IN THE UNITED STATES PATENT AND TRADEMAlH( OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`.r..-5.
`
`C;
`J?”
`
`In the Matter of Application Serial No. 78/ 108,4 10
`Published in the Official Gazette of October 29, 2,002
`
`Atty. Ref: 1100960
`_ . . . _ _ _ _ _ _ _ . — _ _ _ _ — _ _ _ _ . . _ . .. _ —._X
`
`SANOFI—SYNTHELABO,
`
`Opposer,
`
`Opposition No.
`
`01 -28-2003
`
`us. Patent & TMOTCITM Mail Rcpt Dt. #70
`
`: “EXPRESS MAIL” Label Nu.:EV118962024US
`l nereby certify that this paper or fee is being deposited with the United States
`'1 Postal Service “Express Mail Post Office to Addressee" service under 37 C. FR. §
`1.10 on the date indicated below nd vs addr ssed to the Commissioner for
`.
`
`
`
`—again.st—
`
`PHARMACIA & UPJOHN COMPANY,
`
`.
`
`— — — — — — — — — — — — — — — — ~ — - - — — — — — — — . — — x
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`Attn: BOX TTAB FEE
`
`'
`
`'Frademar CP/7alDr’ e,
`
`i Signature
`.
`______,
`Primed Name
`
`riingtori. A22202-3513.
`
`TED MURPHY
`
`NOTIQEQF PPOSITION.
`
`Sanofi-Synthelabo, a French corporation, with a place of business located at 174 Avenue
`
`de France, Paris, France 75013 [”Opposer”], believes that it will be damaged by registration of
`
`the trademark “AVALTO”, as shown in Application Serial No. 78/ 108,410, filed February 13,
`
`2002, and hereby opposes same. As grounds for opposition, it is alleged that:
`
`1. Pharmacia & Upjohn Company [”Applicant”] has filed an application in the United
`
`States Patent and Trademark Office, Serial No. 78/ 108,410, filed February 13, 2002, for
`
`registration of the trademark “AVALTO” on the Principal Register in respect of "[O]ver-the-
`OB/05/2003 TSHITH
`00000104 78108410
`978l6Vl
`
`01 FC:6402
`
`300. 00 UP
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`.r..-5.
`
`C;
`J?”
`
`In the Matter of Application Serial No. 78/ 108,4 10
`Published in the Official Gazette of October 29, 2,002
`
`Atty. Ref: 1100960
`_ . . . _ _ _ _ _ _ _ . — _ _ _ _ — _ _ _ _ . . _ . .. _ —._X
`
`SANOFI—SYNTHELABO,
`
`Opposer,
`
`Opposition No.
`
`01 -28-2003
`
`us. Patent & TMOTCITM Mail Rcpt Dt. #70
`
`: “EXPRESS MAIL” Label Nu.:EV118962024US
`l nereby certify that this paper or fee is being deposited with the United States
`'1 Postal Service “Express Mail Post Office to Addressee" service under 37 C. FR. §
`1.10 on the date indicated below nd vs addr ssed to the Commissioner for
`.
`
`
`
`—again.st—
`
`PHARMACIA & UPJOHN COMPANY,
`
`.
`
`— — — — — — — — — — — — — — — — ~ — - - — — — — — — — . — — x
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`Attn: BOX TTAB FEE
`
`'
`
`'Frademar CP/7alDr’ e,
`
`i Signature
`.
`______,
`Primed Name
`
`riingtori. A22202-3513.
`
`TED MURPHY
`
`NOTIQEQF PPOSITION.
`
`Sanofi-Synthelabo, a French corporation, with a place of business located at 174 Avenue
`
`de France, Paris, France 75013 [”Opposer”], believes that it will be damaged by registration of
`
`the trademark “AVALTO”, as shown in Application Serial No. 78/ 108,410, filed February 13,
`
`2002, and hereby opposes same. As grounds for opposition, it is alleged that:
`
`1. Pharmacia & Upjohn Company [”Applicant”] has filed an application in the United
`
`States Patent and Trademark Office, Serial No. 78/ 108,410, filed February 13, 2002, for
`
`registration of the trademark “AVALTO” on the Principal Register in respect of "[O]ver-the-
`OB/05/2003 TSHITH
`00000104 78108410
`978l6Vl
`
`01 FC:6402
`
`300. 00 UP
`
`
`
`
`
`counter (OTC) pharmaceutical preparations, namely preparations for the treatment of infectious
`
`diseases, cancer, ophthalmolic conditions and diseases, central nervous systems diseases and
`
`disorders, Parkinson's disease, and migraines; preparations for the treatment and symptoms of
`
`diabetes; pharmaceutical preparations for urological use, analgesics; anti-inflammatory
`
`pharmaceutical preparations" (Int'l. Class 5), on the basis of an alleged bona fide intention to use
`
`said mark in commerce.
`
`2. Upon information and belief Applicant did not use its alleged trademark “AVALTO”
`
`anywhere in the United States of America, or in commerce, prior to the aforementioned
`
`application filing date.
`
`3. Opposer is a leading producer and distributor of high-quality pharmaceutical products
`
`which are sold in commerce and around the world.
`
`4. Opposer is the owner of the trademark “AVA PRO” which is incontestably registered
`
`under U.S. trademark Registration No. 2,005,791, dated October 8, 1.996, in respect of
`
`“pharmaceutical preparations for the prevention and treatment of cardiovascular disorders”
`
`(Int’l. Class 5). Said registration is valid and subsisting, and Opposer hereby gives notice, in
`
`accordance with Trademark Rule 2. l22(d)(2), that it will rely thereon as evidence on its behalf in
`
`this proceeding, and status copies thereof showing present title will be introduced into evidence
`
`during Opposer's testimony period.
`
`5. There is no issue of priority since the filing date of Applicant's aforementioned
`
`trademark application is subsequent to the dates of filing, registration and first use of Opposer’s
`
`trademark “AVAPRO.”
`
`6. Opposer has used its trademark “AVAPRO”, in commerce for the aforementioned
`
`978l6V l
`
`
`
`
`
`goods, i.e., pharmaceutical preparations for the prevention and treatment of cardiovascular
`
`disorders, since prior to the filing date of Applicant’s application to register “AVALTO”, and
`
`such use by Opposer has been continuous and substantial, to date.
`
`7. 0pposer’s aforementioned trademark possesses a high degree of distinctiveness and
`
`represents an extremely valuable asset and symbol of the goodwill of its business by identifying
`
`goods which have their source of origin exclusively with Opposer, and by distinguishing such
`
`goods from those of others.
`
`8. Applicant's alleged trademark “AVA.LTO” is confusingly similar to Opposer’s
`
`registered trademark “AVAPRO” in sound; appearance and/or commercial impression.
`
`9. The respective goods of Op-poser and Applicant are closely related and could be sold
`
`and/or promoted through the same channels of’ trade to the same general classes of purchasers
`
`and users.
`
`10. Under the “doctrine of greater care”, Applicant has a duty to adopt a trademark for
`
`its aforementioned goods which is clearly distinguishable from Opposer’s aforementioned
`
`registered trademark for related pharmaceutical preparations.
`
`_ 11. Under the “doctrine of greater care”, Applicant’s alleged trademark “AVALTO” is
`
`likely to cause pre-purchase and/or post-purchase confusion, and/or to cause mistake, and/or to
`
`deceive with respect to Opposer’s registered trademark “AVAPRO”, with potentially harmful
`
`consequences to users of Applicant’s and/or Opposer’s products.
`
`12. Applicant's alleged trademark is calculated or likely to cause irreparable loss, injury
`
`and damage to Opposer’s businesses and to the goodwill thereto appertaining as symbolized and
`
`recognized by its aforementioned trademark.
`978l6Vl
`
`
`
`
`
`13. Applicant's alleged trademark is a colorable imitation or misappropriation of
`
`Opposer’s pleaded trademark, and will enable Applicant to reap where it has not sown by trading
`
`on the goodwill of Opposer’s businesses as symbolized and recognized by its aforementioned
`
`trademark.
`
`14. Applicant adopted and applied to register the alleged trademark “AVALTO”
`
`without the consent of Opposer.
`
`WHEREFORE, Opposer, by its undersigned attorneys, prays that its opposition to
`
`Application Serial No. 7 8/ 108,410 be sustained and that the Trademark Trial and Appeal Board
`
`grant any and all further relief to Opposer that the Board finds to be necessary and just in the
`
`circumstances‘
`
`97816Vl
`
`
`
`
`
`A duplicate copy of this Notice of ()pposm'orz and a check for the official filing fee of
`
`$300 are enclosed herewith. The Commissioner is hereby authorized to charge any additional
`
`fees which may be owed, now or in the future course ofthis proceeding, to the undersigned
`
`attorneys’ Deposit Account, No. 20-1439.
`
`Respectfiilly submitted,
`
`TRADEMARK & PATENT CO UNSELORS _
`
`OF AMERICA, P.C.
`
`Dated: January 27, 2003
`
`By
`
`Mark 1. Perofi‘
`
`915 Broadway
`19th Floor
`
`New York, NY 10010-7108
`
`Tel. No: (212) 387-0247
`
`Attorneys for Opposer
`
`Of Counsel: Keith A. Weltsch, Esq.
`
`97816v1
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