`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`Application Serial
`No. 76/285,420
`
`Published:
`September 24, 2002
`
`§ §
`
`§ §
`
`§
`§
`§
`§
`§
`
`Pharmacia & Upjohn Company
`
`Opposer,
`
`v.
`
`TPR International Ltd., Inc.,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer, Pharmacia & Upjohn Company, a Delaware corporation, with its principal place
`
`of business at 100 Route 206 North, Peapack, New Jersey 07977, believes that it will be damaged
`
`by registration of the mark shown in Application Serial No. 76/285, 420, and therefore opposes
`
`registration of this mark under the provisions of Section 13 of the Trademark Act of 1946, 15
`
`U.S.C. §1063.
`
`Application Serial No. 76/285,420, for the mark TOPRICIN, was filed on July 16, 2001,
`
`for a “topical analgesic preparation, namely natural pain relief cream for the treatment of muscle
`
`and joint pain, arthritis pain, nerve-related pain and inflammation, and the treatment of
`
`dermatoses,” in International Class 5. The mark was published for opposition in the Trademark
`
`Oflicial Gazette of September 24, 2002. Opposer has timely obtained an extension of time to
`
`oppose out to January 22, 2003.
`
`The grounds for opposition are as follows:
`01/29/2003 SUILSBH 00000028 76285420
`
`01 FC:5402
`
`300.00 OP
`
`25253333 . 1
`
`
`
`
`
`1.
`
`Opposer is engaged in the development, manufacture and sale of prescription and
`
`over-the-counter pharmaceutical products and has built a large and successful business in the
`
`pharmaceutical field.
`
`2.
`
`Since 1959, long prior to Applicant’s filing date, Opposer has been offering and
`
`selling in commerce an antibiotic under the mark TROBICIN.
`
`3.
`
`Opposer owns Registration No. 704,199, registered on September 13, 1960, for
`
`the mark TROBICIN for an “antibiotic,” in International Class 5. This registration is now
`
`incontestable.
`
`4.
`
`Applicant filed its use-based application on July 16, 2001 to register the mark
`
`TOPRICIN for a “topical analgesic preparation, namely natural pain relief cream for the
`
`treatment of muscle and joint pain, arthritis pain, nerve—related pain and inflammation, and the
`
`treatment of dermatoses,” in International Class 5. Use as of January 1, 2001 is claimed.
`
`5.
`
`Applicant’s TOPRICIN mark is substantially similar in sound, appearance and
`
`commercial impression to Opposer’s TROBICIN mark.
`
`6.
`
`Upon infonnation and belief,
`
`the topical analgesic preparation offered by
`
`Applicant under the mark TOPRICIN is characterized by Applicant as, among other things, an
`
`anti-inflammatory and anti-bacterial product, and may well move through the same channels of
`
`trade and to the same end users as do Opposer’s TROBICIN antibiotics.
`
`7.
`
`Applicant’s use of the mark TOPRICIN for a topical analgesic preparation so
`
`nearly resembles Opposer’s TROBICIN mark for an antibiotic product as to be likely to cause
`
`confusion, mistake or deception under Section 2(d) of the Trademark Act, 15 U.S.C. §l052(d).
`
`
`
`
`
`8.
`
`If App1icant’s TOPRICIN mark is registered, Applicant will receive a prima facie
`
`nationwide exclusive right to use its confusingly similar mark in commerce and, as such, the
`
`registration would be damaging to Opposer.
`
`WHEREFORE, Opposer believes that, as a result of its priority and the likelihood of
`
`confusion with Opposer‘s TROBICIN mark and its identified goods, Opposer will be damaged by
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`registration of the TOPRICIN mark and prays that this opposition be sustained and that Application
`
`Serial No. 76/285,420 be refused registration.
`
`Respectfully submitted,
`
`PHARMACIA & UPJOHN COMPANY
`
`Date:
`
`/' / &»0 3
`
`Cynthia i . Henderson
`FULBRI HT & JAWORSKI L.L.P.
`
`801 Pennsylvania Avenue, NW
`Washington, DC 20004
`(202) 662-4545
`
`ATTORNEYS FOR OPPOSER
`
`
`
`
`
`or
`
`6
`r
`FULBRIGI-IT & JAw0RsKI L.L.P.
`A REGISTERED LIMITED LIABILITY PARTNERSHIP
`
`-,
`
`80| PENNSYLVANIA AVENUE, N.W.
`WASHINGTON, D.C. 20004-2623
`WWW.FULBR|GHT.COM
`
`7*’/94/A’
`
`DIRECT DIAL:(2o2) 662-4545
`TELEI=>HoNE:(2o2) 662-0200
`FACSlM|LE:(202) 662-4643
`
`January 21, 2003
`
`J. PAUL WILLIAMSON
`PARTNER
`JWlLLlAMSON@FUL
`
`
`
`BOX TTAB — FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Re:
`
`Notice of Opposition
`In the Name of Pharmacia & Upjohn Company
`Our Reference: PHRC:525/ 10300441
`
`Dear Madam:
`
`Enclosed for filing is a Notice of Opposition regarding Serial No. 76/285,420.
`
`1.
`2.
`3.
`
`Transmittal letter (in duplicate);
`Notice of Opposition; and
`Check in the amount of $300.
`
`If the enclosed fee is insufficient or is an
`It is our understanding that a fee is required.
`overpayment, the Commissioner for Trademarks is hereby authorized to draw on or credit the
`deposit
`account of Fulbright & Jaworski, LLP, Account No.
`06-2375, Order No.
`PHRC:525/ 10300441. A duplicate copy of this letter is enclosed for billing purposes.
`
`Very truly yours,
`
` Cyn ia C. Henderson
`
`
`
`
`
`JPW/CCH/css
`
`Enclosure
`
`25253333 . 1
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