TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 76/517,772
`Published in the Official Gazette of January 6, 2004
`Atty. Ref.: 0820312.0904
`. . _ . . _ . . . . . . . . . . . _ _ . _ . . . . . . _ . - _ X
`
`AstraZeneca AB,
`
`Opposer,
`
`-against-
`
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`pp lean '
`
`Blmedaa Inc->
`
`.
`
`3
`'
`_
`'
`'
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ X
`
`.
`.
`Commissioner for Trademarks
`-
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Attn: BOX TTAB FEE
`
`Opposition No.:
`
`EXPRESS MAIL NO: EV 477962553 US
`I hereby certify that this paper or fee is being deposited with the United
`States Postal Service “Express Mail Post Office to Addressee” service
`under 37 C.F.R. § 1.10 on the date indicated below and is addressed to the
`Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-
`
`Date
`
`3513.
`
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`
`P,,med Name
`
`'
`
`JULIO L. SIMMONS
`
`July 6» 2004
`
`NOTICE OF OPPOSITION
`
`Astrazeneca AB, a Swedish corporation, with a place of business located at Vastra
`
`Malarehamnen 9, Sodertalje, Sweden [hereinafter "Opposer"], believes that it will be damaged
`
`by registration of the trademark “DEXIUM”, as shown in Application Serial No. 76/517,772,
`
`filed May 28, 2003, and hereby opposes same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant has filed an application in the United States Patent and Trademark
`
`Office, Serial No. 76/517,772, filed May 28, 2003, for registration of the trademark “DEXIUM”
`
`NY-308541 v1
`
`Mm
`
`o7_o7_2oo4
`
`u.s. patient a. TMOfeITM Mail r-icpt Dt #77
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 76/517,772
`Published in the Official Gazette of January 6, 2004
`Atty. Ref.: 0820312.0904
`. . _ . . _ . . . . . . . . . . . _ _ . _ . . . . . . _ . - _ X
`
`AstraZeneca AB,
`
`Opposer,
`
`-against-
`
`t
`A 1-
`pp lean '
`
`Blmedaa Inc->
`
`.
`
`3
`'
`_
`'
`'
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ X
`
`.
`.
`Commissioner for Trademarks
`-
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Attn: BOX TTAB FEE
`
`Opposition No.:
`
`EXPRESS MAIL NO: EV 477962553 US
`I hereby certify that this paper or fee is being deposited with the United
`States Postal Service “Express Mail Post Office to Addressee” service
`under 37 C.F.R. § 1.10 on the date indicated below and is addressed to the
`Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-
`
`Date
`
`3513.
`
`z
`s‘
`‘gm we
`
`P,,med Name
`
`'
`
`JULIO L. SIMMONS
`
`July 6» 2004
`
`NOTICE OF OPPOSITION
`
`Astrazeneca AB, a Swedish corporation, with a place of business located at Vastra
`
`Malarehamnen 9, Sodertalje, Sweden [hereinafter "Opposer"], believes that it will be damaged
`
`by registration of the trademark “DEXIUM”, as shown in Application Serial No. 76/517,772,
`
`filed May 28, 2003, and hereby opposes same.
`
`As grounds for opposition, it is alleged that:
`
`1.
`
`Applicant has filed an application in the United States Patent and Trademark
`
`Office, Serial No. 76/517,772, filed May 28, 2003, for registration of the trademark “DEXIUM”
`
`NY-308541 v1
`
`Mm
`
`o7_o7_2oo4
`
`u.s. patient a. TMOfeITM Mail r-icpt Dt #77
`
`
`
`Atty.Ref.: 0820312.0904
`Opposition No.:
`
`Mark; mgxmm
`Ser.No. 76/517,772
`
`on the Principal Register in respect of "anti-inflammatory analgesic preparations for veterinary
`
`use" (Int'1. Class 5), on the basis of an allegation of use of said trademark in commerce.
`
`2.
`
`Opposer is a leading producer and distributor of high-quality pharmaceutical
`
`products of many kinds.
`
`3.
`
`Opposer has registered the trademark “NEXIUM” on the Principal Register of the
`
`United States Patent and Trademark Office, Reg. No. 2,483,060, dated August 28, 2001,
`
`in
`
`respect of “pharmaceutical preparations for the treatment of gastrointestinal diseases” (Int’l. Cl.
`
`5). Said registration is valid and subsisting, and opposer hereby gives notice, in accordance with
`
`Trademark Rule 2.122(d)(2), that it will rely on said registration as evidence on its behalf in this
`
`proceeding, and that a status copy thereof showing present title will be introduced into evidence
`
`during opposer’s testimony period.
`
`4.
`
`Opposer has made substantial and widespread use of the trademark “NEXIUM”
`
`in commerce to identify and distinguish the aforementioned pharmaceutical preparations, and
`
`opposer has widely advertised said trademark and goods. Opposer’s use of its mark has been
`
`continuous from a date prior to the alleged date of first use of applicant’s mark until the present
`
`date.
`
`5.
`
`There is no issue of priority since the filing date of applicant's “DEXIUM”
`
`trademark application and its alleged date of first use of said mark are subsequent to the filing
`
`date of Opposer’s “NEXIUM” trademark registration and are subsequent to the dates of first use
`
`of opposer’s mark anywhere and in commerce. Also, there is no issue of priority where an
`
`applicant’s mark is likely to cause confusion, mistake and/or deception with regard to a mark
`
`registered in the Patent and Trademark Office.
`
`NY-308541 vl
`
`
`
`_ At‘ty.Ref.: 0820312.0904
`Opposition No.:
`
`Mark: DEXIUM
`Ser.No. 76/517,772
`
`6.
`
`Opposer's pleaded mark possesses a high degree of inherent 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.
`
`7.
`
`Applicant's alleged trademark “DEXIUM” is confusingly similar to opposer's
`
`pleaded mark in sound, appearance and/or commercial impression.
`
`8.
`
`The purchasers of applicant’s “DEXIUM” goods are likely to believe that opposer
`
`has produced, sponsored or in some other way endorsed applicant’s goods and the use of the
`
`trademark “NEXIUM”.
`
`9.
`
`Applicant’s use and registration of “DEXIUM” as a trademark for pharmaceutical
`
`preparations is likely to cause confusion, or to cause mistake, or to deceive with respect
`
`to
`
`opposer’s trademark “NEXIUM”.
`
`10.
`
`Applicant's alleged trademark is calculated or likely to cause confusion or mistake
`
`or deception of purchasers as to the respective marks of the opposer and the applicant, and also
`
`as to the source of origin or sponsorship of the goods for which such marks are used, or are
`
`intended to be used.
`
`11.
`
`Applicant's alleged trademark is calculated or likely to cause irreparable loss,
`
`injury and damage to opposer's business and to the goodwill thereto appertaining as symbolized
`
`and recognized by its aforementioned trademark “NEXIUM”.
`
`12.
`
`Applicant's alleged trademark is a colorable imitation or misappropriation of
`
`opposer's trademark “NEXIUM”, and will enable applicant to reap where it has not sown by
`
`trading on the goodwill of opposer's business
`
`as
`
`symbolized and recognized by its
`
`aforementioned trademark.
`
`NY-308541 vl
`
`
`
`
`
`Atty.Ref.: 0820312.0904
`Opposition No.:
`
`Mark; DEXIUM
`Ser.No. 76/517,772
`
`13.
`
`As a result of the inherently distinctive nature of opposer’s trademark “NEXIUM”
`
`and the extensive sales and advertising by opposer of pharmaceutical preparations associated
`
`with said trademark, opposer’s mark became famous in commerce prior to the filing date of the
`
`“DEXIUM” trademark application and prior to any use of said mark by the applicant.
`
`14.
`
`The use and registration of applicant’s alleged mark “DEXIUM” will cause
`
`dilution of the distinctive quality of opposer’s famous trademark “NEXIUM”.
`
`In conclusion, opposer, by its undersigned attorneys, prays that
`
`its opposition to
`
`Application Serial No. 76/517,772 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.
`
`A check for $300 in payment of the official filing fee is enclosed herewith. The
`
`Commissioner is authorized to charge our Deposit Account No. 08-0570, for any other fees
`
`required to be paid in connection with this proceeding.
`
`Respectfully submitted,
`
`KIRKPATRICK & LOCKHART LLP
`
` Dated: July 6, 2004
`
`Mark . Peroff
`
`By
`
`Keith E. Danish
`
`599 Lexington Avenue
`New York, NY 10022-6030
`Tel. No.: (212) 536-3900
`
`Attorneys for Opposer
`
`NY-308541 vl
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