IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 76/421838
`
`j j
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`Ger.~.Path Pharmaceuticals, Inc.,
`
`Opposer
`
`v.
`
`Genpat 77 Pharmacogenetics AG
`
`Applicant
`
`Commissioner for Trademarks
`
`BOX TTAB/FEE
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`é%/%%%\2\_/
`\./\_/\}¥/
`
`Opposition No.
`
`NOTICE OF OPPOSITION
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`GenPath Pharmaceuticals, Inc., a corporation organized under the laws of Delaware,
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`located and doing business at 300 Technology Square, Cambridge, Massachusetts 02139,
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`believes that it will be damaged by the registration of the trademark “GENPAT 77
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`PHARMACOGENETICS AG and Design” as shown in Application Serial No. 76/421838, filed
`
`June 17, 2002 by Genpat 77 Pharmacogenetics AG (hereinafter “Applicant”), and hereby
`
`opposes the same.
`
`12/0312003 Jflflufiflfii 00CO0Q4u GBU¢L5
`
`Vafikibafi
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`0} $526492
`
`930.63 D?
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant seeks registration on the Principal Register of the trademark “GENPAT
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`77 PH ARMACOGENETICS AG and Design” for use in connection with perfume, perfumery,
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`namely, eau de toilette and Colognes; essential oils for personal use; hair lotions; and dentifrices;
`
`BOSTON l785374vl
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 76/421838
`
`j j
`
`\/ /“P/0 {\\\\\\\\\\\\\\\/\\\\\\\\\\\\
`
`Ger.~.Path Pharmaceuticals, Inc.,
`
`Opposer
`
`v.
`
`Genpat 77 Pharmacogenetics AG
`
`Applicant
`
`Commissioner for Trademarks
`
`BOX TTAB/FEE
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`é%/%%%\2\_/
`\./\_/\}¥/
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`GenPath Pharmaceuticals, Inc., a corporation organized under the laws of Delaware,
`
`located and doing business at 300 Technology Square, Cambridge, Massachusetts 02139,
`
`believes that it will be damaged by the registration of the trademark “GENPAT 77
`
`PHARMACOGENETICS AG and Design” as shown in Application Serial No. 76/421838, filed
`
`June 17, 2002 by Genpat 77 Pharmacogenetics AG (hereinafter “Applicant”), and hereby
`
`opposes the same.
`
`12/0312003 Jflflufiflfii 00CO0Q4u GBU¢L5
`
`Vafikibafi
`
`0} $526492
`
`930.63 D?
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant seeks registration on the Principal Register of the trademark “GENPAT
`
`77 PH ARMACOGENETICS AG and Design” for use in connection with perfume, perfumery,
`
`namely, eau de toilette and Colognes; essential oils for personal use; hair lotions; and dentifrices;
`
`BOSTON l785374vl
`
`
`
`
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`pharmaceutical, veterinary and sanitary preparations, namely, anticoagulants, anti-depressants,
`
`antibiotics, antihypertensives, antiphlogistics, antirheumatics, antioxidants, chemotherapeutics;
`
`diuretics, antiarrhythmics, antiasthmatics, antiallergics, anticholinergics, anticonvulsants,
`
`antiemetics, fibrinolytics, anti—inflammatory preparations, antiproliferatives, antipyretics,
`
`antiviral preparations, antithrombotics; pharmaceutical preparations for the treatment of diabetes
`
`and insomnia; veterinary vaccines for dogs; blood substitute for animal use; sanitary preparations
`
`namely, sanitary pads and sanitary napkins; and medical services, namely, medical laboratories;
`
`medical and scientific research, namely, conducting clinical trials; medical research; scientific
`
`research and industrial product research, as evidenced by the publication of said trademark in the
`
`September 30, 2003 issue of the Official Gazette.
`
`2.
`
`Opposer is now, and has been for some time, in the business of research and
`
`development of pharmaceuticals and medical diagnostic reagents for the treatment and diagnosis
`
`of cancer, autoimmune diseases, inflammatory diseases, allergic diseases, neurodegenerative
`
`diseases, brain damage, psychiatric disorders, pain, cardiovascular diseases, metabolic diseases,
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`gastrointestinal disorders, endocrinological disorder, viral infections, bacterial infections and
`
`fungal infections.
`
`3
`
`Opposer adopted the trade name “GENPATH” and the mark “GENPATH” in
`
`connection with its activities, as set forth in paragraph 2, at least as early as April 19, 2002, and
`
`has been using the mark in connection with those activities ever since.
`
`4.
`
`Opposer is the owner of United States pending trademark application, Serial No.
`
`78/ 122867, for pharmaceuticals and medical diagnostic reagents for the treatment and diagnosis
`
`of cancer, autoimmune diseases, inflammatory diseases, allergic diseases, neurodegenerative
`
`diseases, brain damage, psychiatric disorders, pain, cardiovascular diseases, metabolic diseases,
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`BOSTON l’785374vl
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`
`
`
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`gastrointestinal disorders, endocrinological disorder, viral infections, bacterial infections and
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`fungal infections.
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`5.
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`Opposer’s mark “GENPATH” is symbolic of the goodwill and recognition built
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`up by Opposer through continuous use of its trade name over a period of time.
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`6.
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`Opposer has expended considerable effort and expense in promoting its mark
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`“GENPATH” in the biotechnology field, with the result that people in the biotechnology field
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`have come to know, and recognize the work of Opposer by such trade name. Opposer has
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`valuable goodwill established in its trade name.
`
`7.
`
`Application Serial No. 76/421838 for registration of the mark “GENPAT 77
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`PHARMACOGENETICS AG and Design” was filed on June 17, 2002, based upon Applicant’s
`
`bona fide intent to use said mark. Thus, Opposer actually began using its trade name and filed
`
`the application for its trademark prior to the filing date of Applicant’s application.
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`8.
`
`Opposer’s mark “GENPATH” and Applicant’s mark “GENPAT 77
`
`PHARMACOGENETICS AG and Design” are confusingly similar.
`
`9.
`
`The goods which are identified in Opposer’s application are closely related to the
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`goods and services identified in the Applicant’s application to register “GENPAT 77
`
`PHARMACOGENETICS AG and Design,” and, on information and belief, will be marketed
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`through the same or similar channels of trade to the same class of consumers.
`
`10.
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`By reason of Opposer’s earlier adoption of the “GENPATH” mark, the public will
`
`believe that the Applicant’s use of its mark “GENPAT 77 PHARMACOGENETICS AG and
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`Design” is sponsored or approved by Opposer and that the quality of the goods and services
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`bearing the Applicant’s mark has been approved and/or maintained by Opposer.
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`BOSTON l785374vl
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`
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`
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`11.
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`In View of these similarities, Applicant’s use of the mark “GENPAT 77
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`PHARMACOGENETICS AG and Design” is likely to cause confusion, mistake, or deception
`
`with respect to Opposer’s mark “GENPATH” and to damage the goodwill represented and
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`symbolized by the mark.
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`12.
`
`On information and belief, Applicant has filed an opposition in the Community
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`Trade Mark Office to Opposer’s Community Trade Mark application corresponding to US Serial
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`No. 78/ 122867, citing a likelihood of confusion between Applicant’s Mark “GENPAT 77
`
`PHARMACOGENETICS AG and Design” and/or “GENPAT 77” and Opposer’s Mark
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`“GENPATH.”
`
`13.
`
`Based on the foregoing, Applicant’s registration of the mark “GENPAT 77
`
`PHARMACOGENETICS AG and Design” on the Principal Register of the United States Patent
`
`and Trademark Office would clearly cause injury and damage to the Opposer.
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`WHEREFORE, Opposer prays that this opposition be sustained and that registration of
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`Applicant’s mark “GENPAT 77 PHARMACOGENETICS AG and Design” as shown in
`
`Application Serial No. 76/421838 be refused.
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`BOSTON l785Il74vl
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`
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`For the NOTICE OF OPPOSITION filing fee, the Patent and Trademark Office is
`
`authorized to charge $900.00 to Hale and Dorr LLP’s Deposit Order Account No. 08-0219
`
`required by 37 C.F.R. §2.6(a) (17). The Patent and Trademark Office is also authorized to credit
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`any overpayment or charge any deficit in connection with this mark to Hale and Dorr LLP’s
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`Deposit Order Account No. 08-0219. For the purposes of charging the deposit account, a
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`duplicate copy of this notice is enclosed.
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`Respectfully submitted,
`
`GENPATH PHARMACEUTICALS, INC.
`
`Michael J. Bevilacqua
`Reg. No. 31,091
`Barbara A. Barakat
`
`Reg. No. 32,190
`Attorneys for Opposer
`
`Hale and Dorr LLP
`
`60 State Street
`
`Boston, Massachusetts 02109
`
`(617) 526-6154
`November 24, 2003
`
`
`
`CERTIFICATE OF MAILING UNDER 37 C.F.R. 1.8 a
`
`I hereby certify that this correspondence is being deposited with the United States Postal
`Service as first class mail in an envelope addressed to: Commissioner for Trademarks, BOX
`TTAB/FEE, 2900 Crystal Drive, Arlington, Virginia 22202-3514, on November 24, 2003.
`
`éla
`
`Ange a E. M. Dy
`
`BOSTON l7853'74vl
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