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`§
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`’/‘7744@
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`07-01-2002
`U.S.£ptOnt & TMOfc/TM,~MalI ficpt D1. #71
`--. LHE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`E;
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`
`In the matter of Application Serial No. 75/738,505
`Published in the Official Gazette on January 29, 2002
`Mark: NANOSHIELD
`
`Opposition No.
`
`) )
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`)
`)
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`) I
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`)
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`)3
`
`EIKOS, INC.,
`
`Opposer,
`
`V.
`
`NANOPHASE TECHNOLOGIES
`CORPORATION,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Eikos, Inc. (“Eikos”), a corporation organized and existing under the laws of the
`
`State of Delaware, believes that it will be damaged by registration of the mark shown in
`
`Application Serial No. 75/738,505 and opposes the same. A description of the
`
`applicant’s mark is as follows:
`
`Mark:
`
`NANOSHIELD
`
`Serial No.:
`
`75/738,505
`
`Filed:
`
`June 28, 1999
`
`Published:
`
`January 29, 2002
`
`Alleged Use:
`
`Intent to Use
`
`Class:
`
`2
`
`Goods:
`07/11/3003 KQIBBDNQ 00000190 75733505
`01 Fem?
`300. 00 up
`
`Nanocrystalline material in the nature of a coating to
`providing electrical conductivity, abrasion resistance,
`ultraviolet protection and corrosion resistance.
`
`1
`
`NOTICE or OPPOSITION
`
`
`
`§
`
`’/‘7744@
`
`07-01-2002
`U.S.£ptOnt & TMOfc/TM,~MalI ficpt D1. #71
`--. LHE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`E;
`¢_
`.53
`23
`
`F
`
`"*3
`N
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`—:
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`
`In the matter of Application Serial No. 75/738,505
`Published in the Official Gazette on January 29, 2002
`Mark: NANOSHIELD
`
`Opposition No.
`
`) )
`
`)
`)
`
`) I
`
`)
`)
`)
`
`)3
`
`EIKOS, INC.,
`
`Opposer,
`
`V.
`
`NANOPHASE TECHNOLOGIES
`CORPORATION,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Eikos, Inc. (“Eikos”), a corporation organized and existing under the laws of the
`
`State of Delaware, believes that it will be damaged by registration of the mark shown in
`
`Application Serial No. 75/738,505 and opposes the same. A description of the
`
`applicant’s mark is as follows:
`
`Mark:
`
`NANOSHIELD
`
`Serial No.:
`
`75/738,505
`
`Filed:
`
`June 28, 1999
`
`Published:
`
`January 29, 2002
`
`Alleged Use:
`
`Intent to Use
`
`Class:
`
`2
`
`Goods:
`07/11/3003 KQIBBDNQ 00000190 75733505
`01 Fem?
`300. 00 up
`
`Nanocrystalline material in the nature of a coating to
`providing electrical conductivity, abrasion resistance,
`ultraviolet protection and corrosion resistance.
`
`1
`
`NOTICE or OPPOSITION
`
`
`
`
`
`As grounds for its opposition, Eikos alleges as follows:
`
`1. Applicant Nanophase Technologies Corporation (“NTC”) seeks to register the
`
`mark NANOSHIELD for "nanocrystalline material in the nature of a coating to providing
`
`electrical conductivity, abrasion resistance, ultraviolet protection and corrosion
`
`resistance" in International Class 2, claiming an intent to use the mark, as evidenced by
`
`the publication of NTC’s proposed NANOSHIELD mark in the Oflicial Gazette dated
`
`January 29, 2002.
`
`2.
`
`Eikos owns U.S. Trademark Application Serial No. 75/831,352 for the
`
`mark NANOSHIELD filed on October 25, 1999, for "chemical compositions containing
`
`carbon nanotubes for use in manufacturing." A true and correct copy of a printout from
`
`the records of the Patent and Trademark Office ("PTO") for Application Serial No.
`
`75/831,352 is attached hereto as Exhibit A. Eikos has been using the trademark
`
`NANOSHIELD for chemical compositions containing carbon nanotubes for use in
`
`manufacturing since before the June 28, 1999 filing date of NTC's application for the
`
`mark NANOSHIELD.
`
`3.
`
`There is no issue as to priority. NTC’s Application, which was filed on
`
`June 28, 1999, is based on its intent to use the NANOSHIELD mark. Therefore, on
`
`information and belief, NTC has not yet begun using the mark; or, at a minimum, did not
`
`begin using the mark until after June 28, 1999. Accordingly, NTC’s date of first use is
`
`subsequent to Eikos’s date of first use of the NANOSHIELD mark.
`
`4.
`
`By virtue of Eikos’s use of its NANOSHIELD mark, its efforts and
`
`expenditures of considerable sums for advertising and promotional activities, and the
`
`2
`
`NOTICE OF OPPOSITION
`
`
`
`
`
`excellence of its products, Eikos has developed valuable goodwill in its NANOSHIELD
`
`mark as described above.
`
`5.
`
`NTC’s proposed NANOSHIELD mark appears confusingly similar to
`
`Eikos’s NANOSHIELD mark in that the marks are identical, and both marks are for use
`
`in connection with similar goods, in particular, composite materials.
`
`6.
`
`In fact, the PTO has made an initial determination that the respective
`
`marks are confusingly similar. In an Office Action mailed March 13, 2000, the
`
`Examining Attorney assigned to Eikos's Application Serial No. 75/831,352 for the mark
`
`NANOSHIELD indicated that the mark was confusingly similar to the mark
`
`NANOSHIELD shown in NTC's application. The Examining Attorney further indicated
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`that should NTC's NANOSHIELD application mature to registration, it may bar
`
`registration of Eikos's NANOSHIELD mark. Accordingly, on January 22, 2001, the
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`Examining Attorney mailed a Letter of Suspension to Eikos suspending all action on its
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`NANOSHIELD application pending the resolution of NTC's NANOSHIELD application.
`
`7.
`
`Based on the above, registration and use of NTC’s proposed
`
`NANOSHIELD mark is likely to cause confusion, mistake or deception as to the source
`
`of NTC’s goods offered under its confusingly similar NANOSHIELD mark, especially in
`
`light of NTC’s plans to use the mark for "nanocrystalline material in the nature of a
`
`coating to providing electrical conductivity, abrasion resistance, ultraviolet protection and
`
`corrosion resistance,“ in direct competition with Eikos’s goods. Moreover, any such
`
`confusion will damage and injure Eikos in that persons familiar with Eikos’s
`
`NANOSHIELD mark would be likely to buy NTC’s goods as and for a product made and
`
`sold by Eikos resulting in loss of sales to Eikos. Furthermore, any defect, objection or
`
`3
`
`NOTICE or OPPOSITION
`
`
`
`
`
`fault found with NTC’s goods sold under its NANOSHIELD mark would necessarily
`
`reflect upon and seriously injure the reputation which Eikos has established for its
`
`products sold under its NANOSHIELD mark.
`
`8.
`
`Moreover, registration and use by NTC of the mark NANOSHIELD will
`
`reduce the goodwill associated with Eikos’s NANOSHIELD mark and dilute the value of
`
`this mark.
`
`9.
`
`If NTC is granted the registration sought in Application Serial
`
`No. 75/73 8,505, it would thereby obtain at least a primafacie exclusive right to use of its
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`NANOSHIELD mark. Such a registration would be a further source of damage and
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`injury to Eikos.
`
`10.
`
`On information and belief, NTC has made false and/or misleading
`
`statements and has engaged in fraud in the prosecution of Application Serial
`
`No. 75/738,505 for the mark NANOSHIELD. On April 12, 1999, before NTC filed its
`
`application for the mark NANOSHIELD, a Director and co—founder, and indeed a
`
`representative, of NTC attended a conference during which Eikos gave a presentation on
`
`its NANOSHIELD technology and product. Eikos used the NANOSHIELD mark during
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`the presentation. Shortly thereafter, on June 28, 1999, NTC filed its trademark
`
`application for NANOSHIELD.
`
`l 1.
`
`NTC‘s application contained a sworn Declaration, signed under penalty of
`
`perjury, stating that no other company has rights to the NANOSHIELD mark. On
`
`information and belief, NTC made these statements and signed the Declaration in its
`
`application with full knowledge that Eikos was making use, and had made prior use, of
`
`the identical NANOSHIELD mark on goods similar to those set forth in NTC's
`
`4
`
`NOTICE or OPPOSITION
`
`
`
`
`
`application. On information and belief, NTC had full knowledge at the time it signed the
`
`Declaration and filed its application that Eikos had prior rights to the NANOSHIELD
`
`mark for use in connection with goods similar to those of NTC. On information and
`
`belief, NTC made the false and/or misleading statements with full knowledge that the
`
`statements were false and/or misleading.
`
`WHEREFORE, Eikos prays for the following:
`
`a.
`
`a finding that Eikos has priority as to NTC to the NANOSHIELD
`
`mark in connection with composite materials;
`
`b.
`
`a finding that NTC‘s proposed NANOSHIELD mark is likely to
`
`cause confusion with Eikos‘s NANOSHIELD mark;
`
`c.
`
`a finding that NTC has committed fraud on the PTO in connection
`
`with its filing and prosecution of Application Serial No. 75/738,505; and
`
`d.
`
`a final rejection of Application Serial No. 75/738,505 and that the
`
`mark therein sought for the goods identified therein be denied and refused.
`
`Eikos hereby gives notice under Rule 2. l22(d) of the U.S. Trademark Law Rules
`
`of Practice that after hearing and in any appeal on this Opposition proceeding, it will rely
`
`on its application, a PTO printout of which is attached to this Notice of Opposition as
`
`Exhibit A, as evidence in support of this Notice of Opposition.
`
`A duplicate copy of this Notice of Opposition and a check in the amount of $300
`
`covering the fee required under §2.6(l) are enclosed herewith. Any additional fees
`
`5
`
`NOTICE or OPPOSITION
`
`
`
`
`
`required in connection with this Notice of Opposition should be debited to Deposit
`
`Account No. 501952.
`
`Dated:
`
`June 28, 2002
`
`Respectfully submitted,
`
`HELLER EHRMAN WHITE & MCAULIFFE LLP
`
`
`
`435 La Jolla Village Drive, 7th Floor
`San Diego, California 92122
`(619) 450-8462
`(619) 450-8499 (fax)
`
`Attorneys for Opposer
`EIKOS, INC.
`
`In the matter of Application Serial No. 75/738,505
`Published in the Official Gazette on January 29, 2002
`
`CERTIFICATE OF MAILING
`
`I hereby certify that the Notice of Opposition of Eikos, Inc. is being deposited
`with the United States Postal Service with sufficient postage as First Class Mail service in
`an envelope addressed to: Assistant Commissioner for Trademarks, BOX TTAB FEE,
`2900 Crystal Drive, Arlington, Virginia 22202-3513 on June 28, 2002.
`
`DATED: June 28, 2002.
`
`ohn C. Wilson
`
`6
`
`NOTICE or OPPOSITION
`
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`TESS - Document Display
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`Page 1 of 1
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`STRLICWURED
`NEVHISER
`TESS Home
`FIRST D01: Pnevfifioc Elm:
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`l':"1fiir:~’W.~‘;:I'ifiJ:ItI:‘$'
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`PTO Home
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`
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`{WW......
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`—‘ chm‘ smug (TARR contains current status, correspondence address and attorney of recordfor this
`mark. Use the "Back" button of the Internet Browser to return to TESS)
`
`Typed Drawing
`
`Word Mark
`
`NANOSHIELD
`
`IC 001. US 001 005 006 010 026 046. G & s; CHEMICAL COMPOSITIONS
`Goods and
`CONTAINING CARBON NANOTUBES FOR USE IN MANUFACTURING
`. Services
`Mark Drawing (1) TYPED DRAWING
`Code
`
`Serial Number 75831352
`
`Filing Date
`Filed ITU
`
`October 25, 1999
`FILED AS ITU
`
`Owner‘
`
`(APPLICANT) EikOs, Inc. CORPORATION DELAWARE 2 Master Drive; Suite 2
`Franklin MASSACHUSETTS 02038
`
`Attorney of
`Record
`
`James Remenick
`
`Type of Mark TRADEMARK
`
`Register
`Live/Dead
`Indicator
`
`PRINCIPAL
`
`LIVE
`
`
`{tuna LIST ¥‘%I:n’I*Le5‘I‘
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`I?-’I.R3T Dcac:
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`
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`
`.l'v*s’a:i*.'
`
`
`http://tess.usptO.goV/bin/shOwfield?f=doc&state=e6836b.2.2
`
`6/28/2002
`
`
`
`
`
`‘. Latest Status Info
`
`Page 1 of 2
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 06/28/2002 13:29:17 ET
`
`Serial Number: 75831352
`
`Registration Number: (NOT AVAILABLE)
`
`Mark (words only): NANOSHIELD
`Current Status: An office action suspending further action on the application has been mailed.
`
`Date of Status: 2001-01-22
`
`Filing Date: 1999- 1 025
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Law Office Assigned: TMEG Law Office 105
`
`
`CURRENT APPLICANT(S)/OWNER(S)
`
`1 . .Eik0s, Inc.
`
`Address:
`
`Eikos, Inc.
`2 Master Drive; Suite 2
`Franklin, MA 02038
`United States
`
`State or Country of Incorporation: Delaware
`Legal Entity Type: Corporation
`
`GOODS AND/OR SERVICES
`
`CHEMICAL COMPOSITIONS CONTAINING CARBON NANOTUBES FOR USE IN
`MANUFACTURING
`
`International Class: 001
`First Use Date:
`First Use in Commerce Date:
`
`Basis: 1(b)
`
`ADDITIONAL INFORMATION
`
`(NOT AVAILABLE)
`
`
`PROSECUTION HISTORY
`
`http://tarr.uspto.gov/servlet/tart?regser=serial&entry=75831352&action=Request+Status
`
`6/28/2002
`
`
`
`
`
`Latest Status Info
`
`V Page 2 of2
`
`2001.-10-02 - Communication received from applicant
`
`2001-01-22 - Letter of suspension mailed
`
`2000-08-14 — Communication received from applicant
`
`2000-O3-13 - Non-final action mailed
`
`2000-02-29 - Case file assigned to examining attorney
`
`2000-02-23 - Case file assigned to examining attorney
`
`CONTACT INFORMATION
`
`Correspondent (Owner)
`James Remenick (Attorney of record)
`
`JAMES REMENICK
`HELLER EHRMAN WHITE & MCAULIFFE LLP
`101 ORCHARD RIDGE DR STE 300
`
`GAITHERSBURG MD 20878
`
`United States
`
`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75831352&action=Request+Status
`
`6/28/2002
`
`
`
`
`
`‘
`
`‘I
`
`.§ 3 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 75/738,505
`Published in the Official Gazette on January 29, 2002
`Mark: NANOSHIELD
`
`EIKOS, lNC.,
`
`Opposer,
`
`V.
`
`NANOPHASE TECHNOLOGIES
`
`CORPORATION,
`
`Applicant.
`
`Box TTAB FEE
`
`_Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3 513
`
`‘\./Q/é\./%§/Q/%\'/%€
`
`’_—'T—)\
`
`I 7|IEIIIIIIIEIIlllllllll||ll||||||||||||||
`
`07-01-2002
`U .s. Patent a. TMO\‘clTM Mall Rap! M #71
`
`NOTICE or OPPOSITION
`
`
`
`153
`
`Dear Sir or Madam:
`
`TRANSMITTAL LETTER
`
`We represent Opposer, Eikos, Inc. Enclosed is an original and one copy of a NOTICE
`_ OF OPPOSITION filed by Eikos, Inc. to the above-captioned application.
`
`Also enclosed is a check in the amount of $300 for the filing fee. In the event the
`enclosed amount is insufficient for the fee, the Commissioner is authorized to charge any
`underpayment or credit any overpayment to our deposit account No. 501952 (Reference No.
`38572-0040), as necessary. A copy of this transmittal letter is enclosed for this purpose.
`
`Please address all correspondence to me at the address below. Please stamp and return
`the enclosed postcard to evidence your receipt of this document.
`
`Respectfully submitted,
`
`HELLER, EHRM , WHITE & MCAULIFFE LLP Date:
`
`June 28, 2002
`
`By:
`
`John C. Wilson
`
`4350 La Jolla Village Drive, 7th Floor
`San Diego, California 92122
`
`(858) 450-8462
`
`Attorneys for EIKOS, INC.
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