IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 75/602,065 for SLA and Design
`Published in the Official Gazette of November 6, 2001
`
`IMPLANT INNOVATIONS, INC.,
`
`Opposer
`
`v.
`
`INSTITUT STRAUMANN AG,
`
`Applicant
`
`\/\./%/%/%/%/%/\J%
`
`Opposition No.
`
`/—d.{_’4;—#—’jé.\
`mmmmmmmmmm
`
`06-04-2002
`
`U.S. Patent & TMO1cI‘I’M Mail Rcpt D11 #70
`
`EXPRESS MAIL MAILING LABEL
`NUMBER: EL 831839600 US
`DATE OF DEPOSIT: June 4, 2002
`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 above and is addressed to: Commissioner
`for Trademarks, BOX TTAB FEE, 2900 Crystal Drive,
`Arlington, VA. 20202-3513.
`.
`
`
`
`Signature
`
`06/10/2002 TSIIITH
`
`00000160 75602065
`
`01 FC:377
`
`600.00 OP
`
`NOTICE OF OPPOSITION
`
`Commissioner For Trademarks
`BOX TTAB FEB
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`IMPLANT INNOVATIONS, INC., a corporation of the State of Florida, located and
`
`doing business at 4555 Riverside Drive, Palm Beach Gardens, Florida 33410, believes it will be
`
`CHICAGO 226629vl 47168-00195
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 75/602,065 for SLA and Design
`Published in the Official Gazette of November 6, 2001
`
`IMPLANT INNOVATIONS, INC.,
`
`Opposer
`
`v.
`
`INSTITUT STRAUMANN AG,
`
`Applicant
`
`\/\./%/%/%/%/%/\J%
`
`Opposition No.
`
`/—d.{_’4;—#—’jé.\
`mmmmmmmmmm
`
`06-04-2002
`
`U.S. Patent & TMO1cI‘I’M Mail Rcpt D11 #70
`
`EXPRESS MAIL MAILING LABEL
`NUMBER: EL 831839600 US
`DATE OF DEPOSIT: June 4, 2002
`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 above and is addressed to: Commissioner
`for Trademarks, BOX TTAB FEE, 2900 Crystal Drive,
`Arlington, VA. 20202-3513.
`.
`
`
`
`Signature
`
`06/10/2002 TSIIITH
`
`00000160 75602065
`
`01 FC:377
`
`600.00 OP
`
`NOTICE OF OPPOSITION
`
`Commissioner For Trademarks
`BOX TTAB FEB
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`IMPLANT INNOVATIONS, INC., a corporation of the State of Florida, located and
`
`doing business at 4555 Riverside Drive, Palm Beach Gardens, Florida 33410, believes it will be
`
`CHICAGO 226629vl 47168-00195
`
`
`
`damaged by the registration of the SLA AND DESIGN mark that is the subject of application
`
`Serial No. 75/602,065 and hereby opposes same.
`
`As grounds in support of the opposition, it is alleged "that:
`
`l.
`
`Opposer is now and has been in the business of developing, manufacturing,
`
`marketing, and selling oral. reconstructive products including dental implants and dental restoration
`
`apparatus and components for dental implants and dental restoration apparatus such as abutments.
`
`2.
`
`Opposer owns U.S. Trademark Registration No. 2,341,644 for “SLA” which was
`
`filed as an “intent—to-use” application on February 28, 1997 and registered on April 11, 2000 for
`
`“abutments and components therewith for attaching dental restorations to dental
`
`implants;
`
`prosthodontic structural and dental parts and components for use with dental implants and dental
`
`restoration apparatus and parts therefor, namely, abutments” in International Class 10 and asserts
`
`a date of first use of October 10, 1998 and a date of first use in commerce of October 10, 1998.
`
`3.
`
`Opposer has so used its SLA mark in connection with its goods that its SLA mark
`
`has come to signify Opposer as the source and originator of the goods that Opposer offers under
`
`its SLA mark.
`
`4.
`
`Applicant, Institut Straumann AG, filed application Serial No. 75/602,065 on
`
`December 9, 1998 for the mark SLA AND DESIGN for “surgical implants comprising artificial
`
`materials; surgical, medical and dental instruments used in the field of oral-cranio-maxillio facial
`
`CHICAGO 226629v1 47168-00195
`
`
`
`medicine, namely, screwdrivers, screws, pins, caps, positioning cylinders, positioning screws,
`
`drills, guiding sleeves, guiding cylinders, depth gauges, adapters, tweezers, ratchets, insertion
`
`instruments, holding keys, torque control devices, cleaning instruments, scalpels, blades, sutures,
`
`and mirrors; artificial limbs and teet ” in International Class 10 and “alloys of precious metals
`
`used in oral-cranio-maxillio facial and orthopaedic medicine” in International Class 5. The
`
`application claims priority under 15 U.S.C. § ll26(d). The application was published for
`
`opposition in the Official Gazette on November 6, 2001.
`
`5.
`
`Upon information and belief, the goods of Opposer and Applicant are offered in
`
`similar channels of commerce and offered to similar customers.
`
`6.
`
`Opposer’s SLA mark and Applicant’s SLA AND DESIGN mark are similar in
`
`commercial impression. As a result of the confusing similarity between Opposer’s SLA mark and
`
`Applicant’s SLA AND DESIGN mark and because the goods of Opposer and Applicant are similar,
`
`are in similar channels of commerce, and are directed to similar customers, registration of SLA
`
`AND DESIGN in connection with Applicant’s goods is, likely to cause confusion, to cause mistake,
`
`or to deceive purchasers as to the source, sponsorship, affiliation, connection, association, origin,
`
`or approval of Applicant's goods by Opposer, all to the irreparable damage of Opposer.
`
`7.
`
`Opposer would be injured if Applicant is permitted to register and use Applicant’s
`
`SLA AND DESIGN mark for the goods specified in application Serial No. 75/602,065 because
`
`such registration and use would cause confiision in trade, resulting in damage and injury to
`
`Opposer. Persons familiar with Opposer’s SLA mark would be likely to assume that Applicant’s
`
`CHICAGO 226629vl 47168-00195
`
`
`
`goods originated from Opposer or were offered in association or affiliation with, or under
`
`authorization by, Opposer. Moreover, any defect, objection or fault found with Applicant’s
`
`goods marketed under the SLA AND DESIGN mark would necessarily reflect upon and
`
`seriously injure the reputation that Opposer has established through use of its SLA mark.
`
`8.
`
`Additionally, if Applicant is granted registration for the SLA AND DESIGN
`
`mark, Applicant would obtain thereby at least prima facie evidence of a purported exclusive
`
`right to use the mark. Such registration would be a source of damage and injury to Opposer.
`
`9.
`
`Based upon the foregoing, the registration of SLA AND DESIGN will cause
`
`injury and damage to Opposer.
`
`WHEREFORE registration by Applicant of the SLA AND DESIGN mark for the goods
`
`in International Classes 5 and 10 would be damaging to Opposer, Opposer hereby requests that
`
`registration of Serial No. 75/602,065 be denied and this opposition be sustained.
`
`Opposer notes‘ that a Petition for Cancellation of U.S. Trademark Registration No.
`
`2,341,644 for SLA was filed with the Trademark Trial and Appeal Board on May 24, 2002.
`
`Opposer hereby submits the requisite filing fee in the amount of $600.00. Please charge
`
`any additional fees to Deposit Account 10-0447 (47168-00195). A duplicate copy of this Notice
`
`of Opposition is being filed herewith for that purpose.
`
`CHICAGO 226629vl 47168-00195
`
`
`
`
`
`F’
`
`Please address all correspondence for this proceeding to
`
`Daniel Burnham
`
`Jenkens & Gilchrist
`
`225 W. Washington St., Ste. 2600
`Chicago, IL 60606-3418
`Telephone (312) 425-8514
`
`Please file-stamp and return the attached postcard in acknowledgment of receipt of this
`
`correspondence‘ and check.
`
`Respectfully submitted,
`
`
`
`
`.
`
`A
`
`‘
`M. Gartto
`
`
`
`
`
`One of the Attorneys for Opposer
`JENKENS & GILCHRIST
`
`225 W. Washington Street - Suite 2600
`Chicago, IL 60606
`(312)425-8514
`
`CHICAGO 226629v1 47168-00195
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