`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Atty. Ref.: 948.0904
`
`______________________________________________________x
`
`BIOGEN, INC.
`
`lllllllllllllllllllllllllllllllllllhllllllllllll
`
`10-07-2003
`
`U.S. Patent 5 TMo1c/TM Mall Rcpt Dr. #39
`
`v.
`
`Opposer,
`
`Opposition No. 125,855
`
`“EXPRESS MAIL” Mail Label No.2 EV 118 885 472 US
`I hereby certify that this paper or fee is being deposited with
`the United States Postal Service “Express Mail Post Office to
`Addressee” service under 37 C.F.R. § 1.10 on the date indicated
`below and is addressed to the Commissioner for Trademarks, 2900
`Crystal Drive, Arlington, VA 22202-3513.
`
`gnature
`
`Julio Simmons
`Printed Name
`
`Date
`
`ALTANA PHARMA AG (f/k/a
`BYK GULDEN LOMBERG CHEMISCHE
`FABRIK GmbH
`
`Applicant.
`____________________________________________________--x
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington VA 22202-3513
`
`Attn.: BOX TTAB
`
`NO FEE
`
`October 2, 2003
`
`APPLICANT'S MOTION TO AMEND APPLICATION
`
`Applicant hereby moves the Board for an order permitting applicant to amend the
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`identification of goods in the subject application to delete gastrointestinal medical applications.
`
`{00001490;vl}
`
`
`
`
`
`The amendment would limit the identification of goods by deleting one of the two listed
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`diseases, such that the identification would read “Pharmaceutical preparations for the treatment
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`of respiratory diseases.” The basis of the motion is :
`
`(1) On August 7, 2000, Applicant filed the subject application (Serial No. 76/105,433) to
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`register the trademark AMAVIO for pharmaceutical preparations for the treatment of
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`gastrointestinal, respiratory and anti-inflammatory diseases in International Class 5 on the
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`Principal Register under Section l(b) of the U.S. Trademark Act;
`
`(2) On July 3, 2001, the application was amended by replacing the identification of
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`goods with the following: pharmaceutical preparations for the treatment of gastrointestinal and
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`respiratory diseases in International Class 5;
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`(3) Applicant has now determined that the phannaceutical preparation intended to be
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`sold under the AMAVIO trademark will be for the treatment of respiratory diseases, but not
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`gastrointestinal diseases; and
`
`(4) Applicant sought the consent of Opposer to amend the application, but Opposer
`
`refused to consent.
`
`The motion should be granted for the following reasons:
`
`(1) The amended description of goods accurately reflects the intended use of the
`
`trademark by Applicant in conformity with Section l(b) of the U.S. Trademark Act, 15 U.S.C.
`
`§ l05l(b);
`
`(2) The amendment complies with the requirements of Trademark Rule 2.71(a), 37
`
`C.F.R. 2.71(a), since the amendment limits the identification of goods;
`
`{0000l490;v1}
`
`
`
`
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`(3) The amendment would narrow the issues and streamline the opposition proceeding;
`
`and
`
`(4) The amendment would not cause any prejudice to Opposer since it simplifies the
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`proceeding and since this motion is made prior to the Opposer’s rebuttal testimony period and
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`prior to the time that the parties will prepare and submit their trial briefs.
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`Accordingly, Applicant respectfully requests that the Board grant this Motion to Amend
`
`Application.
`
`Respectfully submitted,
`ALTANA PHARMA AG
`
` Dated: New York, New York
`
`By:
`aunders
`Darren W.
`TRADEMARK & PATENT COUNSELORS OF
`
`October 2, 2003
`
`AMERICA, P.C.
`Attorneys for Applicant
`9 1 5 Broadway
`New York, New York 10010-7108
`(212) 387-0247
`
`{00OOI490;vl }
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing APPLICANT'S MOTION TO AMEND
`
`APPLICATION was served via first-class mail, postage prepaid, this 2nd day of October, 2003,
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`upon counsel for the Opposer:
`
`Roberta Jacobs-Meadway, Esq.
`BALLARD SPAHR ANDREWS & INGERSOLL, LLP
`1735 Market Street
`
`5 1 st Floor
`
`Philadelphia, PA 19103
`
`
`
`{O0001490;v1}
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