7'74/6
`
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING DEPOSITED WITH THE UNITED STATES POSTAL SERVICE AS
`FIRST CLASS MAIL IN AN ENVELOPE ADDRESSED TO THE COMMISSIONER FOR TRADEMARKS, 2900 CRYSTAL DRIVE,
`ARLINGTON, VA 22202-35 I4 N THE DATE INDICATED BELOW
`
`yj‘
`DATE:
`
`C//S
`
`W " M
`
`qflgl03
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IIllllllllllllllllllllllllllllllllllllllllllllllll
`
`09-22-2003
`u.s. Panama TMOfclTM Mail HcptDt. #11
`
`>
`
`3
`
`) )
`
`Opposer,
`
`BIOGEN’ INC"
`
`) Opposition No_ 125,8 55
`>
`)
`
`) > > > >
`
`v_
`
`ALTANA PHARMA AG
`(f/k/a BYK GULDEN
`LOMBERG CHEMISCHE GmbH)
`
`Applicant.
`
`NOTICE OF RELIANCE ON INTERROGATORY RESPONSES
`
`Honorable Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`Dear Commissioner:
`
`Pursuant to T.B.M.P. §§704.01 and 37 C.F.R. §2.l20(j), Opposer hereby gives
`notice that it intends to rely on the answers provided by Applicant in response to Interrogatories
`3, 4,5, 6, 10, 11, 12, 13, 15 and 16 of Opposer’s First Set Of Interrogatories. Exhibit A attached
`hereto contains the referenced interrogatories and responses.
`
`Respectfully submitted,
`
`Dated:
`
`‘M "H63
`
`BALLARD ’ ‘ HR ANDREWS & INGERSOLL, LLP
`1735 Market Street — 51“ Floor
`
`Philadelphia, PA 19103
`(215) 665-8500
`ATTORNEYS FOR OPPOSER
`
`File No. 889142
`PHL_A #1795575 v1
`
`
`
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING DEPOSITED WITH THE UNITED STATES POSTAL SERVICE AS
`FIRST CLASS MAIL IN AN ENVELOPE ADDRESSED TO THE COMMISSIONER FOR TRADEMARKS, 2900 CRYSTAL DRIVE,
`ARLINGTON, VA 22202-35 I4 N THE DATE INDICATED BELOW
`
`yj‘
`DATE:
`
`C//S
`
`W " M
`
`qflgl03
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IIllllllllllllllllllllllllllllllllllllllllllllllll
`
`09-22-2003
`u.s. Panama TMOfclTM Mail HcptDt. #11
`
`>
`
`3
`
`) )
`
`Opposer,
`
`BIOGEN’ INC"
`
`) Opposition No_ 125,8 55
`>
`)
`
`) > > > >
`
`v_
`
`ALTANA PHARMA AG
`(f/k/a BYK GULDEN
`LOMBERG CHEMISCHE GmbH)
`
`Applicant.
`
`NOTICE OF RELIANCE ON INTERROGATORY RESPONSES
`
`Honorable Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`Dear Commissioner:
`
`Pursuant to T.B.M.P. §§704.01 and 37 C.F.R. §2.l20(j), Opposer hereby gives
`notice that it intends to rely on the answers provided by Applicant in response to Interrogatories
`3, 4,5, 6, 10, 11, 12, 13, 15 and 16 of Opposer’s First Set Of Interrogatories. Exhibit A attached
`hereto contains the referenced interrogatories and responses.
`
`Respectfully submitted,
`
`Dated:
`
`‘M "H63
`
`BALLARD ’ ‘ HR ANDREWS & INGERSOLL, LLP
`1735 Market Street — 51“ Floor
`
`Philadelphia, PA 19103
`(215) 665-8500
`ATTORNEYS FOR OPPOSER
`
`File No. 889142
`PHL_A #1795575 v1
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the attached Notice of Reliance
`on Interrogatory Responses filed with U.S. Trademark Trial and Appeal Board was served on
`counsel for the Applicant on the date listed below via overnight mail delivery:
`
`Darren W. Saunders, Esquire
`TRADEMARK & PATENT COUNSELORS
`OF AMERICA, P.C.
`Attorneys for Applicant
`915 Broadway
`New York, New York 10010-7108
`Facsimile No.: (212) 387-0167
`
`
`
`179520511
`PHL_A #1795575 v1
`
`
`
`O
`
`A
`
`A
`
`O
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`'
`
`........................................... --X
`
`BIOGEN, INC.
`
`Opposer,
`v.
`
`BYK GULDEN LOMBERG
`
`CHEMISCHE FABRIK GmbH
`
`.
`:
`'
`
`Applicant.
`_____________________________________________x
`
`Opposition No. 125,855
`
`APPLICANT’S RESPONSES TO OPPOSER’S FIRST SET OF INTERROGATORIES
`
`Applicant, Byk Gulden Lomberg Chemische Fabrik GmbH (“Applicant”), hereby
`
`responds to Opposer’s First Set of Interrogatories. All responses herein are without waiver of
`
`objections made herein or of any information protected by the attomey-client privilege.
`
`1.
`
`2.
`
`Identify the person(s) most knowledgeable about the intended use of the
`Applicant’s Mark in the U.S.
`
`Response
`
`Dr. Wolfgang Feiler, Director of Trademarks
`
`Identify the person(s) most knowledgeable about products intended to be sold in
`the U.S. under the Applicant’s Mark.
`
`Response
`
`Dr. Ulrich Sorger, Director of Marketing
`
`3.
`
`Identify all steps taken by Applicant to make Applicant’s Mark known in the U.S.
`
`Response
`
`None.
`
`968l2vl
`
`
`
`
`
`4.
`
`Identify all steps taken by Applicant in anticipation of selling products under the
`Applicant’s Mark in the U.S.
`
`Response
`
`None.
`
`5.
`
`6.
`
`Identify all persons with whom Applicant has had communications concerning
`Applicant’s intended sale of products in the U.S. under Applicant’s Mark.
`
`Response
`
`None.
`
`Identify all research conducted by or on behalf of Applicant which relates in any
`way to Applicant’s intended use of Applicant’s Mark in the U.S.
`
`Objection
`
`Applicant objects to this interrogatory on the grounds that it is overbroad and unduly
`burdensome. Applicant also objects to the extent this interrogatory calls for information
`protected by the attomey-client privilege.
`
`Response
`
`Applicant will produce business records pursuant to Rule 33(d), Fed.R.Civ.P.
`
`7.
`
`Describe in detail Applicant’s current plans for use of Applicant’s Mark in the
`U.S.
`
`Objection
`
`Applicant objects to this interrogatory on the grounds that it is overbroad and unduly
`burdensome and not reasonably calculated to lead to the discovery of admissible evidence.
`
`Response
`
`Applicant currently plans to begin use of the Mark in the United States for a respiratory
`
`dmg.
`
`968l2vl
`
`
`
`
`
`0‘.
`
`o
`
`8.
`
`Identify the person(s) who created Applicant’s Mark.
`
`Objection
`
`Applicant objects to this interrogatory on the ground that it calls for confidential
`information.
`
`Response
`
`Applicant will respond to this interrogatory after entry of a suitable protective order
`regarding the disclosure of confidential information.
`
`9.
`
`Describe the circumstances in which Applicant first learned of Opposer.
`
`Response ‘
`
`Applicant has known of Opposer for many years and cannot presently state the
`circumstances in which it first learned of Opposer.
`
`10.
`
`Describe the circumstances in which Applicant first learned of Opposer’s
`AMEVIVE mark.
`
`Response
`
`Through a search of the U.S. federal trademark registry.
`
`l 1.
`
`Describe in detail the advertising media Applicant has used and intends to use in
`connection with its sale of products in the U.S. under Applicant’s Mark.
`
`Objection
`
`Applicant objects to this interrogatory on the grounds that it is overbroad and unduly
`burdensome.
`
`Response
`
`Applicant has not determined the advertising media that it intends to use in connection
`with the sale of products in the United States under its Mark.
`
`12.
`
`Describe in detail the trade channels applicant has employed and intends to
`employ in connection with its sale of products in the U.S. under Applicant’s
`Mark.
`
`968l2vl
`
`
`
` _
`
`5
`
`Objection
`
`Applicant objects to this interrogatory on the grounds that it is overbroad and unduly
`burdensome.
`
`Response
`
`Applicant intends to market its respiratory drug as a prescription medication through
`pharmacies and hospitals.
`
`13.
`
`Describe in detail the classes of purchasers to whom Applicant has sold and
`intends to sell products in the U.S. under Applicant’s Mark.
`
`Objection
`
`Applicant objects to this interrogatory on the grounds that it is overbroad and unduly
`burdensome.
`
`Response
`
`Applicant intends that its products to be sold under the Mark will be purchased by
`persons for whom a prescription has been written by a physician.
`
`14.
`
`Identify all regulatory submissions made by Applicant which are required to be
`made before product is sold in the U.S. by Applicant which product is or intended
`to be sold under Applicant’s mark
`
`Objection
`
`Applicant objects to this interrogatory on the ground that it is not reasonably calculated to
`lead to the discovery of admissible evidence.
`
`15.
`
`Describe in detail the classes of end users of Applicant’s products sold and
`intended to be sold in the U.S. under Applicant’s Mark.
`
`Response
`
`Applicant intends that the end users of its products to be sold under the Mark will be
`patients within and without hospitals.
`
`16.
`
`Identify all persons with whom applicant has entered into any agreements which
`relate to the offering for sale or sale in the U.S. of any of Applicant’s products
`under Applicant’s mark.
`
`968|2v|
`
`
`
` .
`
`v
`
`Ob j ection
`
`Applicant objects to this interrogatory on the ground that it is not reasonably calculated to
`lead to the discovery of admissible evidence.
`
`Response
`
`None.
`
`As to the objections
`
`Darren W. Saunders
`
`TRADEMARK & PATENT COUNSELORS OF
`
`AMERICA, P.C.
`
`91 5 Broadway
`19"‘ Floor
`
`New York, New York 10010
`
`(212) 387-0247
`
`Attorney for Applicant
`
`The undersigned declares that all statements made herein of his/her own
`
`knowledge are true and all statements made on information and belief are believed to be true.
`
`As to the responses
`
`Title:
`
`968l2vl
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing APPLICANT’S RESPONSES TO
`
`OPPOSER’S FIRST SET OF INTERROGATORIES was served upon counsel for opposer via
`
`first class mail, this 20"‘ day of December, 2002, upon:
`
`Roberta Jacobs-Meadway
`Jay K. Meadway
`BALLARD SPAHR ANDREWS & INGERSOLL, LLP
`
`1735 Market Street, 515‘ Floor
`
`Philadelphia, PA 19103
`
`Dated: December 20, 2002
`
`
`
`96829
`
`
`
`
`*’
`774/5
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Registration No. 2,489,970
`Registered September 18, 2001
`
`Gennaro Auricchio S.p.A.
`Petitioner
`
`— against -
`
`2
`
`Cancellation No. 92/042055
`
`Sapefa Ferdinando Auricchio S.r.1.
`Respondent
`
`Assistant Commissioner for Trademarks
`2900 Crystal D1‘iVC
`Arlington, VA 22202-3513
`
`09_22_2o03
`u.s. Parent 5. TMOfcITM Mail RcptDt. #11
`
`PETITIONER’S RESPONSE IN OPPOSITION TO
`
`.
`
`RESPONDENT’S MOTION TO STRIKE
`
`PARAGRAPHS 8, 9, 10 OF THE PETITION TO CANCEL
`
`Petitioner, Gennaro Auricchio S.p.A., hereby opposes Respondent, Sapefa
`
`Ferdinando Auricchio S.r.l.’s Motion To Strike Paragraphs 8, 9 And 10 of the Petition to
`
`Cancel. Although Respondent was not a named party in the lawsuit Gennaro Auricchio
`
`S.p.A. and Belgioioso Cheese, Inc. V. Battaglia & Co., Inc. and Robert Quattrone, filed in
`
`the United States District Court for the Southern District of New York and assigned
`
`Index No. 96 Civ. 2833 (MGC) (the “Battaglia Litigation”), upon information and belief,
`
`ew York
`Dated: New York,
`September ._5: 2003
`
`2-3513 on septembcdg’, 2003.
`
`Express Mail Label No EUO56096217US
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being
`deposited with the United States Postal Service,
`“Express Mail Post Office to Addressee” in an
`envelope addr
`sed to the Assistant Commissioner
`for Tradem r
`, 2900 Crystal Drive, Arlington,
`Virginia
`
`
`
`
`
`Respondent was the supplier of the cheese products in the Battaglia Litigation that bore
`
`the identical trademark at issue herein. Accordingly, the Final Judgment on Consent
`
`entered into in the Battaglia Litigation, and the allegations in the Petition to Cancel
`
`relating to the Battaglia Litigation, are clearly relevant herein and provide fiiller notice of
`
`the basis for Petitioner’s claims.
`
`OPPOSER’S BRIEF
`
`As alleged in Paragraph 9 of the Petition to Cancel, in the Battaglia litigation,
`
`Petitioner andiBelgioioso Cheese Inc. sued Battaglia & C0,, Inc. and Robert Quattrone
`
`for, inter alia, federal trademark infringement, unfair competition and dilution, claiming
`
`that defendants were using in interstate commerce the identical FA and Design mark for
`
`cheese that is in issue herein. Upon information and belief, Respondent was the supplier
`
`of the cheese products to defendants in the Battaglia Litigation. Thus, there is clearly
`
`contractual privity between defendants and Respondent.
`
`Motions to strike are not favored, and matters will not be stricken unless they
`
`clearly have no bearing upon the issues in the case. As set forth in the Federal Rules of
`
`Civil Procedure, the primary purpose of pleadings is to give an adversary fair notice of
`
`the claims and defenses asserted. Thus, the Trademark Trial and Appeal Board
`
`(“Board”) should not strike pleadings, even objectionable or irrelevant pleadings, where
`
`their inclusion will not prejudice an adverse party, but will instead provide fuller notice
`
`of the basis for the claim or defense asserted. See, The Ohio State University V. Ohio
`
`University, 51 USPQ2d 1289 (TTAB 1999), Harsco Corp. v. Electrical Sciences Inc., 9
`
`USPQ2d 1570, 1571 (TTAB 1988).
`
`
`
`
`
`Contrary to Respondent’s contention, although “not ipsofacto controlling, the
`
`facts and circumstances ensuing from the consent judgment do, in our opinion, have
`
`evidentiary value and are materially relevant to the determination of the issue of
`likelihood of confusion.” Swank v. Ravel Perfume Corp., 438 F.2d 622 623 (C.C.P.A.
`
`1971).‘ The Final Judgment on Consent is materially relevant to the claims herein that
`
`involve the identical mark on identical products, and trumps any claims of prejudice by
`
`Respondent. Paragraphs 8, 9 and 10 of the Petition to Cancel provide the Board with
`
`fiiller notice of the background of use of the mark at issue herein, and provide both
`
`Respondent and the Board with fuller notice of the claims that will be raised by
`
`Petitioner, including claims that Respondent had knowledge, either constructive or actual,
`
`of the Battaglia litigation and the Final Judgment on Consent prior to filing its application
`
`for registration of the mark at issue herein.
`
`Wherefore it is requested that the Motion to Strike be denied in its entirety.
`
`
`
`DEBRA I. RESNICK
`
`In federal court, consent judgments are considered to have the same force and effect as are judgments
`1
`entered after a trial on the merits. See Hallco Manufacturing Co. v. Foster, 256 F.3d 1290 (Fed. Cir.
`2001)(patent infringement action).
`
`G:\2298\626\Response to Office Action.doc
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