IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 76/421839
`
`Published in the Official Gazette at TM 90 on September 16, 2003
`
`
`
`Opposition No.
`
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`Ger..Path Pharmaceuticals, Inc.,
`
`Opposer
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`V.
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`Genpat 77 Pharmacogenetics AG
`
`)
`Applicant
`_ )
`
`BOX TTAB/FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`NOTICE OF OPPOSITION
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`GenPath Pharmaceuticals, Inc., a corporation organized under the laws of Delaware,
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`loca.ted 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” as shown in
`
`Application Serial No. 76/421839, filed June 17, 2002 by Genpat 77 Pharmacogenetics AG
`
`(hereinafter “Applicant”), and hereby opposes the same.
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`As grounds for opposition, it is alleged that:
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`1.
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`Applicant seeks registration on the Principal Register of the trademark “GENPAT
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`77” for use in connection with perfume, perfumery, namely, eau de toilette and colognes;
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`essential oils for personal use; hair lotions; and dentifrices; pharmaceutical, veterinary and
`
`12/1.!/.2303 J.£_§;R§i3gEXOp&epartatio§s,
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`anticoagulants, anti-depressants, antibiotics, antihypertensives,
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`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 76/421839
`
`Published in the Official Gazette at TM 90 on September 16, 2003
`
`
`
`Opposition No.
`
`)
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`Ger..Path Pharmaceuticals, Inc.,
`
`Opposer
`
`V.
`
`Genpat 77 Pharmacogenetics AG
`
`)
`Applicant
`_ )
`
`BOX TTAB/FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`NOTICE OF OPPOSITION
`
`GenPath Pharmaceuticals, Inc., a corporation organized under the laws of Delaware,
`
`loca.ted and doing business at 300 Technology Square, Cambridge, Massachusetts 02139,
`
`believes that it will be damaged by the registration of the trademark “GENPAT 77” as shown in
`
`Application Serial No. 76/421839, filed June 17, 2002 by Genpat 77 Pharmacogenetics AG
`
`(hereinafter “Applicant”), and hereby opposes the same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant seeks registration on the Principal Register of the trademark “GENPAT
`
`77” for use in connection with perfume, perfumery, namely, eau de toilette and colognes;
`
`essential oils for personal use; hair lotions; and dentifrices; pharmaceutical, veterinary and
`
`12/1.!/.2303 J.£_§;R§i3gEXOp&epartatio§s,
`I
`...
`.
`_.
`_
`._
`,
`or
`$00 00 La
`
`BOSTON l7785l8vl
`
`anticoagulants, anti-depressants, antibiotics, antihypertensives,
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`
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`antiphlogistics, antirheumatics, antioxidants, chemotherapeutics; diuretics, antiarrhythmics,
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`antiasthmatics, antiallergics, anticholinergics, anticonvulsants, antiemetics, fibrinolytics, anti-
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`inflammatory preparations, antiproliferatives, antipyretics, antiviral preparations,
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`antithrombotics; pharmaceutical preparations for the treatment of diabetes and insomnia;
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`veterinary vaccines for dogs; blood substitute for animal use; sanitary preparations namely,
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`sanitary pads and sanitary napkins; and medical services, namely, medical laboratories; medical
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`and scientific research, namely, conducting clinical trials; medical research; scientific research
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`and industrial product research, as evidenced by the publication of said trademark in the
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`September 16, 2003 issue of the Official Gazette.
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`2.
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`Opposer is now, and has been for some time, in the business of research and
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`development of pharmaceuticals and medical diagnostic reagents for the treatment and diagnosis
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`of cancer, autoimmune diseases, inflammatory diseases, allergic diseases, neurodegenerative
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`diseases, brain damage, psychiatric disorders, pain, cardiovascular diseases, metabolic diseases,
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`gastrointestinal disorders, endocrinological disorder, viral infections, bacterial infections and
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`fungal infections.
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`3
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`Opposer adopted the trade name “GENPATH” and the mark “GENPATH” in
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`connection with its activities, as set forth in paragraph 2, at least as early as April 19, 2002, and
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`has been using the mark in connection with those activities ever since.
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`4.
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`Opposer is the owner of United States pending trademark application, Serial No.
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`78/122867, for pharmaceuticals and medical diagnostic reagents for the treatment and diagnosis
`
`of cancer, autoimmune diseases, inflammatory diseases, allergic diseases, neurodegenerative
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`diseases, brain damage, psychiatric disorders, pain, cardiovascular diseases, metabolic diseases,
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`BOSTOV l7785l8vl
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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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`valu able goodwill established in its trade name.
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`7.
`
`Application Serial No. 76/421839 for registration of the mark “GENPAT 77” was
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`filed on June 17, 2002, based upon Applicant’s bona fide intent to use said mark. Thus, Opposer
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`actually began using its trade name and filed the application for its trademark prior to the filing
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`date of Applicant’s application.
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`8.
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`Opposer’s mark “GENPATH” and Applicant’s mark “GENPAT 77” are
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`confusingly similar.
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`9.
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`The goods that 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,” and, on
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`information and belief, will be marketed through the same or similar channels of trade to the
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`same: class of consumers.
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`10.
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`By reason of Opposer’s earlier adoption of the “GENPATH” mark, the public will
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`believe that the Applicant’s use of its mark “GENPAT 77” is sponsored or approved by Opposer
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`and that the quality of the goods and services bearing the Applicant’s mark has been approved
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`and/or maintained by Opposer.
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`BOSTON l778518vl
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`11.
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`In view of these similarities, Applicant’s use of the mark “GENPAT 77” is likely
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`to cause confusion, mistake, or deception with respect to Opposer’s mark “GENPATH” and to
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`damage the goodwill represented and symbolized by the mark.
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`12.
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`12.
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`On information and belief, Applicant has filed an opposition in the
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`Community Trade Mark Office to Opposer’s Community Trade Mark application corresponding
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`to US Serial No. 78/122867, citing a likelihood of confusion between App1icant’s Mark
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`“GENPAT 77” and/or “GENPAT 77 PHARMACOGENETICS AG and Design” and Opposer’s
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`Mark “GENPATH”
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`13.
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`Based on the foregoing, App1icant’s registration of the mark “GENPAT 77” on
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`the Principal Register of the United States Patent and Trademark Office would clearly cause
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`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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`App.licant’s mark “GENPAT 77” as shown in Application Serial No. 76/421839 be refused.
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`BOSTON l7785l8vl
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`For the NOTICE OF OPPOSITION filing fee, the Patent and Trademark Office is
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`authorized to charge $900.00 to Hale and Dorr LLP’s Deposit Order Account No. 08-0219
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`required by 37 C.F.R. §2.6(a) (17). The Patent and Trademark Off1CC 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,
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`GENPATH PHARMACEUTICALS, INC.
`
`/4&2/[eta
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`Michael J. Bevilacqua
`Reg. No. 31,091
`Barbara A. Barakat
`
`Reg. No. 32,190
`Attorneys for Opposer
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`Hale and Dorr LLP
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`60 State Street
`
`Boston, Massachusetts 02109
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`(617) 526-6154
`December 10, 2003
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`CERTIFICATE OF MAILING UNDER 37 C.F.R.
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`1.8 a
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`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 December 10, 2003.
`
`Ang la E. M. Dy
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`BOSTON l7785l8vl
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`
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`cf
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`Appncang/n¢g15¢.»a..¢/pa.-fies GenPath Pharmaceuticals, Inc., Opposer V.
`Genpat 77 Pharmacogenetics AG, Applicant
`No. (Application, Registration, Opposition, Cancellation)
`
`Mark
`
`.2»
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`In the above matter, the following have been received by the US Patent and Trademark Office on the
`date stamped heneon.
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`C] Specimen(s) (#___j_)
`CI Express Mail Label No.
`Cl Section 8 I D Section 15 Declaration
`C!
`'l}ademark Application wlDrawing (CI t'TU)
`0 Section 9 (Renewal Application)
`El Response to Office Action No.
`dated
`9‘ Opposition; D Cancellation
`CI Amendment to Allege Use
`CI Req. for
`days Ext. of Time to Oppose
`CI Statement of Use
`Cl Transmittal Letter
`Cl Req. for Extension of Time to File Statement of Use
`; check #
`0 Check for S
`D Req. for Correction
`EX Deposit Account Authorization QM
`Cl Notice of Change of Address of Applicant/Registrant
`0 Power of Attorney - Revocation, Appointment, Change of Address for Service
`Cl Recoration Form Cover Sheet with
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`Bother:
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`EU
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`J
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`D Other:
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`Maflingnateg
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`l2[10[03
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`1)o¢ketNo_ 112813-122
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`Initials: BAB
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