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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE-V‘ ~
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`1
`
`BEFORE THE TRADEMARK TRIAL AND APPEAIG§9AR?1
`UL,
`5
`
`3;: 9: 27
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`
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`Sanofi-Synthelabo
`
`Opposer,
`
`v.
`
`Pharmacia & Upjohn Company
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive — Ninth Floor
`Arlington, VA 22202.35l4
`
`RESPONSE TO NOTICE OF DEFAULT
`
`Applicant, Pharmacia & Upjohn Company, by and through undersigned counsel, hereby
`
`responds to the Notice of Default mailed June 2, 2003 as follows:
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`1.
`
`2.
`
`The above-captioned Notice of Opposition was instituted on February 11, 2003.
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`Applicant filed its Answer to the Notice of Opposition on March 21, 2003. The
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`Answer was also served on counsel for Opposer, Mark I. Peroff, by first class mail on March 21,
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`2003. A copy of the Answer as filed and postcard stamped “received” by the Patent and
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`Trademark Office are attached as Exhibit 1.
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`3.
`
`On June 2, 2003, the Trademark Trial and Appeal Board inappropriately issued a
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`Notice of Default, attached hereto as Exhibit 2.
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`4.
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`On June 10, 2003, Applicant’s attorney, Katherine M. DuBray,
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`telephoned
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`George Woods, the Legal Assistant identified in the Notice of Default and left him a message
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`concerning the Notice of Default and advising him that an Answer had been filed.
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`5.
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`On June 12, 2003, Ms. DuBray telephoned Mr. Woods concerning the Notice of
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`25321243.1
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`stamped “received” to his attention at the Trademark Trial and Appeal Board. A copy of the
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`Default. Mr. Woods instructed Ms. DuBray to fax a copy of the Answer as filed and postcard
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`facsimile sent to Mr. Woods is attached as Exhibit 3.
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`6.
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`Applicant did not file a formal response to the Notice of Default on or before July
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`2, 2003, thirty days from the date of mailing of the Notice of Default, because Applicant had
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`previously sent a copy its Answer that was originally filed on March 21, 2003 with proof of
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`filing to Mr. Woods on June 12, 2003. Based on the instructions received from Mr. Woods, and
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`because an Answer was timely filed, it was believed that Applicant’s Answer would be entered
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`into the record and the Notice of Default set aside without further action being required.
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`7.
`
`On July 18, 2003, not having received a response from the Trademark Trial and
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`Appeal Board, Ms. DuBray telephoned Mr. Woods and left him a voicemail requesting an update
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`on the status of the Notice of Default and entry of the Answer as filed.
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`8.
`
`On July 22, 2003, Ms. DuBray again telephoned Mr. Woods and left him a
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`voicemail concerning the status of the Notice of Default and entry of the Answer as filed.
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`9.
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`On July 24, 2003, Ms. DuBray telephoned the Trademark Trial and Appeal Board
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`and spoke with Clara Vela concerning the Notice of Default and the Answer that was filed
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`March 21, 2003 and faxed to Mr. Woods on June 12, 2003. Ms. Vela instructed Ms. DuBray to
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`fax an additional copy of the Answer as filed and postcard stamped “received” to her attention at
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`the Trademark Trial and Appeal Board. A copy of the facsimile sent to Ms. Vela is attached as
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`Exhibit 4.
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`10.
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`On July 28, 2003, Ms. Vela telephoned Ms. DuBray and instructed her that it
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`would be necessary to submit an Answer to the Notice of Default.
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`25321243.1
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`Discovery in this matter has been ongoing. Applicant has served its First Set of
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`11.
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`Interrogatories, First Requests for Production of Documents, and First and Second Sets of
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`Requests for Admissions. Opposer has served its First Set of Interrogatories and First Set of
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`Requests for Production of Documents. Opposer has served its responses to Applicant’s
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`discovery requests. Applicant is in the process of preparing its responses Opposer’s discovery
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`requests.
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`In light of the fact that Applicant’s Answer was timely filed with the Trademark Trial and
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`Appeal Board and served on counsel for Opposer on March 21, 2003, well before the deadline to
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`answer the Notice of Opposition, Applicant requests that the Notice of Default be set aside and
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`the Opposition be allowed to proceed.
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`Respectfully submitted,
`
`Dated: July 29, 2003
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`PHARMACIA & UPJOHN COMPANY
`
`By:
`
`__£’_f2%’: Q )5
`
`J. Paul Williamson
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`Telephone: 202-662-0200
`Facsimile: 202-662-4643
`
`Attorneys for Applicant
`
`253212434
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`-3-
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing “Answer to Notice of
`Default” is being served upon Opposer’s counsel this 29"‘ day of July, 2003, by first class mail,
`postage prepaid, as follows:
`
`Mark I. Peroff
`
`Trademark & Patent Counselors of America, P.C.
`915 Broadway
`19"‘ Floor
`
`New York, NY 10010-7108
`
`Telephone: 212-387-0247
`
`Barbara A. Baker
`
`253212411
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`-4-
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`ll
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Sanofi-Synthelabo
`
`Opposer,
`
`V.
`
`Pharmacia & Upjohn Company
`
`Applicant.
`
`‘
`
`Q/%/Q/\./Q/E/Q/\_/Q
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`
`TRANSMITTAL LETTER
`
`Box TTAB/NO FEE
`Commissioner of Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Madam:
`
`The following document is attached hereto for filing in the above-referenced Opposition:
`
`'
`
`i
`
`— Answer.
`
`This transmittal letter is submitted in duplicate for accounting purposes. We ask that the
`attached postcard be date-stamped with the date of delivery and returned to our courier as proof
`of filing. The Commissioner is authorized to charge any necessary fees associated with this
`filing to Deposit Account No. 06-2375, Order No. PHRC:539/10301198.
`
`Dated:
`
`5/, 300$
`
`Respectfully submitted,
`
`J. Paul Williamson
`
`E
`
`5
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 662-0200
`
`Attorneys for Applicant
`
`2S276855.l
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`-1-
`
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`
` S
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`‘i
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`.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`
`) )
`
`) )
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`)
`)
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`) )
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`)
`
`Sanofi-Synthelabo
`
`Opposer,‘
`
`v.
`
`_
`Pharmacia & Upjohn Company
`
`Applicant.
`
`TRANSMITTAL LETTER
`
`Box TTAB/NO FEE
`Commissioner of Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-13513
`
`Madam:
`
`The following document is attached hereto for filing in the above-referenced Opposition:
`
`—— Answer.
`
`This transmittal letter is submitted in duplicate for accounting purposes. We ask that the
`attached postcard be date-stamped with the date of delivery and returned to our courier as proof
`of filing. The Commissioner is authorized to charge any necessary fees associated with this
`filing to Deposit Account No. 06-2375, Order No. PHRC:539/10301198.
`
`Dated:
`
`Z’ /, Z003
`
`Respectfully submitted,
`
`J. Paul Williamson
`
`5
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 662-0200
`
`Attorneys for Applicant
`
`25276855.l
`
`-1-
`
`
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`'0
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`|I
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`
`)
`
`) )
`
`) )
`
`)
`)
`
`Sanofi-Synthelabo
`
`Opposer,
`
`V-
`
`Pharmacia & Upjohn Company
`'
`Applicant.
`
`‘
`Box TTAB/N0 FEE
`Commissioner of Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22203 ‘-35 1 3
`
`
`
`ANSWER
`
`Applicant, Pharmacia & Upjohn Company, by and through undersigned counsel, hereby
`
`answers and responds to the Notice of Opposition as follows, with the numbered paragraphs
`
`below corresponding to the numbered paragraphs of the Notice of Opposition:
`
`1.
`
`Applicant admits that on February 13, 2002 it filed an intent-to-use application to
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`register the mark AVALTO which was subsequently amended to cover Over-the-counter (OTC)
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`pharmaceutical preparations, namely preparations for the treatment of infectious diseases,
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`cancer, ophthalmolic conditions and diseases, central nervous systems diseases and disorders,
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`Parkinson’s disease, and migraines; Preparations for the treatment and symptoms of diabetes;
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`Pharmaceutical preparations for urological use, Analgesics; Anti-inflamrnatory pharmaceutical
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`preparations, in International Class 5, on the basis of a bona fide intention to use the mark in
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`COI'I1.l'I16I'CC.
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`2.
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`Applicant admits that it filed the application for the AVALTO mark based on an
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`intent-to-use the mark in commerce and that it had not made use of the mark in the United States
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`or in commerce prior to February 13, 2002.
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`25275so2.1
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`3.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the stated allegations and therefore denies same.
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`4.
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`Applicant admits that Registration No. 2,005,791 issued on October 8, 1996 for
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`the mark AVAPRO for pharmaceutical preparations for the prevention and treatment of
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`cardiovascular disorders, in International Class 5. Applicant further admits that a Declaration
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`under Section 15 of the Trademark Act was filed in connection with Registration No. 2,005,791.
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`Applicant is without knowledge or infonnation sufficient to fonn a belief as to the truth of the
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`remaining allegations of this paragraph, and therefore denies same.
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`5.
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`Applicant admits that Registration No. 2,005,791 issued on October 0, 1996, and
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`based on application Serial No. 74/691,067, was filed on June 20, 1995 and that the application
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`for the AVALTO mark was filed on February 13, 2002. Applicant is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining allegations of this
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`paragraph and therefore denies same.
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`6.
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`Applicant is without knowledge or information sufficient to form a belief as to the
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`truth of the allegations ofthis paragraph and therefore denies same.
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`7.
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`Applicant is without knowledge or information sufficient to fonn a belief as to the
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`truth of the allegations of this paragraph and therefore denies same.
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`8.
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`9.
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`Applicant denies the allegations of this paragraph.
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`Applicant denies that the respective goods are closely related. Applicant
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`is
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`without knowledge or information sufficient to form a belief as to the truth of the remaining
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`allegations of this paragraph and therefore denies same.
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`10.
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`Applicant denies the allegations of this paragraph on the basis that Opposer has
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`2s275so2.1
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`not properly characterized the “doctrine of greater care.”
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`11.
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`Applicant denies the allegations of this paragraph.
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`12.
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`Applicant denies the allegations of this paragraph.
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`13.
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`Applicant denies the allegations of this paragraph.
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`14.
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`Applicant admits that it did not obtain the consent of Opposer prior to adopting
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`and filing the application to register the AVALTO mark on February 13, 2002.
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`Applicant therefore requests that the opposition be dismissed and that the application to
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`register AVALTO be approved.
`
`_
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`Respectfully submitted,
`
`Dated: March 21, 2003
`
`PHARMACIA & UPJOHN COMPANY
`
`.
`
`‘
`
`By:
`
`J. Paul Williamso
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`Telephone: 202-662-0200
`Facsimile: 202-662-4643
`
`Attorneys for Applicant
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing “Answer” is being served
`upon Opposer’s counsel this 21“ day of March, 2003, by first class mail, postage prepaid, as
`follows:
`
`Mark I. Peroff
`
`Trademark & Patent Counselors of America, P.C.
`915 Broadway
`19"‘ Floor
`
`New York, NY 10010-7108
`Telephone: 212-387-0247
`
`2s27s5o2.1
`
`-3-
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`‘\RK OFFICE, placed hereon. acknowledges receipt r’
`The stamp of the TRADF'
` Applicant Pharrnacia & L .V)ll'l Company By J. Pa. llliamson
`
`
`
`
`Opposition No. 155 008
`Atty Docket PHRC:539/10301198
`Deposit/Mail Date March 21 2003
`Client #
`Cl Amendment/Response E D Declaration under Sections El 8 & D 15
`[1 Amendment to Allege Use
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`
`_ Express Mail No. __-_
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`
`TTAB:
`E] Ext. offiTime to File Not. Of Opposition,
`Check for $
`I] Not. Of Opposition. Check for $
`El Other Answer '‘
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`IT
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`MAR 2 1
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`06/10/2003 09:03 FAX 9089016099
`
`LEGAL
`
`‘
`
`002
`
`UNITED STATES DEPAI-1'mEN'.! OF COMMERCE
`Patent and Trademark Office
`Trademark Trial and Appeal Board .
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Mailed:
`
`June 2, 2003
`
`Opposition No. 91155008
`
`SANOFI-SYNTHELABO
`
`V0
`
`.—_ .-—'--' --- —-'
`‘-..__,.__._.
`-Pharmacia & Upjohn Company
`
`George Woods, Lega1.Assistant:
`
`Answer was due in this case on March 23, 2003.
`
`Inasmuch
`
`as it appears that no answer has been filed, nor has applicant
`
`filed a motion to extend its time to answer, notice of default
`
`is hereby entered against applicant under Fed. R. civ. P.
`
`55(a).
`
`Applicant is allowed until thirty days from the mailing
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`date of this order to show cause why judgment bY default
`should not be entered against applicant in accordance with
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`Fed. R. Civ. P. 55(b).
`
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`Opposnrion No. 91/155.008
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`C):-iginals will Not Follow
`
`Dear XVL1-. Woods,
`
`Further to our earlier discussion, the answer filed by Applicant Pharrnacia & Upjohn Company on
`I\/larch 21. 2003, and postcard staxn-ped ‘fi:eceived" by the TAB on 1\/Iareh 21. 2003. are attached.
`
`Please let me lenosv if you need additional infonnation.
`
`l‘R.O'DXJC'l TYE XFITQILEIAITOTN IS I!*"ItX~TDE-D QEILY FOR. TA-E USE QF '1‘)-IE INDIVIDUAL 9
`
`IF YOU DO NCIT RECEIVE AI_L OF THE IUKGES. PLEASE CALL
`VETTA CREASY AT 202-662-4705 AS SQCIIN AS POSSIBLE.
`
`
`
`FULBRIGHT & JAw0RSKI L.L.P.
`A REGISTERED LIMITED LIABILITY PARTNERSHIP
`
`80l PENNSYLVANIA AVENUE, N.W.
`WASHINGTON, D.C. 20004-2623
`WWW.FULBR|GHT.COM
`
`FACSIMILE TRANSMISSION
`
`DATE:
`
`June 12, 2003
`
`MATTER NUMBER:
`
`10301198
`
`
`
`
`
`703-308-9333
`
`703-308-9300
`
`FROM:
`PHONE;
`
`Katherine M. DuBray
`(202) 662-4607
`
`USER ID:
`FAX:
`
`KD10473
`FLOOR:
`(202) 662-4643
`
`05
`
`RE:
`
`Opposition No. 91/155,008
`
`NUMBER OF PAGES WITH COVER PAGE: "7
`
`Originals Will Not Follow
`
`Messa e:
`
`March 21, 2003, and postcard stamped “received” by the TTAB on March 21, 2003, are attached.
`
`Dear Mr. Woods, Further to our earlier discussion, the answer filed by Applicant Pharmacia & Upjohn Company on
`
`Please let me know if you need additional information.
`
`Thank you!
`
`CAUTION - CONFIDENTIAL
`
`THE INFORMATION CONTAINED IN THIS FACSIMILE IS CONFIDENTIAL AND MAY ALSO CONTAIN PRIVILEGED ATTORNEY-CLIENT INFORMATION OR WORK
`PRODUCT. THE INFORMATION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY T0 WHOM IT IS ADDRESSED.
`IF YOU ARE NOT THE INTENDED
`RECIPIENT, OR THE EMPLOYEE OR AGENT RESPONSIBLE TO DELIVER IT TO THE INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY USE,
`DISSEMINATION, DISTRIBUTION OR COPYING OF THIS COMMUNICATION IS STRICTLY PROHIBITED.
`IF YOU HAVE RECEIVED THE FACSIMILE IN ERROR, PLEASE
`IIVIMEDIATELY NOTIFY US BY TELEPHONE, AND RETURN THE ORIGINAL MESSAGE TO US AT THE ADDRESS ABOVE VIA THE US. POSTAL SERVICE. THANK YOU.
`
`IF YOU DO NOT RECEIVE ALL OF THE PAGES, PLEASE CALL
`VETTA CREASY AT 202-662-4705 AS SOON AS POSSIBLE.
`
`
`
`
`
`gstamp of the TRADF" ‘RK OFFICE. placed here.:knowledges receipt r’
`
`.__L_Y_____:__i
`jlliamson
`By J. Pat
`fin Com an
`Iicant Pharrnacia & L
`,
`
`Opposition No. 155 008
`Atty Docket PHRC:539/10301198
`
`Deposit/Mail Date March 21 2003
`Client #
`
`__
`
`\ P E
`
`_,
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`
`D Declaration under Sections El 8 8. El 15
`D Extension of Time to File Statement of Use,
`
`D Amendment/Response
`Cl Amendment to Allege Use
`E] Application for TM/SM
`D IT
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`[1 Check for & E] Use-Based
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`El _Specimens
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`MAR 1 1 am
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`8 Postcard
`E] _Specimens
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`Express Mail No. __
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`E] Ext. of;-Time to File Not. Of Opposition,
`Check for $_____
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`
`)
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`
`))
`
`))
`
`) )
`
`)
`
`Sanofi-Synthelabo
`
`2
`
`Opposer,
`
`v.
`
`Pharmacia & Upjohn Company
`
`Applicant.
`
`TRANSMITTAL LETTER
`
`Box TTAB/NO FEE
`Commissioner of Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Madam:
`
`The following document is attached hereto for filing in the above-referenced Opposition:
`
`— Answer.
`
`This transmittal letter is submitted in duplicate for accounting purposes. We ask that the
`attached postcard be date-starnped with the date of delivery and returned to our courier as proof
`of filing. The Commissioner is authorized to charge any necessary fees associated with this
`filing to Deposit Account No. 06-2375, Order No. PI{RC:539/10301198.
`Respectfully submitted,
`
`Dated:
`
`L1, 3003
`
`IJ. Paul Williamson
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 662-0200
`
`Attorneys for Applicant
`
`25276855.l
`
`-1-
`
`
`
`,.3721?}?.r~--—-«-»,':.-‘';~'1*'
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`
`) )
`
`))
`
`)
`)
`
`) )
`
`)
`
`Sanofi-Synthelabo
`
`Opposer,
`
`v.
`
`.
`Pharmacia & Upjohn Company
`
`Applicant.
`
`.
`
`TRANSMITTAL LETTER
`
`Box TTAB/NO FEE
`Commissioner of Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Madam:
`
`The following document is attached hereto for filing in the above-referenced Opposition:
`
`— Answer.
`
`This transmittal letter is submitted in duplicate for accounting purposes. We ask that the
`atta'ched postcard be date-stamped with the date of delivery and returned to our courier as proof
`of filing. The Commissioner is authorized to charge any necessary fees associated with this
`filing to Deposit Account No. 06-2375, Order No. PHRC:539/10301198.
`
`Dated:
`
`Z’/, 300$
`
`Respectfully submitted,
`
`J. Paul Williamson
`
`5
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 662-0200
`
`Attorneys for Applicant
`
`2S276855.l
`
`-1 -
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`r
`
`)
`
`))
`
`) )
`
`)
`)
`
`Sanofi-Synthelabo
`
`Opposer,
`
`v.
`
`Pharmacia & Upjohn Company
`Applicant.
`
`Box TTAB/NO FEE
`Commissioner of Trademarks
`2900 Crystal Drive
`Arlington, VA 22203-3513
`
`ANSWER
`
`Applicant, Pharmacia & Upjohn Company, by and through undersigned counsel, hereby
`
`answers and responds to the Notice of Opposition as follows, with the numbered paragraphs
`
`below corresponding to the numbered paragraphs of the Notice of Opposition:
`
`1.
`
`Applicant admits that on February 13, 2002 it filed an intent-to-use application to
`
`register the mark AVALTO which was subsequently amended to cover Over~‘the-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, in International Class 5, on the basis of a bona fide intention to use the mark in
`
`COITIIDCICC.
`
`2.
`
`Applicant admits that it filed the application for the AVALTO mark based on an
`
`intent-to-use the mark in commerce and that it had not made use of the mark in the United States
`
`or in commerce prior to February 13, 2002.
`
`2s27sso2.1
`
`-1-
`
`
`
`
`
`3.
`
`Applicant is without knowledge or information sufficient to fonn a belief as to the
`
`truth of the stated allegations and therefore denies same.
`
`4.
`
`Applicant admits that Registration No. 2,005,791 issued on October 8, 1996 for
`
`the mark AVAPRO for pharmaceutical preparations for the prevention and treatment of
`
`cardiovascular disorders, in International Class 5. Applicant further admits that a Declaration
`
`under Section 15 of the Trademark Act was filed in connection with Registration No. 2,005,791.
`
`Applicant is without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations of this paragraph, and therefore denies same.
`
`5.
`
`Applicant admits that Registration No. 2,005,791 issued on October 8, 1996, and
`
`based on application Serial No. 74/691,067, was filed on June 20, 1995 and that the application
`
`for the AVALTO mark was filed on February 13, 2002. Applicant is without knowledge or
`
`iiiformation sufficient to form a belief as to the truth of the remaining allegations of this
`
`paragraph and therefore denies same.
`
`6.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of this paragraph and therefore denies same.
`
`7.
`
`Applicant is without knowledge or infonnation sufficient to form a belief as to the
`
`truth of the allegations of this paragraph and therefore denies same.
`
`8.
`
`9.
`
`Applicant denies the allegations of this paragraph.
`
`Applicant denies that the respective goods are closely related. Applicant
`
`is
`
`without knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations of this paragraph and therefore denies same.
`
`10.
`
`Applicant denies the allegations of this paragraph on the basis that Opposer has
`
`25275502.:
`
`-2-
`
`
`
`
`
`11.
`
`12.
`
`not properly characterized the “doctrine of greater care.”
`
`Applicant denies the allegations of this paragraph.
`
`Applicant denies the allegations of this paragraph.
`
`13.
`
`Applicant denies the allegations of this paragraph.
`
`14.
`
`Applicant admits that it did not obtain ‘the consent of Opposer prior to adopting
`
`and filing the application to register the AVALTO mark on February 13, 2002.
`
`Applicant therefore requests that the opposition be dismissed and that the application to
`
`register AVALTO be approved.
`
`Respectfirlly submitted,
`
`Dated: March 21, 2003
`
`PHARMACIA & UPJOHN COMPANY
`
`By:
`
`J. Paul Williamso
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L‘.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`Telephone: 202-662-0200
`Facsimile: 202-662-4643
`
`Attorneys for Applicant
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing “Answer” is being served
`upon Opposer’s counsel this 21“ day of March, 2003, by first class mail, postage prepaid, as
`follows:
`
`Mark I. Peroff
`
`Trademark & Patent Counselors of America, P.C.
`
`915 Broadway
`19”‘ Floor
`
`New York, NY 10010-7108
`Telephone: 212-387-0247
`
` _
`
`2527sso2.1
`
`-3-
`
`
`
`
`
`
`
`.
`.
`? ‘
`ConfirmationReport—MemorySend
`
`.
`
`Time
`Tel
`Name
`
`line 1
`
`05:08pm
`
`. Jul-24-2003
`202-662-4643
`FULBRIGHT & JAWORSKI
`
`Job number
`
`I
`
`064
`
`Date
`
`To
`
`Document Pages
`
`Start time
`
`End time
`
`Pages sent
`
`Status
`
`:
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`2
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`:
`
`:
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`:
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`:
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`2
`
`Jul-24 05:03pm
`
`10473flI0301198fl1?037467079
`
`007
`
`Jul-24 05:03pm
`
`Jul-24 05:08pm
`
`007
`
`UK
`
`V
`
`Job number
`
`: 064
`
`=5=** SEND SUCCESSFUL ***
`
`|_.I...P.
`l‘—LlLERI(3l-IT 52 QAVVSREKI
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`
`
`
`DATE:
`
`July 24, 2003 2
`
`I-‘Acs11yIILIa: TRANSLIISSION
`1\vI.-rx-ran NUMBER:
`
`1 0301 198
`
`» C
`
`
`
`lara Vela
`Trademark ‘trial and A - ea] Board
`|
`
`1 -703-746-7079
`
`
`
`
`.
`
`Katherine IVI. DuBx-ay
`I’-‘ROM:
`(202) 662-4607
`PHONE:
`Opposition No. ‘I. 55,008
`RE:
`NUMBER or PAGES wI'rH COVER PAGE:
`
`Use»: an:
`Fax:
`
`FLoon;
`1<.D10473
`(202) 662-4643
`
`05
`
`7
`
`Originals Will Not Follow
`
`Ivlessa ; 1::
`Dear 1\/Is. Vela,
`
`Further to our earlier discussion. the Applicant’s Answer that was filed with the Tradelnark Trial and
`Appeal Board on lV.|Ia'-rch 21. 2003 and a copy ofthc postcard staxnped "received" are attached. Please
`feel {ice to give rue a call at 202-662-4607 if you require any additional infonnation.
`
`Sincerely. Kate DuBray
`
`CAUTION — CONFIDENTIAL
`Ti-IE .!N'F<>&~IA‘naN c'Ox¢rAD~:ED IN THIS I‘A(ZSlhdlLE ls c‘ONFn>EN'rAAJ. AND MAY ALSC) CoN'r4uL~a PKIVILEOED A'rI'(.>RNflV—Cl_lEbY!‘ 1N.Fon.naa\'I'roN OR woR.K
`PEQDLICT THE INFORBIATTQN AS I'Z\l'L'hK«I>ED ONLY FOR THE USE Or Tr!!! XBADIVIDIJAL OR £lN'l"l'1V TO “ll-Icha IT IS ADDRKSSBDV IF YQL: AIKE N91‘ TI-E l'hl'!'Eb4I>.ED
`RECWIEXVL‘. OR THE ERIPLGYEE QR Afi.E!*l'I' RESPQNSBLE T9 DELJVER ['1' TO THE RVTTSNJJEI3 RJCIVIENT. YOU AIL!
`I-!!Z«R‘lTV NOTIFIED TIIAT A14? l’.J$B_
`1>lSSEh4IlNA'l'IOl\l’. DIS'l‘RlB‘IJ'I‘lOh' OK COPY LING OF TI-US Celt-IIVILINDCATAOJN IS STRICTLY PRO)-DBITBD IF YDLI HAVE RECEIVED TIIE PACSSQKLE flit HID-ROR. PLEASE
`II-II-dE'I)ll\'l"EL\’ NQDFY US 31' TELEPHONE. AND RETURN 'l'l1.E L33-IKTINAL NIESSAGE To us AT ‘Till ADDRESS ABOVE VIA TTIE U S. POSTAL SERVICE. TI-IJ\l\1'I{ VOIJ.
`IF YCIII IJCD NCIT RECEIVE ALI. ()1-‘ THE PAGES. PLEASE CALL
`BARBARA BAKEII AT 202-662-4582 AS SOON AS POSSLBLE.
`
`
`
`
`
`n
`
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`
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`FULBRIGHT & JAw0RsKI L.L.P.
`A REGISTERED LIMITED LIABILITY PARTNERSHIP
`80I PENNSYLVANIA AVENUE, N.W.
`WASHINGTON, D.C. 20004-2623
`WWW.FULBR|GHT.COM
`
`FACSIMILE TRANSMISSION
`
`DATE:
`
`July 24, 2003
`
`MATTER NUMBER:
`
`10301 198
`
`
`
`
`
`FROM:
`
`Katherine M. DuBray
`
`USER ID:
`
`KD10473
`
`FLOOR:
`
`05
`
`PHONE:
`
`(202) 662-4607
`
`RE:
`
`Opposition No. 155,008
`
`FAX:
`
`(202) 662-4643
`
`NUMBER or PAGES WIT]-I COVER PAGE:
`
`7
`
`Originals Will Not Follow
`
`Messa e:
`
`Dear Ms. Vela,
`
`Further to our earlier discussion, the Applicant’s Answer that was filed with the Trademark Trial and
`Appeal Board on March 21, 2003 and a copy of the postcard stamped “received” are attached. Please
`feel free to give me a call at 202-662-4607 if you require any additional information.
`
`
`
`Sincerely,
`Kate DuBray
`
`CAUTION - CONFIDENTIAL
`
`THE INFORMATION CONTAINED IN THIS FACSIMILE IS CONFIDENTIAL AND MAY ALSO CONTAIN PRIVILEGED ATTORNEY-CLIENT INFORMATION OR WORK
`PRODUCT. THE INFORMATION 1S INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHOM IT IS ADDRESSED.
`IF YOU ARE NOT THE INTENDED
`RECIPIENT, OR THE EMPLOYEE OR AGENT RESPONSIBLE TO DELIVER IT TO THE INTENDED RECIPIENT, YOU ARE HEREBY NOTIFIED THAT ANY USE,
`DISSEMINATION, DISTRIBUTION OR COPYING OF THIS COMMUNICATION IS STRICTLY PROHIBITED.
`IF YOU HAVE RECEIVED THE FACSIMILE IN ERROR, PLEASE
`IMMEDIATELY NOTIFY US BY TELEPHONE, AND RETURN THE ORIGINAL MESSAGE TO US AT THE ADDRESS ABOVE VIA THE US. POSTAL SERVICE. THANK YOU.
`
`IF YOU DO NOT RECEIVE ALL OF THE PAGES, PLEASE CALL
`BARBARA BAKER AT 202-662-4582 AS SOON AS POSSIBLE.
`
`
`
`
`
`Qstamp of the TRADF" ‘RK OFFICE, placed herer.knowledges receipt r-’
`
`.-lliamson
`By J. Pa.
`,4 licant Phannacia & L
`in Egan
`Opposition No. 155 008
`Atty Docket PHRC:539/10301198
`
`DepositlMail Date March 21 2003
`Client #
`[1 Declaration under Sections El 8 & El 15
`El Extension of Time to File Statement of Use.
`
`D AmendmentIResponse
`
`Cl Amendment to Allege Use D Application for TM/SM
`
`D IT
`
`Cl Use-Based
`43')
`C] _ Specimens
`€37
`D Application for Renewal
`D Assignment, Check for $_
`El Assignment Cover Sheet (Form PTO-1594)
`D Cert. Of Mailing under 37 CFR § 1.8(a)
`
`&
`‘f’
`
`U Check for 8.
`8 Postcard
`D __ Specimens
`[:1 Statement of Use. Check for §
`D __ Specimens
`E Transmittal Letter
`‘
`
`Express Mail No. __
`
`Tl'AB:
`
`.
`D Check for $
`Cl Declaration El __ Substitute Specimens
`
`E Other Answer
`
`D Ext. ot_ Time to File Not. Of Opposition.
`Check for S
`I] Not. Of Opposition.ACheck for S
`
`
`
` 9
`
`9
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`
`) )
`
`))
`
`)
`)
`
`) )
`
`)
`
`Sanofi-Synthelabo
`
`Opposer,
`
`v.
`
`'
`Pharrnacia & Upjohn Company
`
`Applicant.
`
`TRANSMITTAL LETTER
`
`Box TTAB/NO FEE
`Commissioner of Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Madam:
`
`The following document is attached hereto for filing in the above-referenced Opposition:
`
`— Answer.
`
`This transmittal letter is submitted in duplicate for accounting purposes. We ask that the
`attached postcard be date-stamped with the date of delivery and returned to our courier as proof
`of filing. The Commissioner is authorized to charge any necessary fees associated with this
`filing to Deposit Account No. 06-2375, Order No. PHRC:539/10301198.
`
`Dated:
`
`1/, 300$
`
`Respectfully submitted,
`
`J. Paul Williamson
`
`5
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 662-0200
`
`Attorneys for Applicant
`
`252'/6355.1
`
`-1-
`
`
`
` 9
`
`9
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`) )
`
`Sanofi-Synthelabo
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`
`) )
`
`)
`)
`
`) )
`
`)
`
`Opposer,
`
`v.
`
`'
`Pharmacia & Upjohn Company
`
`Applicant.
`
`-
`
`TRANSMITTAL LETTER
`
`Box TTAB/NO FEE
`Commissioner of Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Madam:
`
`'
`
`The following document is attached hereto for filing in the above-referenced Opposition:
`
`— Answer.
`
`This transmittal letter is submitted in duplicate for accounting purposes. We ask that the
`attached postcard be date-stamped with the date of delivery and returned to our courier as proof
`of filing. The Commissioner is authorized to charge any necessary fees associated with this
`filing to Deposit Account No. 06-2375, Order No. PHRC:539/10301198.
`
`Dated:
`
`L1, 3093
`
`Respectfully submitted,
`
`J. Paul Williamson
`
`5
`
`Katherine M. DuBray
`Fulbright & Jaworski L.L.P.
`801 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`(202) 662-0200
`
`Attorneys for Applicant
`
`25276855.]
`
`-1-
`
`
`
` 3
`
`9
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 155,008
`
`Application Serial No. 78/108,410
`v
`
`)
`
`) )
`
`) )
`
`)
`)
`
`Sanofi-Synthelabo
`
`.
`
`Opposer,
`
`v.
`
`Pharmacia & Upjohn.Company
`Applicant.
`
`Box TTAB/NO FEE
`
`Commissioner of Trademarks
`2900 Crystal Drive
`Arlington, VA 22203-3513
`
`ANSWER
`
`Applicant, Pharmacia & Upjohn Company, by and through undersigned counsel, hereby
`
`answers and responds to the Notice of Opposition as follows, with the numbered paragraphs
`
`below corresponding to the numbered paragraphs of the Notice of Opposition:
`
`1.
`Applicant admits that on February 13, 2002 it filed an intent-to-use application to
`register the mark AVALTO which was subsequently amended to cover Over-the-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-inflarmnatory pharmaceutical
`
`preparations, in International Class 5, on the basis of a bona fide intention to use the mark in
`
`COIIIIIICICC.
`
`2.
`
`Applicant admits that it filed the application for the AVALTO mark based on an
`
`intent-to-use the mark in commerce and that it had not made use of the mark in the United States
`
`or in commerce prior to February 13, 2002.
`
`25275502.:
`
`- l -
`
`
`
` 9
`
`9
`
`3.
`
`Applicant is without knowledge or information sufficient to form a belief as to the
`
`truth of the stated allegations and therefore denies same.
`
`4.
`
`Applicant admits that Registration No. 2,005,791 issued on October 8, 1996 for
`
`the mark AVAPRO for pharmaceutical preparations for the prevention and treatment of
`
`cardiovascular disorders, in International Class 5. Applicant further admits that a Declaration
`
`under Section 15 of the Trademark Act was filed in connection with Registration No. 2,005,791.
`
`Appli