Request for Reconsideration afier Final Action
`
`Page 1 of 17
`
`PTO Fon'n 1960 (Rev 9/2007)
`
`OMB No. xxxx-xxxx (Exp. xlxxxx)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`
`
`
`
`
`
`
`
`
`
`MOTION FOR RECONSIDERATION
`
`
`
`
`This communication is responsive to the final Ofiice Action dated August 3, 2007.
`
`Remarks
`
`The Examining Attorney has requested clarification with regard to Applicant’s claim of 2(f)
`based on its section 44(e) Application. Based on the following arguments and submissions, Applicant
`
`respectfully requests that the Examining Attorney reconsider the refusal to register and approve the
`
`subject application for publication.
`
`The Examining Attorney refused registration of Applicant’s mark based on a finding that the
`mark is merely descriptive. Based on the following arguments and submissions, Applicant
`respectfully requests that the Examining Attorney reconsider the refusal to register and approve the
`
`
`
`I.
`
`The Subject Mark Has Acquired Distinctiveness Through Registration and Use
`
`subject application for publication.
`
`
`
`The Examining Attorney has requested that Applicant submit additional evidence supporting
`
`use in commerce. In addition to the evidence provided herein, Applicant hereby reasserts its claim
`
`
`
`that Applicant’s mark is inherently distinctive, but at a minimum has become distinctive of the goods
`
`file ://\\ticrs-ais-O1\ticrs export\Htm1ToTiITInput\RFR000 12008_02_O6_1 5_1 5_3 4_TTAB08...
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`2/6/2008
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`

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`Request for Reconsideration afier Final Action
`
`Page 2 of 17
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`in the application through Applicant’s prominent, substantial, exclusive and continuous use ofthe
`
`mark for at least eight years. Applicant already owns three registered marks for its IMIDS
`
`designation.
`
`1)
`
`Applicant’s Ownership of Registrations for Three IMIDS Marks Evidence A
`
`Family of IMID Marks that is Distinctive and Capable of Registration
`
`Applicant is the owner of U.S. Trademark Registrations for a family of IMID marks.
`
`Applicant is the owner of U.S. Reg. No. 3,264,639 for the mark IMIDS for “pharmaceutical
`
`preparations for use in the treatment of cancer and immune related diseases” in International Class 5.
`
`See Exhibit A (attached TARR Records).
`
`Applicant is also the owner of U.S. Reg. No. 3,259,714 for the mark IMIDS for “custom
`
`manufacturing of pharmaceutical products” in International Class 40; and for “research in the fields of
`
`chemicals and pharmaceuticals; scientific research services; research and testing services in the fields
`
`of chemicals and pharmaceuticals; research and development of new products for others in the fields
`
`of chemicals and pharmaceuticals; development of pharmaceutical products to specifications of
`
`others” in International Class 42. See Exhibit B (attached TARR Records).
`
`Applicant is also the owner of U.S. Reg. No. 2,858,332 for the mark IMIDS for
`
`“pharmaceutical preparations, namely, cytokine inhibitory drugs; pharmaceutical preparations that
`
`modulate the immune system.” See Exhibit C (attached TARR Records). Applicant argues in the
`
`alternative that these prior registrations evidence acknowledgement by the U.S. Patent and Trademark
`
`Office that IMID is distinctive and capable of registration.
`
`As such, Applicant respectfully requests that the Examining Attorney reconsider the refusal to
`
`register and approve the subject application for publication.
`
`2)
`
`Applicant’s Use of the IMID Mark in Commerce Further Evidences
`
`Acquired Distinctiveness
`
`Since at least as early as May of 2001, Applicant has used the IMID designation at scientific
`conferences and industry trade shows. See Exhibit D (demonstrating use at trade show booths).
`
`file://\\ticrs-ais—01\ticrsexport\HtmlToTifiInput\RFR000l2008_02_06_15_l5_34_TTAB08...
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`2/6/2008
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`

`
`Request for Reconsideration after Final Action
`
`_
`
`Page 3 of 17
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`Applicant utilizes both trade show booths and presentations to communicate the IMID mark to
`the public, and to forge an association between the IMID mark and Applicant’s IMID drugs. See
`Exhibit D (demonstrating use at trade show booths). While booths at trade shows promote the value
`of IMID compounds, they also create commercial interest, and result in both direct as well as indirect
`business propositions from interested parties. Such booths function as a point of sale location for
`purposes of licensing or outright selling of Applicant proprietary IMID drugs. See Exhibit D
`(demonstrating use at trade show booths).
`
`Applicant continually provides the various slides promoting the IMID mark at its tradeshow
`booths, and
`through investor presentations, one such slide stated as follows:
`
`“IMIDTM:
`
`Novel agents that have shown anti-cancer and anti-inflarnmatory activities, including:
`
`0
`
`0
`
`0
`
`0
`
`0
`
`induction of an immune response
`
`alteration of cytokine levels
`
`induction of cell cycle arrest/apoptosis
`
`inhibition of angiogenesis
`
`reduction of stromal cell adhesion”
`
`See Exhibit E (trade show booth slide).
`
`Applicant also utilizes the subject mark throughout clinical trials as well. See Exhibit F
`(demonstrating use
`
`of the subject mark in investigator’s brochures). Such were used in commerce along with the IMID
`compound.
`
`See id. In accordance with the facts and submissions provided herein, Applicant respectfully requests
`that the
`
`Examining Attorney reconsider the refiisal to register and approve the subject application for
`publication.
`
`II.
`
`The Subject Mark Does Not Merely Describe Applicant’s Goods, and is Therefore
`Not Merely Descriptive
`’
`
`Applicant respectfully submits that the Examining Attorney’s conclusion is flawed with
`
`respect to its finding that the IMID mark is merely descriptive for Applicant’s goods. As stated in the
`
`Final Office Action dated August 3, 2007, the Examining Attorney writes:
`
`“The examining attorney’s position is that IMID is an acronym accepted
`
`file://\\ticrs-ais—01\ticrs export\HtmlToTifiInput\RFR00O 12008_02_06_1 5_1'5_34_TTAB08...
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`2/6/2008
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`

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`Request for Reconsideration afier Final Action
`
`Page 4 of 17
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`throughout the medical profession for “immune mediated inflammatory
`diseases” and therefore, as applied to applicant’s pharmaceuticals for
`modulating the immune system and cytokine inhibitory drugs describe
`the class of the goods. Evidence was submitted that cytokines are
`biophysioloigcal activators of immune mediated diseases and that IMID
`is recognized as a subspecialty of medicine.”
`
`As a preliminary matter, IMID is not a term recognized by any academic or scientific group to
`
`signify a disease group. A search of online medical dictionaries fails to uncover even a single
`
`definition for IMID, let alone a definition for IMID as a term used to signify a disease group for
`
`autoimmune diseases. See e.g. Exhibit G (No results found from search of MedLine Plus Online
`
`Medical Dictionary database).
`
`No acceptable definition for an IMID disease group exists, even in those cited references
`
`alleging that IMID signifies an understood disease group. According to the cited evidence from the
`
`website of the Magee-Womens Hospital of UPMC includes “more than 80 chronic autoimmune
`
`diseases targeting virtually any part of the body.” Applicant is not aware of any public reference to a
`
`comprehensive list of all eighty (80) diseases that belong to such an alleged disease group. Further,
`
`Applicant notes that this definition, as appears in the cited evidence, is no longer available on the
`
`website for the Magee-Womens Hospital of UPMC. See Exhibit I (Google Search Results).
`
`Applicant’s IMID drugs are easily distinguishable because they are known by consumers as
`
`anti-cancer drugs. See cited evidenced from 21 October 2006 article by the Department of
`
`Interdisciplinary Oncology at the University of South Florida College of Medicine Cancer (concluding
`
`the efficacy of IMID drugs, as powerful anti-cancer drugs with impressive results in treating
`
`myelodysplastic syndromes (“MDS”)). MDS is a form of cancer. See Exhibit H, Printout from
`
`American Cancer Society Website citing that MDS is presently categorized as a type of cancer].
`
`Cancer simply is not an autoimmune disease. Thus, it would be incorrect to conclude, as the
`
`Examining Attorney has stated, that the “present perception of the relevant consumers (i.e. research
`
`scientists and doctors) is that IMID describes a class of diseases that IMID pharmaceuticals treat.”
`
`Even the cited evidence suggests otherwise. See cited evidence from December 2006 article written
`
`by researchers from the H Lee Moffitt Cancer Center & Research institute (regarding efficacy of
`
`file://\\ticrs-ais-O1\ticrsexport\HtmlToTifi'Input\RFRO0012008_02__O6_15_l5_34_TTAB08...
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`2/6/2008
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`

`
`Request for Reconsideration after Final Action
`
`-
`
`Page 5 of 17
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`IMID drugs in the treatment of MDS); see also cited evidence from September 2005 press release by
`
`Celgene Corporation (indicating that IMID lenalidomide “is currently in late state clinical
`
`development for MDS and multiple myeloma [another type of cancer]”).
`
`Even if IMID is a generic term for a disease group, which it is not, such a conclusion is
`
`irrelevant to the analysis of the registrability of the subject mark for Applicant’s drugs. The analysis
`
`here should solely focus on whether IMID is merely descriptive for Applicant’s dmgs. Even a mark
`
`deemed generic for one class of goods fails to preclude others from using that mark for every other
`
`good or service. For that reason, APPLE is generic when used in connection with the fruit, but
`
`inherently distinctive when used in connection with computers. In the present case, IMID is inherently
`
`distinctive for drugs whether or not it is deemed generic for a disease group.
`
`As such, Applicant respectfully requests that the Examining Attorney reconsider the refiisal to register
`and
`
`approve the subject application‘ for publication.
`
`The Cited Evidence Reflects Misuse of the IMID Mark That Either A) Does Not Reflect
`III.
`the Present Perception of Relevant Consumers or B) Represents Academic References and Not
`Use in Commerce
`
`The Examining Attorney erroneously concludes that the cited evidence shows that the present
`
`perception of the relevant consumers is that IMID describes a class of diseases that IMID
`
`pharmaceuticals treat. The cited evidence reflects (1) historic references, some of which are either no
`
`longer publicly available because they have been altogether removed from the cited webpages due
`
`primarily to the phase out required as a result of Applicant’s enforcement efforts with Centocor, which
`
`resulted in Centocor agreeing to a settlement to phase-out all use of the IMID designation and cease
`
`promotion of the IMID designation through third parties; and/or (2) references cited by the Examining
`
`Attorney that merely consist of academic articles, which never were used in connection with the sale
`
`of any goods and services, and solely represent use in connection with academic research and not
`
`commercial use.
`
`1)
`
`VVebsites for “Magee—Womens Hospital of UPMC” and “IMID.US” No Longer
`
`Reference the Subject Mark
`
`file ://\\ticrs-ais-01\ticrsexport\HtmlToTifflnput\R_FR000 l2008_O2_06_1 5_l 5_3 4__TTABO8. ..
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`2/6/2008
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`

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`Request for Reconsideration afier Final Action
`
`Page 6 of 17
`
`The Examining Attorney explicitly references cited evidence for “the websites for “Magee”
`
`and “IMID.US” as “contributing to the overall public perception. . .that IMID refers, at least, to the
`
`disease, and in medical practice to the drugs as well.” Applicant notes that the cited evidence of the
`
`webpage for the Magee-Womens Hospital of UPMC is provided as a printout from Google’s “cache”
`
`and not a printout of the website available as of the date of the search. As stated on the cited evidence
`
`itself, “Google’s cache is the snapshot that we took of the page as we crawled the web. This cached
`
`page may reference images which are no longer available.” Clearly this evidence is a historical
`
`artifact, which is not present on the Internet today, and likely was not present on the Internet as of the
`
`date of the search. In fact, a present—day search of the website for the Magee-Womens Hospital of
`
`UPMC website, located at http://magee.upmc.com, reveals zero (0) references to the IMID term. See
`
`Exhibit I(Goog1e Search Results).
`
`Nonetheless, this misuse of the IMID designation initially resulted from support provided by
`
`Centocor through funding provided to the Federation of Clinical Immunology Socieities (FOCIS). As
`
`stated in the cited reference for the Magee-Womens Hosptial, “Magee ofiers one of the only dedicated
`
`IMID treatment centers in the region. The center is supported by. .
`
`. .FOCIS.” In connection with the
`
`settlement between Applicant and Centocor, FOCIS has ceased using and promoting the IMID
`
`designation as well.
`
`With regard to the IMID.US website, Celgene is now the owner of the website. See Exhibit J
`
`(WHOIS record for the IMID.US domain name). The IMID.US website previously was owned and
`
`operated by a Centocor employee, who in connection with the settlement agreement for the lawsuit
`
`involving Applicant, transferred ownership to Applicant. Again, this previously cited evidence solely
`
`represents an historical reference, which as a direct result of Applicant policing its mark, resulted in
`
`the removal of this misuse of the IMID mark.
`
`Applicant notes that with the exception of the cited evidence for the (1) Magee-Womens
`
`Hospital website; and the (2) Wikipedia article for “IMID,” which contains zero (0) references (other
`
`than the reference to the lMID.US domain name), all other cited evidence are to academic articles not
`
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`Request for Reconsideration afier Final Action
`
`Page 7 of 17
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`used in commerce in connection with a good or service. Such references solely illuminate use in
`
`connection with academic research and thus are of limited value in this case. As such, Applicant
`
`respectfully requests that the Examining Attorney reconsider the refusal to register and approve the
`
`subject application for publication.
`
`IV. Misuse of the IMID Trademark by Third Party Academicians Does Not Extinguish
`
`Applicant’s Rights in the Subject Mark
`
`"Trademark law does not mandate that Applicant seek out each and every misuse of its mark.
`
`Likewise, trademark law does not extinguish Applicant’s rights solely upon misuse by third-parties.
`
`Applicant has engaged in years of litigation over use of the IMID mark, which resulted in successful
`
`settlement agreements with various third-parties agreeing to discontinue all use of the IMID mark.
`
`However, the Examining Attorney has nonetheless held:
`
`“applicant has not controlled the use of IMID as a source indicator (i.e. mark) in
`advertising and promotion, and instead chooses to use IMID as a generic term in
`scientific research setting, offering this manner of use to the medical industry to refer
`to the class of goods in journal articles, treatment web sites and the like.”
`
`Applicant simply should not be held accountable for third-party non-trademark misuse
`
`of the IMID designation in the academic research context. Applicant has never chosen to use
`
`the IMID mark in a generic manner, nor approved of the academic community’s use of the
`
`IMID mark in a manner other than as a source indicator for Applicant’s IMID compounds as
`
`proprietary drugs. Furthermore, use of a term in a non-commercial manner, such as in an
`
`academic or research setting does not constitute trademark use and does not preclude
`Applicant’s registration ofthe term. None ofthe cited evidence ofuse in academic articles
`
`relates to use in connection with goods or services, and thus has minimal value here. As such,
`
`the Examining Attorney should recognize the refusal to register and approve the subject mark
`
`for publication.
`
`V.
`
`Consumers Understand that IMID Refers to Applicant’s Drugs
`
`Consumers of Applicant’s drugs include market participants in the medical and scientific
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifflnput\RFR00012008_O2_O6_15_15_34_TTAB08...
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`Request for Reconsideration afier Final Action
`
`Page of 17
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`communities including doctors and research institutions.
`
`In order to bring App1icant’s IMID drugs to
`
`market, substantial investment is required. The Examining Attorney states that “the overall public
`
`perception of medical professionals and laypersons alike [is] that IMID refers, at least to the disease,
`
`and in medical practice to the drug as well.” However, given the sophistication of the consumers
`
`involved, the millions of dollars required to partake in ventures related to Applicant’s IMID drugs,
`
`and the extensive promotion of the IMID mark by Applicant for its proprietary compounds, the
`
`perception of the relevant consumers is that IMID refers solely to Applicant’s goods.
`
`Based on this evaluation, Applicant respectfully submits that the cited evidence sufficiently
`
`demonstrates that Applicant’s mark is distinctive for the goods in the application and the refusal to
`
`register should be withdrawn.
`
`CONCLUSION
`
`Accordingly, Applicant respectfillly submits that the Examining Attorney can withdraw the
`
`refusal to register and that the subject application can be approved for publication and, in due course,
`
`registration.
`
`EVIDENCE SECTION
`
`EVIDENCE FILE NAME(S)
`
`I»$‘é‘%ii%L
`«mm
`
`CONCURRENT APPEAL NOTICE FILED YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Mon Feb 04 11:07:46 EST 2008
`
`file://\\ticrs-ais-O1\ticrsexport\HtmlToTifflnput\RFROO012008_O2_06_15_15_34_TTAB08...
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`2/6/2008
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`

`
`Request for Reconsideration after Final Action
`
`Page 9 of 17
`
`TEAS STAMP
`
`02040959094852l6
`
`USPTO/RFR-12.104. 104. 106-
`20080204110746120244-7701
`2432-4l04b9e74c2dd36804b6
`78fc8e3d9395-N/A-N/A-2008
`
`an......................................-................................................................................Mn.................-...................................................................................................an.....am...mu.......M............................................................
`
`P'TO Form 1960 (Rev 9/2007)
`
`OMB No. xxxx-xnorx (Exp. xlxxxx)
`
`Request for Reconsideration after Final Action -
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77012432 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`MOTION FOR RECONSIDERATION
`
`This communication is responsive to the final Office Action dated August 3, 2007.
`
`Remarks
`
`The Examining Attorney has requested clarification with regard to Applicant’s claim of 2(f)
`
`based on its section 44(e) Application. Based on the following arguments and submissions, Applicant
`
`respectfiilly requests that the Examining Attorney reconsider the refiisal to register and approve the
`
`subject application for publication.
`
`The Examining Attorney refused registration of Applicant’s mark based on a finding that the
`
`mark is merely descriptive. Based on the following arguments and submissions, Applicant respectfully
`
`requests that the Examining Attorney reconsider the refusal to register and approve the subject
`
`application for publication.
`
`I.
`
`The Subject Mark Has Acquired Distinctiveness Through Registration and Use
`
`The Examining Attomey has requested that Applicant submit additional evidence supporting use
`
`in commerce.
`
`In addition to the evidence provided herein, Applicant hereby reasserts its claim that
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR00012008_O2_06_l5_15_34_TTAB08...
`
`2/6/2008
`
`

`
`Request for Reconsideration after Final Action
`
`Page 10 of 17
`
`Applicant’s mark is inherently distinctive, but at a minimum has become distinctive of the goods in the
`
`application through Applicant’s prominent, substantial, exclusive and continuous use of the mark for at
`
`least eight years. Applicant already owns three registered marks for its IMIDS designation.
`
`1)
`
`Applicant’s Ownership of Registrations for Three IMIDS Marks Evidence A
`
`Family of IMID Marks that is Distinctive and Capable of Registration
`
`Applicant is the owner of U.S. Trademark Registrations for a family of IMID marks. Applicant
`
`is the owner of U.S. Reg. No. 3,264,639 for the mark IMIDS for "pharmaceutical preparations for use in
`
`the treatment of cancer and immune related diseases” in International Class 5. See Exhibit A (attached
`
`TARR Records).
`
`Applicant is also the owner of U.S. Reg. No. 3,259,714 for the mark IMIDS for “custom
`
`manufacturing of pharmaceutical products” in International Class 40; and for “research in the fields of
`
`chemicals and pharmaceuticals; scientific research services; research and testing services in the fields of
`
`chemicals and pharmaceuticals; research and development of new products for others in the fields of
`
`chemicals and pharmaceuticals; development of pharmaceutical products to specifications of others” in
`
`International Class 42. See Exhibit B (attached TARR Records).
`
`Applicant is also the owner of U.S. Reg. No. 2,858,332 for the mark IMIDS for “pharmaceutical
`
`preparations, namely, cytokine inhibitory drugs; pharmaceutical preparations that modulate the immune
`
`system.” See Exhibit C (attached TARR Records). Applicant argues in the alternative that these prior
`
`registrations evidence acknowledgement by the U.S. Patent and Trademark Office that IMID is
`
`distinctive and capable of registration.
`
`As such, Applicant respectfully requests that the Examining Attorney reconsider the refusal to
`
`register and approve the subject application for publication.
`
`2)
`
`Applicant’s Use of the IMID Mark in Commerce Further Evidences
`
`‘Acquired Distinctiveness
`
`Since at least as early as May of 2001, Applicant has used the IMID designation at scientific
`conferences and industry trade shows. See Exhibit D (demonstrating use at trade show booths).
`Applicant utilizes both trade show booths and presentations to communicate the IMID mark to the
`
`file ://\\ticrs-ais—01\ticrsexport\HtmlToTiffInput\RFR00O 1 2008_02_06_l 5_1 5_3 4_TTAB08...
`
`2/6/2008
`
`

`
`Request for Reconsideration after Final Action
`
`Page 11 of 17
`
`public, and to forge an association between the IMID mark and Applicant’s IMID drugs. See
`Exhibit D (demonstrating use at trade show booths). While booths at trade shows promote the value of
`IMID compounds, they also create commercial interest, and result in both direct as well as indirect
`business propositions from interested parties. Such booths fimction as a point of sale location for
`purposes of licensing or outright selling of Applicant proprietary IMID drugs. See Exhibit D
`(demonstrating use at trade show booths).
`
`Applicant continually provides the various slides promoting the IMID mark at its tradeshow
`booths, and
`through investor presentations, one such slide stated as follows:
`
`“IMIDTM:
`
`Novel agents that have shown anti-cancer and anti-inflammatory activities, including:
`
`o
`
`0
`
`I
`
`0
`
`0
`
`induction of an immune response
`
`alteration of cytokine levels
`
`induction of cell cycle arrest/apoptosis
`
`inhibition of angiogenesis
`
`reduction of stromal cell adhesion”
`
`See Exhibit E (trade show booth slide).
`
`Applicant also utilizes the subject mark throughout clinical trials as well. See Exhibit F
`(demonstrating use
`
`of the subject mark in investigator’s brochures). Such were used in commerce along with the IMID
`compound.
`
`See id. In accordance with the facts and submissions provided herein, Applicant respectfully requests
`that the
`
`Examining Attorney reconsider thelrefusal to register and approve the subject application for
`publication.
`
`II.
`
`The Subject Mark Does Not Merely Describe Applicant’s Goods, and is Therefore
`Not Merely Descriptive
`
`Applicant respectfiilly submits that the Examining Attorney’s conclusion is flawed with respect
`
`to its finding that the IMID mark is merely descriptive for Applicant’s goods. As stated in the Final
`
`Ofiice Action dated August 3, 2007, the Examining Attorney writes:
`
`“The examining attomey’s position is that IMID is an acronym accepted
`throughout the medical profession for “immune mediated inflammatory
`diseases” and therefore, as applied to app1icant’s pharmaceuticals for
`
`file://\\ticrs-ais—O1\ticrsexport\HtmlTOTifflnput\RFR00O12008_O2_06_15_15_34_TTAB08...
`
`2/6/2008
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 12 of 17
`
`modulating the immune system and cytokine inhibitory drugs describe the
`class of the goods. Evidence was submitted that cytokines are
`biophysioloigcal activators of immune mediated diseases and that IMID is
`recognized as a subspecialty of medicine.”
`
`As a preliminary matter, IMID is not a term recognized by any academic or scientific group to
`
`signify a disease group. A search of online medical dictionaries fails to uncover even a single definition
`
`for IMID, let alone a definition for IMID as a term used to signify a disease group for autoimmune
`
`diseases. See eg. Exhibit G (No results found from search of MedLine Plus Online Medical Dictionary
`
`database).
`
`N0 acceptable definition for an IMID disease group exists, even in those cited references
`
`alleging that IMID signifies an understood disease group. According to the cited evidence from the
`
`website of the Magee-Womens Hospital of UPMC includes “more than 80 chronic autoimmune diseases
`
`targeting virtually any part of the body.” Applicant is not aware of any public reference to a
`
`comprehensive list of all eighty (80) diseases that belong to such an alleged disease group. Further,
`
`Applicant notes that this definition, as appears in the cited evidence, is no longer available on the
`
`website for the Magee-Womens Hospital of UPMC. See Exhibit I (Google Search Results).
`
`App1icant’s IMID drugs are easily distinguishable because they are known by consumers as anti-
`
`cancer drugs. See cited evidenced from a October 2006 article by the Department of Interdisciplinary
`
`Oncology at the University of South Florida College of Medicine Cancer (concluding the efficacy of
`
`IMID drugs, as powerful anti-cancer drugs with impressive results in treating myelodysplastic
`
`syndromes (“MDS”)). MDS is a form of cancer. See Exhibit H, Printout from American Cancer
`
`Society Website citing that MDS is presently categorized as a type of cancer]. Cancer simply is not an
`
`autoimmune disease. Thus, it would be incorrect to conclude, as the Examining Attorney has stated,
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`that the “present perception of the relevant consumers (i.e. research scientists and doctors) is that IMID
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`describes a class of diseases that IMID pharmaceuticals treat.” Even the cited evidence suggests
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`otherwise. See cited evidence from December 2006 article written by researchers from the H Lee
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`Moffitt Cancer Center & Research institute (regarding efficacy of IMID drugs in the treatment of MDS);
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`see also cited evidence from September 2005 press release by Celgene Corporation (indicating that
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`IMID lenalidomide “is currently in late state clinical development for MDS and multiple myeloma
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`[another type of cancer]”).
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`Even if IMID is a generic term for a disease group, which it is not, such a conclusion is irrelevant
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`to the analysis of the registrability of the subject mark for Applicant’s drugs. The analysis here should
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`solely focus on whether IMID is merely descriptive for Applicant’s drugs. Even a mark deemed generic
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`for one class of goods fails to preclude others from using that mark for every other good or service. For
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`that reason, APPLE is generic when used in connection with the fruit, but inherently distinctive when
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`used in connection with computers. In the present case, IMID is inherently distinctive for drugs whether
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`or not it is deemed generic for a disease group.
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`As such, Applicant respectfully requests that the Examining Attorney reconsider the refusal to register
`and
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`approve the subject application for publication.
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`The Cited Evidence Reflects Misuse of the IMID Mark That Either A) Does Not Reflect
`III.
`the Present Perception of Relevant Consumers or B) Represents Academic References and Not
`Use in Commerce
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`The Examining Attorney erroneously concludes that the cited evidence shows that the present
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`perception of the relevant consumers is that IMID describes a class of diseases that IMID
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`pharmaceuticals treat. The cited evidence reflects (1) historic references, some of which are either no
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`longer publicly available because they have been altogether removed from the cited webpages due
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`primarily to the phase out required as a result of Applicant’s enforcement efforts with Centocor, which
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`resulted in Centocor agreeing to a settlement to phase-out all use of the IMID designation and cease
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`promotion of the IMID designation through third parties; and/or (2) references cited by the Examining
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`Attorney that merely consist of academic articles, which never were used in connection with the sale of
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`any goods and services, and solely represent use in connection with academic research and not
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`commercial use.
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`1)
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`Websites for “Magee—Womcns Hospital of UPMC” and “IMID.US” No Longer
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`Reference the Subject Mark
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`The Examining Attorney explicitly references cited evidence for “the websites for “Magee” and
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`“IMID.US” as “contributing to the overall public perception. . .that IMID refers, at least, to the disease,
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`and in medical practice to the drugs as well.” Applicant notes that the cited evidence of the webpage for
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`the Magee-Womens Hospital of UPMC is provided as a printout from Google’s “cache” and not a
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`printout of the website available as of the date of the search. As stated on the cited evidence itself,
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`“G0og1e’s cache is the snapshot that we took of the page as we crawled the web. This cached page may
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`reference images which are no longer available.” Clearly this evidence is a historical artifact, which is
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`not present on the Internet today, and likely was not present on the Internet as of the date of the search.
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`In fact, a present-day search of the website for the Magee-Womens Hospital of UPMC website, located
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`at http://magee.upmc.com, reveals zero (0) references to the IMID term. See Exhibit I (Google Search
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`Results).
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`Nonetheless, this misuse of the IMID designation initially resulted from support provided by
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`Centocor through fiinding provided to the Federation of Clinical Immunology Socieities (FOCIS). As
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`stated in the cited reference for the Magee-Womens Hosptial, “Magee offers one of the only dedicated
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`IMID treatment centers in the region. The center is supported by. .
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`. .FOCIS.” In connection with the
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`settlement between Applicant and Centocor, FOCIS has ceased using and promoting the IMID
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`designation as well.
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`With regard to the IMID.US website, Celgene is now the owner of the website. See Exhibit
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`(WHOIS record for the IMID.US domain name). The'IMID.US website previously was owned and
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`operated by a Centocor employee, who in connection with the settlement agreement for the lawsuit
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`involving Applicant, transferred ownership to Applicant. Again, this previously cited evidence solely
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`represents an historical reference, which as a direct result of Applicant policing its mark, resulted in the
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`removal of this misuse of the IMID mark.
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`Applicant notes that with the exception of the cited evidence for the (1) Magee-Womens
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`Hospital website; and the (2) Wikipedia article for “IMID,” which contains zero (0) references (other
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`than the reference to the IMID.US domain name), all other cited evidence are to academic articles not
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`used in commerce in connection with a good or service. Such references solely illuminate use in
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`connection with academic research and thus are of limited value in this case. As such, Applicant
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`respectfully requests that the Examining Attorney reconsider the refusal to register and approve the
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`subject application for publication.
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`IV.
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`Misuse of the IMID Trademark by Third Party Academicians Does Not Extinguish
`
`Applicant’s Rights in the Subject Mark
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`Trademark law does not mandate that Applicant seek out each and every misuse of its mark.
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`Likewise, trademark law does not extinguish Applicant’s rights solely upon misuse by third—parties.
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`Applicant has engaged in years of litigation over use of the IMID mark, which resulted in successful
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`settlement agreements with various third-parties agreeing to discontinue all use of the IMID mark.
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`However, the Examining Attorney