 (Battle). 96. In subsequent monthly correspondence and in a face-to-face meeting in December, 2000, both parties consistently used the name “Travatan.” Def. Ex. A (DX0005-16) (Arno Deck, Exs. A-J) (negotiation letters); Def. E. KKK (DX04646-64) (Battle Dep. Exs.2-9) (same); 12/21 Tr., at 24, 40-42, 51-57 (Battle). 97. The correspondence and negotiations were an attempt to resolve patent issues, but even before Alcon initiated these discussions, Mr. Battle had regular discussions with Dr. Anders Harfstrand concerning the potential patent threat of Alcon’s prostaglandin analogue product and the negotiations with Alcon. 12/21 Tr., at 29-31, 36-37, 40-42 (Battle). 98. Despite the fact that Mr. Battle knew of the Travatan mark no later than May 2000, Mr. Battle testified that he and Dr. Harfstrand “never” discussed the Tra-vatan name before October 2000. The Court finds this inconceivable in view of Mr. Battle’s consistent use of the Travatan name in his correspondence with Alcon. 12/21 Tr., at 48-49 (Battle); Def. Ex. A (DX0005-16) (Arno DeckExs. A-J); Def. Ex KKK (DX0464-64) (Battle Dep. Exs.2-9). Mr. Battle claims that he did not recognize, until Dr. Harfstrand brought it to his attention in October 2000, that Phar-macia might have trademark concerns, as well as patent concerns, about Travatan. 12/21 Tr., at 12-13, 37-38, 44^5, 48-49 (Battle). 99. Yet even after October 2000, Mr. Battle never suggested the possibility of a trademark conflict to Alcon by letter, telephone, or in their face-to-face meeting in December 2000. Battle Tr., at 58-59;12/21 Tr., at 44-45, 50, 53-54 (Battle). Nothing was said to Alcon even after Dr. Harfst-rand raised trademark issues with Mr. Battle in October 2000. 12/21 Tr., at 44 (Battle); 12/20 Tr., at 177, 184. 100. At the evidentiary hearing, Dr. Harfstrand testified that he was “very upset” upon learning of the Travatan mark in connection with the October 2000 conference of the American Academy of Ophthalmology. 12/17 Tr., at 75 (Harfstrand). In an October meeting, he told Mr. Battle the Travatan trademark “was a problem” and “absolutely” infringed Pharmacia’s trademark,” and “diluted Pharmacia’s trademark.” 12/17 Tr., at 111-12 (Harfstrand). According to Dr. Harfstrand, Mr. Battle promised to “take care of it and work on it” and thereafter provided Dr. Harfstrand with status updates on an “almost weekly” basis. 12/17 Tr., at 75-76 (Harfstrand). 101. Mr. Battle has “ultimate responsibility” for Pharmacia’s trademarks, 12/21 Tr., at 6 (Battle), and has been familiar with the Xalatan product since October 1999. Id. at 11. No trademark issue crossed his mind when he first saw the name Travatan in May 2000, although he specifically noted at that time that the suffix for Travatan “was similar to the AT-A-N in Xalatan.” Id. at 10, 12-13. Rather, Mr. Battle focused exclusively on a patent case as “the way to go” in dealing with the competitive threat posed by Tra-vatan. Id. at 38, 49. 102. Mr. Battle testified that even after Dr. Harfstrand brought his concern over the Travatan trademark to Mr. Battle’s attention in October 2000, he waited “a couple of weeks” to have Pharmacia’s in-house trademark counsel, Ms. Cynthia Summerfield, “look at the matter for me.” Id. at 33-45. Ms. Summerfield, along with the help of outside counsel, spent from October 2000 to February 2001 reviewing whether Pharmacia would have a “meritorious claim” with respect to Travatan. Id. at 52, 54, 58-59. 103. Mr. Battle also testified, in contrast to Dr. Harfstrand, that in their subsequent meetings, they “primarily” discussed “patent matters” and he only told Dr. Harfstrand that “we were looking into the trademark issue” rather than providing any specific updates. Id. at 48. 104. On February 5, 2001, after the patent negotiations reached an impasse, Pharmacia advised Alcon in writing that it had commenced a patent infringement case over the Travatan product in Delaware. Def. Ex A (DX0003) (Arno Decl ¶ .10); Id. (DX00016) (Arno Decl., Ex. J). On February 7, 2001, Pharmacia first notified Alcon that the Travatan trademark was a “concern” to Pharmacia. 12/21 Tr., at 64 (Battle); Def. Ex. A (DX0004) (Arno Decl., ¶ 12). 105. It was not until March 9, 2001, or seven days before the launch of Travatan, that Pharmacia formally demanded that Alcon abandon the Travatan mark. 12/21 Tr., at 66-67 (Battle). VIII. THE ABSENCE OF CONFUSION IN THE MARKET PLACE 106. Confusion between the Xalatan and Travatan products is unlikely, due to the different prefixes, the differences in packaging and marketing methods, as well as the products’ nine-month coexistence with no actual confusion. 107. First is the fact that the dominant prefixes of Travatan and Xalatan are distinctive and very different from one another. 108. Moreover, the product packages for Xalatan and Travatan are different from one another. Alcon’s Travatan packaging displays the Alcon mark and uses a distinct all-capital font, type size and purple coloring, whereas Pharmacia’s Xalatan packaging reinforces the “Xal” prefix with an oversized, turquoise capital and stylized “X” juxtaposed with the lowercase and plain font “alatan.” Def. Ex. E(Kureger Decl., Ex.5); Def. Ex. Ill (Xalatan Package); Def. Ex. JJJ (Travatan package). The Travatan box also is significantly larger that the Xalatan box and contains the unique foil-overwrap packaging used only by Alcon. Def. Ex. E(DX00336)(Krueger Deck, ¶ 28); Def. Ex. Ill (Xalatan Package); Def. Ex. JJJ (Travatan Package); 12/17 Tr., at 224-25 (Di Domizio); 12/18 Tr., at 178 (Lambert); Gurreri Tr., at 360-61. 109. The promotion of the products also serves to distinguish them. Detailing visits by product representatives from different manufacturers is a primary method of promoting ophthalmic prescription medicines, including Xalatan and Travatan. Garanzini Tr., at 39; Obstbaum Tr., at 25-26; Gurreri Tr., at 12-16. During such visits, Alcon representatives promote the entire line of Alcon products, including Travatan, whereas Pharmacia representatives promote only Xalatan. Def. Ex. B (DX00021) (Barton Decl., ¶ 16); Garanzini Tr., at 38-39. 110. Sales representatives often make comparisons to competing products during these detailing visits. Eisenberg Tr., at 65-66; Ex. I (DX00807-809); Id. (DX00978-92). 111. Advertising and articles in medical journals also identify the manufacturers of glaucoma products. 12/19 Tr., at 85, 88-89, 114-15 (McCullough); 12/18 Tr., at 54, 76-78 (Eisenberg); Obstbaum Tr., at 13-14, 25, 34; Garanzini Tr., at 20-21, 39, 190. 112. A published chart of sound alike names also “serves to decrease the likelihood of any confusion between Xalatan and Travatan.” 12/17 Tr., at 216 (Di Dom-izio). 113. These various sources of information about glaucoma products would help to make ophthalmologists and optometrists aware that the different medications each company’s representatives promote are manufactured by different companies. Obstbaum Tr., at 25-26. 114. There is no evidence of actual confusion in the market place. Alcon began shipping Travatan on March 16, 2001, the day it received FDA approval. Through the end of October, 2001, more than 115,-000 prescriptions for Travatan had been filed. Def. Ex. TT (DX03877-82), and more than 200,000 units of Travatan had been shipped to pharmacies. Def. Ex. E (DX00331) (Krueger Decl., ¶ 11). There have been no reported instances of confusion, nor is there any evidence of medication errors involving the two drugs. Pharmacia has acknowledged that it knows of no instances of actual confusion. Def. Ex. I (DX01236) (1st Int. Ans. No 10); Gurreri Tr., at 78-80; Obstbaum Tr., at 61-65; Eisenberg Tr., at 80-81; 12/17 Tr., at 113 (Harfstrand); Harfstrand Tr., at 159-60; Garanzini Tr., at 38 — 41. 115. In a comprehensive survey conducted by Pharmacia from July through September 2001, ophthalmologists consistently demonstrated recognition of various characteristics of both Xalatan and Trava-tan. These studies show no indication that ophthalmologists surveyed believed Xala-tan to be an Alcon product or Travatan to be a Pharmacia product. 12/20 Tr., at 221-24 (Gurreri); Gurreri Tr., at 225-32, 374: Def. Ex. QQQ (DX04747-800A) (Wave Awareness Usage Study) (complete): Def. Ex. I (DX00930-54) (same) (excerpts); Id. (DX00966-77) (Wave III research). 116. The United States Pharmacopeia (“USP”) collects and reports instances (both “actual” and “potential”) of mispres-cription and medication error. It has not reported any actual instances of mispres-cription or error between Travatan and Xalatan. Def. Ex. G (X00605-08) (McCabe Decl., Ex. 7) (USP Quality Review, May 1999); Def. Ex. K (DX01438-43) (Di Domi-zio Decl., Ex. 3) (USP Quality Review, March 2001); Def. Ex. C (DX00229) (De-Santis Decl., Ex. 6) (USP Medication Errors Reporting Program form); 12/17 Tr., at 210-13 (Di Domizio); 12/18 Tr. 168-71 (Lambert); Di Domizio Tr. 182-83. 117. By FDA regulation, 21 C.F.R. § 314.80(i), Pharmacia is required to maintain a database of all adverse events involving Xalatan. Gurreri Tr., at 187-88; 12/17 Tr., at 112 (Harfstrand); 12/20 Tr., at 227 (Gurreri). Pharmacia has not produced any evidence of any confusion between Xalatan and Travatan. 118. Alcon also maintains a similar database. It has received no reports of any confusion between Xalatan and Travatan. Krueger 10/30 Tr., at 52-54; Def. Ex. E (D00335) (Krueger Decl., § 26). 119. Pharmacia did not conduct a confusion survey. 120. There is no credible evidence in the record that patients are likely to confuse Xalatan and Travatan. IX. EXPERT TESTIMONY 121. Pharmacia submitted opinion evidence to support its contention that confusion between the Travatan and Xalatan marks is likely. It relied on four expert witnesses: Dr. Stephen A. Obstbaum, Dr. Dan L. Eisenberg, Mr. George Di Domizio and Dr. Bruce L. Lambert. In addition, Pharmacia relied on a survey conducted by Walter McCullough to support its contention that the Travatan mark dilutes the Xalatan mark. The Court, for reasons that will be discussed, has accorded these opinions little weight, and in some case, none. Alcon, on the other hand, submitted a survey of ophthalmologists and optometrists conducted by Professor Shari Diamond (who also testified). Relying on a net confusion rate of 1.5%, Dr. Diamond concluded that there is “no evidence that the name of Alcon’s product Travatan is likely to cause confusion with the name of Pharmacia’s product Xalatan in the relevant population,” i.e. ophthalmologists and optometrists. The Court finds her opinion persuasive and her testimony credible. A. Pharmacia’s Expert Testimony (1) Dr. Obstbaum 122. In his declaration, Dr. Obstbaum opined that “the Travatan name is very similar to the Xalatan name,” and that “there is a likelihood that medication substitution could occur, because of the substantial similarity” of the names. It was his opinion that “a medication error by which a pregnant woman patient received Travatan rather than Xalatan can pose a health risk to that patient.” Def. Ex. K (DX01351) (Obstbaum Decl., ¶ 14); Id. (DX01352) (Obstbaum Decl ¶¶ 15, 16). Dr. Obstbaum’s declaration did not disclose that he has been a Pharmacia consultant for fourteen years and is currently paid $190,000 per year for his services. Obst-baum Tr., at 43-44. In any event, for the reasons set forth in the Court’s Opinion and Order dated November 28, 2001, the Court held these opinions inadmissible. (2) Dr. Eisenberg 123. Dr. Eisenberg was of the opinion that the FDA’s approval of the Travatan name was based on “reasoning” that “no longer holds.” Def. Ex. K (DX01402-03) (Eisenberg Decl., ¶¶ 5-6). However, the Court in its November 28, 2001 Opinion and Order, held that this opinion regarding the FDA’s reasoning was inadmissible. 124. Dr. Eisenberg also was of the view that “it is not unreasonable to anticipate a confusion between Xalatan and Travatan.” Def. Ex. K (DX01402-03) (Ei-senberg Decl-,¶¶ 5-6); 12/18 Tr., at 55 (Ei-senberg). In his opinion, confusion would occur “when the patient transfers from one physician to another and is asked to give a list of their medications.” 12/18 Tr., at 56. The only specific grounds for his opinion regarding Travatan and Xala-tan are two experiences he had where prescriptions he wrote for Beltagan and Betimol were filled with Betimol and Be-toptic S, respectively. Def. Ex. K (DX01403) (Eisenberg Decl., ¶ 6). 125. Dr. Eisenberg’s testimony must be evaluated in the context of his business relationship with Pharmacia (not disclosed in his declaration). Since 1998, he has been hired to speak for an organization that markets Xalatan for Pharmacia, charging $1500 per afternoon or $5,000 per day. 12/18 Tr., at 55, 100 (Eisenberg). Pharmacia had also provided Dr. Eisen-berg with “material support” such as Baerveldt shunt devices and a Helon GB surgical device. 12/18 Tr., at 100-01; Ei-senberg 9/5 Tr., at 35-36. At the time he testified, Dr. Eisenberg also was being considered for a Pharmacia-sponsored study that would pay over $150,000. 12/18 Tr., at 101-02 (Eisenberg). 126. Dr. Eisenberg testified that he has no knowledge concerning whether the beginnings of words are more likely to cause confusion than the endings. Eisen-berg Tr., at 88. Nor was his opinion supported by any survey or other empirical research. Id. at 78-79; 12/18 Tr., at 96-97. 127. Any confusion generated by patient transfers is just as likely to be off set by the differences in packaging and storage between the two products. See Def. Ex. E (DX00353) (Krueger Deck, Ex. 5); 12/17 Tr., at 223-27 (Di Domizio); 12/18 Tr., at 117 (Eisenberg). 128. Dr. Eisenberg’s testimony as to confusion among pharmacists and their assistants was less than convincing: such confusion is “possible” not “likely,” 12/18 Tr., at 56-57 (Eisenberg), moreover it occurs “completely apart from any confusion with regard to names.” Id. at 112-113. 129. The Court finds the “not unreasonable to anticipate” confusion testimony of little value, even with Eisenberg’s subsequent attempt at clarification that this phraseology is “statistical terminology” for “likely.” This results from the absence of any statistical analysis from Dr. Eisen-berg, any experience in trademark-related matters, or in the FDA clearance process for pharmaceutical trademarks. Eisen-berg 9/5 Tr. 96-100-04. Moreover, he has no knowledge of the number of pharmaceutical trademarks that end with “TAN” or “ATAN.” Id. at 74. (3) Mr. Di Domizio 130. George Di Domizio, retired Chairman of the Merck Trademark Committee, Di Domizio Tr. 8-11, offered the opinion on behalf of Pharmacia that “[t]he name Tra-vatan is similar to Xalatan,” Def. Ex. K(DX01418) (Di Domizio Deck, ¶ 14), that “[t]his name similarity ... leads me to conclude that medication errors between the two products are likely to occur,” Id.; 12/17 Tr., at 184-85 (Di Domizio), that health professionals do not recognize shared terminal syllables as denoting treatment class similarity, Def. Ex. C (DX00171) (DeSantis Deck ¶¶ 14-16), and OPDRA’S recommended approval of the Travatan name was “based on erroneous information,” 12/17 Tr., at 188-89 (Di Domizio). 131. The Court did not find his testimony persuasive for the following reasons: (a) Most of the time he testified about the “possibility” of confusion, not the “likelihood” of confusion, which is irrelevant to the governing legal standard. (b) He claimed no knowledge of the prevalence of “TAN” or “AN” in the pharmaceutical market, even though he knew that some suffixes are very common in the industry. Di Domizio Tr., at 93-94. (c) In his own practice, Mr. Di Domizio did not have any hesitation about approving pharmaceuticals whose trademarks used suffixes identical to those already in use on other drugs. Id. at 116-24, 208-209. (d) His assessment of the confusing similarity of the two marks conflicts with the FDA’s testing of the Travatan mark. Di Domizio Tr., at 105. (e) Although he worked on a ten-factor model (the “1010 Model”), purportedly designed to analyze trademarks for confusing similarity, Mr. Di Domizio testified that he did not apply that model, or any other model, in reaching his opinion in this matter. 12/17 Tr., at 216-17; Di Domizio Tr., at 31. 132. Mr. Di Domizio also testified that healthcare practitioners are not trained to recognize similar suffixes in pharmaceutical brand names as indicating that the drugs share a “relevant product category.” Di Domizio Reply Deck, ¶¶ 11, 14. This statement is not only inconsistent with his admission that many pharmaceutical products in the same class share common suffixes, even when those suffixes are not suggestive of the product’s attributes, Di Domizio Tr., at 208, but also with other evidence demonstrating that healthcare professionals are trained to make suffix class associations. Def. Ex. C (DX00171-72) (De Santis Dec. ¶¶ 14-17). 133. Mr. Di Domizio was also of the opinion that the report of the FDA’s OP-DRA department, Def. Ex. E (DX00344-48)(Krueger Deck, Ex. 3), is “based on erroneous information,” # 12/17 Tr., at 188-89 (Di Domizio), but other than the report itself, Mr. Di Domizio had no personal or direct knowledge of any considerations that went into the OPDRA review of the Travatan name and product. 12/17 Tr., at 191 (Di Domizio). 134. An acquaintance of Mr. Di Domi-zio, Dr. Neil Davis, published on the eve of the hearing in this case, a list of potential “look-alike,” “sound alike” names that included Xalatan and Travatan. 12/17 Tr., at 186, 206-07; PX 287 (Di Domizio). Mr. Di Domizio’s own testimony seriously devalues his opinions on this chart: he did not have “any idea” how Travatan and Xalatan got onto the list. 12/17 Tr., at 207. He acknowledged the names did not get on Dr. Davis’s list through the U.S. Pharmacopeia Institute for Safe Medication Practices medication error reporting program (reporting the name), and that a single unknown individual could have Xala-tan and Travatan appear on the list simply by suggesting their inclusion even if “they didn’t look alike or sound alike.” Id. at 214-215. He couldn’t rule out the possibility that the lawsuit itself could have caused Dr. Davis or someone else to include the name on his list. Id. at 208. (4) Dr. Lambert’s Statistical Model 135. Pharmacia relies on the opinions of Dr. Bruce Lambert, a professor of pharmacy with degrees in speech communication, as the proponent of a statistical model purportedly capable of predicting likelihood of confusion between drug names by measuring the similarity in spelling and pronunciation of pairs of drug names. Ph. Supp. Br., at 29-31