Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1030063
`
`Filing date:
`
`01/21/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88015911
`
`HEALIOS K.K.
`
`Applied for Mark
`
`HEALIOS
`
`Correspondence
`Address
`
`M SCOTT ALPRIN
`ALPRIN LAW OFFICES PC
`5 PINEHURST CIRCLE, NW
`WASHINGTON, DC 20015
`UNITED STATES
`trademarks@alprinlaw.com
`202-659-8225
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Applicants Request for Remand and Amendment
`
`Healios - 88015911 - Motion to Remand - 1-21-20 PDF.pdf(2766913 bytes )
`
`M. Scott Alprin
`
`salprin@alprinlaw.com
`
`/M. Scott Alprin/
`
`01/21/2020
`
`

`

`IN IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Application Serial No.
`Subject of Ex Parte Appeal
`
`88015911
`
`Applicant
`
`HEALIOS K.K.
`
`
`
`
`
`MOTION TO REMAND
`
`Further to Applicant’s Motion to Suspend for 30 Days, filed on January 13, 2020,
`
`and pursuant to 37 C.F.R. § 2.142(d) and TBMP Section 1207.02, Applicant Healios K.K.
`
`(“Applicant”) respectfully requests that the subject matter be remanded to the care of the
`
`Examining Attorney of the subject application for review of the attached “Trademark
`
`Coexistence and Consent Agreement” (“the Agreement”), recently executed by Applicant
`
`and the owner of cited Registration No. 4467941, Labrada Bodybuilding Nutrition, Inc.
`
`(“Labrada”). The Agreement was signed in counterparts, and the version signed by
`
`Labrada is attached hereto as Exhibit 1A; and the version signed by Applicant is attached
`
`hereto as Exhibit 1B. The Agreement may allow the Examining Attorney to withdraw
`
`the refusal based on likelihood of confusion under Section 2(d) of the Trademark Act, as
`
`the following guidance is set forth in TMEP Section 1207.01(d)(viii):
`
`Thus, examining attorneys should give substantial weight to a proper
`consent agreement. When an applicant and registrant have entered into
`a credible consent agreement and, on balance, the other factors do not
`dictate a finding of likelihood of confusion, an examining attorney
`should not interpose his or her own judgment that confusion is likely.
`
`
`Good Cause
`
`
`
`Applicant submits that there is good cause for the Trademark Trial and Appeal
`
`Board (“the Board”) to grant the requested suspension because TBMP Section 1207.02
`
`states:
`
`
`
`In addition, because a consent agreement offered in response to a
`refusal to register under Trademark Act § 2(d), 15 U.S.C. § 1052(d), is
`inherently difficult and time-consuming to obtain, and may be highly
`persuasive of registrability [Note 6 omitted], the Board will grant a
`request to suspend and remand for consideration of a consent
`agreement if the request, accompanied by the consent agreement, is
`
`1
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`

`

`filed at any time prior to the rendering of the Board’s final decision on
`the appeal.
`
`
`
`Conclusion
`
`
`
`In light of the foregoing, Registrant respectfully contends that good cause exists
`
`for the granting of the present motion, and requests that the motion be granted, and that
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`this matter be remanded to the Examining Attorney, for the review of the attached
`
`Agreement.
`
`
`
`
`
`
`
`Date: January 21, 2020
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`Respectfully submitted,
`
`
`HEALIOS K.K.
`
`/M. Scott Alprin/
`
`M. Scott Alprin
`
`
`
`
`
`Attorney for Applicant
`ALPRIN LAW OFFICES, P.C.
`5 Pinehurst Circle, N.W.
`Washington, D.C. 20015
`202-659-8225 (phone)
`202-659-0441 (facsimile)
`trademarks@alprinlaw.com
`
`
`
`2
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`

`

`Exhibit 1A
`Exhibit 1A
`
`Trademark Coexistence and Consent A reement
`
`This Trademark Coexistence and Consent Agreement (“Agreement”) is entered into as of
`the date of the latest valid signature by either party below (“Effective Date”), by and between
`HEALIOS K.K. (“Healios Japan”) a Japan corporation having an address of 2-4-1
`Hamamatsucho Minato—ku, Tokyo Japan 105-6115, and Labrada Bodybuilding Nutrition, Inc.
`(“Labrada”), a Texas corporation having an address of 333 Northpark Central Drive Suite Z
`Houston Texas 77073.
`
`WHEREAS, Healios Japan owns United States Trademark Application Serial No.
`88615911 (“the Healios Application”), filed on June 26, 2018, for the mark “Healios” (“the
`Healios Japan Mark) for “Cellsfor medical or clinical use; cellsfor medical or clinical use for
`treatment ofdiseases; stem cellsfor medical purposes; stem cells for veterinary purposes;
`surgical implants comprising living tissue grown from stem cells; biological tissue culturesfor
`medical purposes; biological tissue culturesfor veterinary purpOSes; biologicalpreparationsfor
`the treatment ofophthalmic, central nervous, respiratory, or cardiovascular disease; biological
`preparationsfor veterinary purposesfor the treatment ofcancer, liver disease and immune
`system related disease; diagnostic preparationsfor medical and veterinary use; diagnostic
`reagentsfor medicinal use; veterinary diagnostic reagents; adjuvantsfor medical purposes;
`cytostaticsfor medicalpurposes; pharmaceutical preparations for activating cellularfitnctionfin
`the treatment ofcancer, liver disease and immune system related disease; sanitary preparations
`for medical use; ophthalmic preparations; pharmaceutical preparations for the treatment ofeye
`diseases and conditions; pharmaceutical preparationsfor ocular 0r intraocular surgery;
`collyrium; eye drops; pharmaceutical agents reflecting the central nervous system;
`pharmaceutical preparationsfor the peripheral nervous system; cardiovascular agents for
`medical purposes; cardiovascular treatment preparations; cardiovascular pharmaceuticals;
`cardiovascular pharmaceutical preparations; respiratory stimulants; pharmaceutical products
`for treating respiratory diseases; pharmaceutical preparationsfor the treatment of immune
`system related diseases and disorders; anti-inflammatories; pharmaceutical agents reflecting
`digestive organs; pharmaceutical agents for treating physically caused lesions; opotherapy
`preparations; organotherapy preparations; gene therapy products, namely, genetically
`engineered tissues for transplant purposes; surgical implants comprised ofliving tissues;
`pharmaceutical preparations and substances for the treatment ofdamaged skin and tissue;
`pharmaceuticalpreparations and substancesfor use in thefields ofanesthesia, oncology, urology
`and gynecology” in International Class 5 (“the Healios Japan Goods”).
`
`WHEREAS, Labrada owns United States Trademark Registration No. 4467941 (“the
`Lahrada Registration”), filed on September 13, 2012 and registered on January 14, 2014, for the
`mark “HEALIOS” (“the Labrada Mark”) for “Dietary and nutritional supplements; Vitamin and
`mineral supplements for use as ingredients in the food and pharmaceutical industry” in
`International Class 5 (“the Labrada Goods”).
`
`WHEREAS, the Healios Japan Mark has been refused registration by an examining
`attorney of the USPTO on the basis of likelihood of confusion with the Labrada Mark.
`
`WHEREAS, the parties are unaware of any instance of actual confusion resulting from
`their use of their respective marks in any country or territory;
`
`1
`
`

`

`WHEREAS, each party agrees to the use and registration the other party’s
`above»mentioned mark in the United States and Japan, and both parties agree that, due to
`differences between the Healios Japan Goods and the Labrada Goods, the marks may coexist in
`the United States and Japan without confusion as to source amongst respective consumers or
`potential consumers.
`
`WHEREAS, Healios Japan intends to market the Healios Japan Goods to medical
`institutions, pharmaceutical companies and academic institutions for the purpose of regenerative
`medicine, and whereas Healios Japan currently has no plans to sell any of the goods listed in the
`Labrada Registration.
`
`WHEREAS, the Labrada Goods are currently marketed to cancer patients for the
`purpose of providing pain relief, and whereas Labrada currently has no plans to sell any of the
`goods listed in the Healios Japan Application.
`
`NOW, THEREFORE, in consideration of the mutual promises and agreements
`contained in this Agreement, the parties agree to and acknowledge the following:
`
`1.
`
`2.
`
`3.
`
`To the best of the parties’ knowledge and based on their experiences in their
`respective industries and markets, no confusion is likely to arise from the parties’
`use and registration of their respective marks because the channels of trade of the
`respective parties are distinct from one another, and because the differences
`between the Healios Japan Goods and the Labrada Goods are sufficient to
`minimize the likelihood of confusion in the minds of relevant consumers.
`
`The parties shall cooperate and communicate with each other as reasonably
`appropriate to avoid a likelihood of confusion between their respective marks.
`The parties shall not intentionally attempt to associate themselves, their marks, or
`their goods with the other party’s marks and goods.
`
`To the extent that one party becomes aware of any instance of consumer
`confusion involving the parties’ marks, that party shall apprise the other party,
`and the parties shall take reasonable steps to abate such confusion.
`
`4.
`
`For the foregoing reasons,
`
`a.
`
`b.
`
`Labrada consents to the use and registration of the Healios Japan Mark by
`Healios Japan in the United States and Japan in connection with the
`Healios Japan Goods;
`
`Healios Japan consents to the use and registration of the Labrada Mark by
`Labrada in the United States and Japan in connection with the Labrada
`Goods.
`
`5.
`
`Each party represents and warrants to the other party that (i) it has the hill power
`and authority to enter into this Agreement and to perform all of its obligations
`
`

`

`under this Agreement; and (ii) its undersigned representative has full power and
`authority to enter into this Agreement on that party’s behalf.
`
`This Agreement shall be binding upon and inure to the benefit of the parties, their
`successors, assigns, licensees, parents, affiliates and subsidiaries and shall remain
`in effect for as long as the parties have not legally abandoned their rights in the
`respective marks in the United States or Japan.
`
`No modification of this Agreement shall be valid unless made in writing and
`signed by both parties.
`
`No agreement changing, amending, extending, superseding, rescinding,
`terminating or discharging this Agreement or any provisions of this Agreement
`shall be valid unless in writing and signed by both parties. If any provision of this
`Agreement is invalid or unenforceable, it shall not affect the validity or
`enforceability of the other provisions.
`
`This Agreement may be signed in Counterparts, and each copy of each
`Counterpart will be deemed to be a valid original document.
`
`10.
`
`The parties understand that this Agreement shall be made public and used by
`Healios Japan as evidence before the USPTO that confusion is not likely between
`the Healios Japan Mark and the Labrada Mark. If the examining attorney does
`not consider this Agreement sufficient to withdraw the refusal to register of the
`Healios Japan Mark, the parties agree to reasonably cooperate in an effort to
`amend the subject Agreement until it is sufficient to allow the examining attorney
`of the Heali0s Japan Application to withdraw the refusal due to likelihood of
`confusion based on the Labrada Registration.
`
`11.
`
`This Agreement shall be valid only in the United States and Japan.
`
`IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed by
`authorized representatives as of the Effective Date.
`
`

`

`HEALIOS K.K.
`
`Signature
`
`By:
`
`Name:
`
`Title:
`
`Date:
`
`LABRADA BODYBUILDING
`
`NUTRITION, INC.
`
`By:
`
`S S
`Sigma
`
`g
`6
`
`5
`
`1
`
`Name: Kil E 5 2:“ a" 55 $3
`
`Title:
`
`(m,
`
`Date:
`
`‘
`
`..;.
`
`14. a
`
`

`

`Exhibit 18
`Exhibit 1B
`
`Trademark Coexistence and Consent A reement
`
`This Trademark Coexistence and Consent Agreement (“Agreement") is entered into as of
`the date of the latest valid signature by either party below (“Effective Date”), by and between
`HEALIOS K.K. (“Healios Japan”) a Japan corporation having an address of 2-4-1
`Hamamatsucho Minato—ku, Tokyo Japan 105-61 15, and Labrada Bodybuilding Nutrition, Inc.
`(“Labrada”), a Texas corporation having an address of 333 Northpark Central Drive Suite 2
`Houston Texas 77073.
`
`WHEREAS, Healios Japan owns United States Trademark Application Serial No.
`88015911 (“the Healios Application”), filed on June 26, 2018, for the mark “Healios” (“the
`Healios Japan Mark) for “Cellsfiir medical or clinical use; cellsfor medical or clinical use for
`treatment ofdiseases; stem cells for medical purposes; stem cells for veterinary purposes;
`surgical implants comprising living tissue grown from stem cells; biological tissue culturesfor
`medical purposes; biological tissue cultures for veterinary purposes; biological preparationsfiir
`the treatment ofophthalmic, central nervous, respiratory, or cardiovascular disease; biological
`preparationsfor veterinary purposesfor the treatment ofcancer, liver disease and immune
`system related disease; diagnostic preparations for medical and veterinary use; diagnostic
`reagentsfor medicinal use; veterinary diagnostic reagents; adiuvants for medical purposes;
`cytos tatics for medical purposes phatmaceutical preparationsfor activating cellularfunction
`for the treatment ofcancer liver disease andimmune system related disease; sanitary
`preparations for medical use; ophthalmic preparations; pharmaceutical preparations fot‘ the
`treatment ofeye diseases and conditions; pharmaceuticalpreparationsfor ocular or intraocular
`surgery; collyrium; eye drops; pharmaceutical agents aflecting the central nervous system;
`pharmaceutical preparations for the peripheral nervous system; cardiovascular agents for
`medical purposes; cardiovascular treatment preparations; cardiovascular pharmaceuticals;
`cardiovascular pharmaceuticalpreparations; respiratory stimulants; pharmaceutical products
`for treating respiratory diseases; pharmaceutical preparations for the treatment of immune
`system related diseases and disorders; anti-inflammatories; pharmaceutical agents affecting
`digestive organs; pharmaceutical agentsfor treating physically caused lesions; opotherapy
`preparations; organotherapy preparations; gene therapy products, namely, genetically
`engineered tissues for transplant purposes; surgical implants comprised of living tissues;
`pharmaceuticalpreparations and substancesfor the treatment ofdamaged skin and tissue;
`pharmaceuticalpreparations and substancesfor use in the fields ofanesthesia, oncology,
`urology and gynecology” in International Class 5 (“the Healios Japan Goods”).
`
`WHEREAS, Labrada owns United States Trademark Registration No. 4467941 (“the
`Labrada Registration”), filed on September 13, 2012 and registered on January 14, 2014, for the
`mark “HEALIOS” (“the Labrada Mark”) for “Dietaly and nutritional supplements; Vitamin and
`mineral supplementsfor use as ingredients in thefood and pharmaceutical industry” in
`International Class 5 (“the Labrada Goods”).
`
`WHEREAS, the Healios Japan Mark has been refused registration by an examining
`attorney of the USPTO on the basis of likelihood of confusion with the Labrada Mark.
`
`WHEREAS, the parties are unaware of any instance of actual confusion resulting from
`their use of their respective marks in any country or territory;
`
`1
`
`

`

`WHEREAS, each party agrees to the use and registration the other party’s above—
`mentioned mark in the United States and Japan, and both parties agree that, due to differences
`between the Healios Japan Goods and the Labrada Goods, the marks may coexist in the United
`States and Japan without confusion as to source amongst respective consumers or potential
`consumers.
`
`WHEREAS, Healios Japan intends to market the Healios Japan Goods to medical
`institutions, pharmaceutical companies and academic institutions for the purpose of regenerative
`medicine, and whereas Healios Japan currently has no plans to sell any of the goods listed in the
`Labrada Registration.
`
`WHEREAS, the Labrada Goods are currently marketed to cancer patients for the
`purpose of providing pain relief, and whereas Labrada currently has no plans to sell any of the
`goods listed in the Healios Japan Application.
`
`NOW, THEREFORE, in consideration of the mutual promises and agreements
`contained in this Agreement, the parties agree to and acknowledge the following:
`
`1.
`
`2.
`
`3.
`
`To the best of the parties’ knowledge and based on their experiences in their
`respective industries and markets, no confusion is likely to arise from the parties’
`use and registration of their respective marks because the channels of trade of the
`respective parties are distinct from one another, and because the differences
`between the Healios Japan Goods and the Labrada Goods are sufficient to
`minimize the likelihood of confusion in the minds of relevant consumers.
`
`The parties shall cooperate and communicate with each other as reasonably
`appropriate to avoid a likelihood of confusion between their respective marks.
`The parties shall not intentionally attempt to associate themselves, their marks, or
`their goods with the other party’s marks and goods.
`
`To the extent that one party becomes aware of any instance of consumer
`confusion involving the parties’ marks, that party shall apprise the other party,
`and the parties shall take reasonable steps to abate such confusion.
`
`4.
`
`For the foregoing reasons,
`
`a.
`
`b.
`
`Labrada consents to the use and registration of the Healios Japan Mark by
`Healios Japan in the United States and Japan in connection with the
`Healios Japan Goods;
`
`Healios Japan consents to the use and registration of the Labrada Mark by
`Labrada in the United States and Japan in connection with the Labrada
`Goods.
`
`5.
`
`Each party represents and warrants to the other party that (i) it has the full power
`and authority to enter into this Agreement and to perform all of its obligations
`
`

`

`under this Agreement; and (ii) its undersigned representative has full power and
`authority to enter into this Agreement on that party’s behalf.
`
`This Agreement shall be binding upon and inure to the benefit of the parties, their
`successors, assigns, licensees, parents, affiliates and subsidiaries and shall remain
`in effect for as long as the parties have not legally abandoned their rights in the
`respective marks in the United States or Japan.
`
`No modification of this Agreement shall be valid unless made in writing and
`signed by both parties.
`
`No agreement changing, amending, extending, superseding, rescinding,
`terminating or discharging this Agreement or any provisions of this Agreement
`shall be valid unless in writing and signed by both parties. If any provision of this
`Agreement is invalid or unenforceable, it shall not affect the validity or
`enforceability of the other provisions.
`
`This Agreement may be signed in Counterparts, and each copy of each
`Counterpart will be deemed to be a valid original document.
`
`10.
`
`The parties understand that this Agreement shall be made public and used by
`Healios Japan as evidence before the USPTO that confusion is not likely between
`the Healios Japan Mark and the Labrada Mark. If the examining attorney does
`not consider this Agreement sufficient to withdraw the refusal to register of the
`Healios Japan Mark, the parties agree to reasonably cooperate in an effort to
`amend the subject Agreement until it is sufficient to allow the examining attorney
`of the Healios Japan Application to withdraw the refusal due to likelihood of
`confusion based on the Labrada Registration.
`
`11.
`
`This Agreement shall be valid only in the United States and Japan.
`
`IN WITNESS WHEREOF, the parties have caused this Agreement to be duly executed by
`authorized representatives as of the Effective Date.
`
`

`

`HEALIOS K.K.
`
`LABRADA BODYBUILDING
`
`NUTRITION, INC.
`
`By:
`
`Name:
`
`
`
`\
`
`/—/3H_?:)/ 75 Kay; inf—E
`
`J
`
`Title:
`
`Chair man J: (350
`
`Date:
`
`Zm -. 10/ 3’03'0
`
`Signature
`
`
`
`By:
`
`Name:
`
`Title:
`
`Date:
`
`