I hereby certify that on the date specified below, this correspondence is being deposited with
`the United States Postal Service as first class mail in an envelope addressed to Box
`TTAB/ Fee, Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3513.
`
`TTAB
`
`Date=
`
`Timothy F.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`OPPOSITION NO.
`
`Docket No. 4502600001
`
`) ) ) ) ) )
`
`%
`
`LIGAND PHARMACEUTICALS
`
`INCORPORATED,
`
`Opposer,
`
`V.
`
`munmmmmmmmnnumummum
`
`08-19-2004
`
`U-S. P-«ms momrm Muff ncptm. #22
`
`ENGELHARD CORPORATION )
`
`) ) )
`
`Applicant.
`_
`
`Box TTAB /FEE
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`NOTICE OF QPPOSITION
`
`Opposer, LIGAND PHARIVIACEUTICALS INCORPORATED,
`
`(hereinafter
`
`“Opposer” or “Ligand”), which has its principal place of business at 10275 Science Center
`
`Drive, San Diego, California 92121, believes that it would be damaged by registration of the
`
`mark, LIGANDNET, shown in the United States Trademark Application Serial No.
`
`filed by ENGELHARD CORPORATION (hereinafter ‘‘Applicant’’) and
`76/550,039,
`08/20/2004 ZELIFTD1 00000016 76550039
`300.00 09
`
`01 FF.‘.:6l0E
`
`SAN r9s343.1
`
`

`
`
`
`published for opposition on June 15, 2004, and therefore, Opposer opposes that registration
`
`on behalf of itself. The application may be summarized as follows:
`
`In re Trademark Application:
`
`76550039
`
`Applicant:
`
`ENGELHARD CORPORATION
`
`Mark:
`
`For:
`
`LIGANDNET
`
`Catalyst immobilization agent
`
`Published:
`
`June 15, 2004
`
`A copy of the TARR status printout for the application is attached to this Notice of
`
`Opposition as Exhibit A..
`
`The grounds for this Opposition are as follows:
`
`1. Ligand is a pharmaceulical company that discovers, develops, and markets
`
`innovative small molecule drugs to address critical, unmet medical needs.
`
`2. Commencing well prior to the September 22, 2003 filing date of Applicant’s
`
`application, Opposer has been using and is now using the mark, LIGAND in connection
`
`with its pharmaceutical products for treatment for cancer and pre-cancerous conditions.
`
`Specifically, Opposer uses the mark LIGAND in association with its small-molecule
`
`pharmaceutical products,
`
`including AVINZA® (morphine
`
`sulfate
`
`extended-release
`
`capsules), Panretin® (alitretinoin) gel 0.1%, Targreti.n® (bexarotene) capsules 75 mg,
`
`Targretin® (bexarotene) gel 1%, and ONTAK® (denileukin diftitox).
`
`3. Opposer filed an Use—based application for the mark, LIGAND, on December
`
`21, 1994.
`
`SAN 1'96}-13.!
`
`

`
`
`
`4. Opposer’s application for the mark LIGAND matured into U.S. Registration No.
`
`1,974,730 on May 21, 1996. A copy of the TARR status printout for this registration is
`
`attached to this Notice of Opposition as Exhibit B.
`
`5. Opposer’s mark LIGAND symbolizes extensive good will and consumer
`
`recognition that has been developed by Opposer through substantial sales of goods under its
`
`mark and through considerable advertising and promotion in the United States. This good
`
`will and consumer recognition are valuable assets of Opposer.
`
`6. Opposer’s mark LIGAND is famous.
`
`7. The Lanham Act protects against confusion of products as well as against
`
`confusion as to the source of products.
`
`8. The marks LIGAND and LIGANDNET are similar in appearance and sound.
`
`The addition of the word “NET” does not distinguish the term sufficiently so as to
`
`distinguish the two marks in the minds of ordinary consumers.
`
`9. Applicant is also making use of the LIGANDNET mark for a product in the
`
`pharmaceutical
`
`industry, namely, as
`
`a catalyst
`
`immobilization agent
`
`for use in the
`
`pharmaceutical industry. Opposer’s products sold in connection with the LIGAND mark
`
`are sold in the same channels of trade as the product associated with the LIGANDNET
`
`mark for which Applicant seeks registration. A copy of pages from Applicanfs website
`regarding LIGANDNET is attached as Exhibit C. Thus, the marks are confusingly similar
`
`as used in the same channels of trade.
`
`10. The Opposers use LIGAND.NET as a domain name in association with their
`
`LIGAND mark. Thus the registration of LIGANDNET is confusingly similar to Opposer’s
`
`LIGAND.NET mark, which is protectable under the LIGAND registration.
`
`SAN i96343.|
`
`

`
`
`
`11. The mark LIGANDNET is not registrable as it is merely descriptive. According
`
`to the Applicant’s website, the product is used to immobilize or “net” a molecule containing
`
`a ligand. The website also describes how LIGANDNET can be used to immobilize a
`
`catalyst and then exchange ligands on the catalyst molecule.
`
`A copy of pages from
`
`Applicant’s website regarding bIGANDNET is attached as Exhibit C.
`
`WHEREFORE, Opposer prays
`
`that
`
`this Opposition be sustained and the
`
`application be denied and the mark refused registration.
`
`I Opposer herewith submits this Notice of Opposition in duplicate along with the
`
`requisite filing fee in the amount of $300. Please charge any additional fees or credit any
`
`excess to our Deposit Account No. 50-2613.
`
`SAN /96343.1
`
`

`
`
`
`Qorrespondence Address:
`
`Please direct all communications to:
`
`Diana L. Bush, Attorney
`PAUL, HASTINGS, JANOFSKY 8: WALKER, LLP
`P O Box 919092
`
`San Diego, CA 92191-9092
`
`Dated this
`
`day of August, 2004.
`
`Respectfully submitted,
`
`PAUL, HASTINGS, JANOFSKY & WALKER, LLP
`
`mt/Z»:/r\ 4\
`
`M 5 E:
`
`Diana L. Bush
`
`Paul Hastings janofsky & Walker LLP
`3579 Valley Centre Drive
`San Diego, CA 92130
`(858) 720—2500(Phone)
`(858) 720-2555 (Fax)
`Attorneys for Opposer
`Ligand Pharmaceuticals Incorporated
`
`Enclosures:
`Return Postcard
`
`Check for $300
`
`Exhibit(s) A, B & C
`Copy of Notice of Opposition
`
`SAN I963-43.1
`
`

`
` 3
`
`_; Latest Status Info
`
`Page 1 of 2
`
`Thank you for your request. Here are the latest results from the §grye;
`
`This page was generated by the TARR system on 2004-08-12 17:46:48 ET
`
`Serial Number: 76550039
`
`Registration Number: (NOT AVAILABLE)
`
`Mark (words only): LIGANDNET
`
`Standard Character claim: No
`
`Current Status: A request for an extension of time to file an opposition has been filed at the Trademark
`Trial and Appeal Board.
`
`Date of Status: 2004-07-14
`
`Filing Date: 2003-09-22
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 106
`
`Attorney Assigned:
`WELLS CHRISTOPHER WILLIAM Employee Location
`
`Current Location: 657 —Pre-Publication Final Review
`
`Date In Location: 2004-08-06
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. ENGELHARD CORPORATION
`
`Address:
`
`ENGELHARD CORPORATION
`101 Wood Avenue
`
`Iselin, NJ 08830
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Delaware
`
`GOODS ANDIOR SERVICES
`
`International Class: 001
`
`http://tarnuspto. govlserv1et/tarr?regser=-seri a1&entry=765 50039
`
`8/ 1 2/2004
`
`

`
`
`
`‘Latest Status Info
`
`Page 2 of 2
`
`Catalyst immobilization agent
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`Basis: 1(b)
`
`(NOT AVAILABLE)
`
`(NOT AVAILABLE)
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`PROSECUTION HISTORY
`
`2004-07-14 — Extension of time to oppose - Filed
`
`2004-06-15 - Published for opposition
`
`2004-05-26 - Notice of publication
`
`2004-04-02 - Approved for Pub - Principal Register (Initial exam)
`
`2004-03-29 - Case file assigned to examining attorney
`
`
`
`CONTACT INFORMATION
`
`Correspondent
`RAYMOND F KELLER (Attorney of record)
`
`RAYMOND F KELLER
`
`ENGELHARD CORP
`101 WOOD AVE
`ISELIN NJ 08830
`
`Phone Number: 732 205 5937
`Fax Number: 732 205 6727
`
`
`
`http://tarnuspto.gov/servlet/tarr?regser=seria1&entry=76550039
`
`8/12/2004
`
`

`
`
`
`'4)
`
`Latest Status Info
`
`Page 1 of 3
`
`Thank you for your request. Here are the latest results from theT
`
`This page was generated by the TARR system on 2004-08-12 18:44:18 ET
`
`Serial Number: 74613239
`
`Registration Number: 1974730
`
`Mark (words only): LIGAND
`
`Standard Character claim: No
`
`Current Status: Section 8 and 15 affidavits have been accepted and acknowledged.
`
`Date of Status: 2002-07-15
`
`Filing Date: 1994-12-21
`
`Transformed into a National Application: No
`
`Registration Date: 1996-05-21
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 105
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact
`the Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 900 -Warehouse (Newington)
`
`Date In Location: 2002-07-16
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. LIGAND PHARMACEUTICALS INC.
`
`Address:
`
`LIGAND PHARMACEUTICALS INC.
`9393 Town Centre Drive
`A
`
`San Diego, CA 92121
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Delaware
`
`GOODS AND/OR SERVICES
`
`International Class: 005
`
`pharmaceutical preparations for the prevention and treatment of cancerous and pre-cancerous conditions,
`
`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=7461323 9
`
`8/ 1 2/2004
`
`

`
`
`
`Latest Status Info
`;
`
`Page 2 of 3
`
`diseases of the eye and skin—related diseases
`First Use Date: 1993-12-13
`
`First Use in Commerce Date: 1993-12-13
`
`Basis: 1(a)
`
`
`
`ADDITIONAL INFORMATION
`
`(NOT AVAILABLE)
`
`MADRID PROTOCOL INFORMATION
`
`
`(NOT AVAILABLE)
`
`PROSECUTION HISTORY
`
`2004-06-01 - PAPER RECEIVED
`
`2003-06-25 - TEAS Change of Correspondence Received
`
`2003-05-02 - PAPER RECEIVED
`
`2002-07-15 - Section 8 (6-year) accepted & Section 15 acknowledged
`
`2002-05-21 - Section 8 (6-year) and Section 15 Filed
`
`2002-05-21 - PAPER RECEIVED
`
`1996-05-21 - Registered - Principal Register
`
`1996-02-27 - Published for opposition
`
`1996-01-26 - Notice of publication
`
`1995-11-13 - Approved for Pub - Principal Register (Initial exam)
`
`1995-07-24 - Correspondence Received In Law Office
`
`1995-05-01 — Non-final action mailed
`
`1995-04-27 - Case file assigned to examining attorney
`
`CONTACT INFORMATION
`
`Correspondent
`F.T. Alexandra Mahaney (Attorney of record)
`
`Jessica R. Wolff, Esq.
`
`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=74613239
`
`8/12/2004
`
`

`
`
`
`EN¢FEl.ll4IIIlI
`
`LigandNetTM
`
`Catalyst immobilization agent
`
`Product information
`
`Immobilization of homogeneous
`symmetric and asymmetric
`hydrogenation catalysts is made quick
`and easy with LigandNet“" --
`Engelhard’s second generation
`immobilization technology. Precious
`metal precursors, such as
`Rh(C0D)2BF4, are immobilized for
`ease of filtration from reaction
`
`mixtures. The tethered product can
`also be reused — improving cost
`effectiveness.
`
`Through a simple ligand exchange
`reaction, an immobilized precursor
`such as Rh(C0D)2BF.. provides users
`with the ability to screen a wide
`assortment of ligands in an
`immobilized state. The precursor
`Rh(COD)2BF4, when modified with
`(S)-BINAP, (R,R)-MeDuPHOS, (R,R)—
`DiPAMP or (S)—DIOP, has been
`applied successfully in chiral
`hydrogenation reactions.
`
`
`
`Improved chiral hydrogenatlons
`Chiral hydrogenations can benefit
`with the use of Engelhard LigandNet
`Rh(C0D)2BF.., as demonstrated in the
`following case study.
`
`Immobilized Rh(R,R)-MeDuPl-IOS,
`prepared from LigandNet
`Rh(C0D);BF4 and (R,R)—MeDuPHOS
`was used in the chiral hydrogenation
`of dimethyl itaconate. The
`hydrogenation was performed using r‘-
`propanol as a solvent, 50 psig. H2
`pressure at room temperature, and 0.]
`mol% of catalyst. Conversion and
`enantiomeric excess (e.e.) were
`determined after [0 and 20 minutes.
`
`The catalyst was re-used three times
`with no loss in activity and
`enantioselectivity (e.e. = 97%) - per
`graph.
`
`The activity and selectivity of the
`immobilized Rh(R,R)—MeDuPHOS
`catalyst is very comparable to its
`homogeneous analogue. The
`immobilized catalyst can be separated
`from the product mixture by simple
`filtration and can be re-used in a
`
`subsequent reaction.
`
`Engelhard supplies a wide variety of
`immobilized homogeneous precursors
`for enantioselective reactions. We
`have assembled a team dedicated to
`
`
`
`responding to the needs of the
`pharmaceuticals and fine chemicals
`industry. Our network of technical
`professionals would welcome the
`opportunity to discuss customized
`solutions for your specific application.
`
`About us
`
`Engelhard Corporation is a surface and
`materials science company that develops
`technologies to improve customers’
`products and processes. A Fortune 500
`company, Engelhard is a world-leading
`provider of technologies for
`environmental, process, appearance and
`performance applications.
`
`For additional information, please visit
`our web site at
`
`www.engelhard.com/pharma or contact
`us at information@engelhard.com.
`
`Engelhard seeks to present reliable information concerning the composition, properties and use of its
`products, services and processes. However, all literature, advice and other material conceming any
`product, service or process or its selection or use is provided AT NO CHARGE AND WITH NO
`WARRANTY OF ANY KIND. All sales are subject to Engelharcls Terms and Conditions of Sale.
`which are reproduced on the reverse side of each invoice. ALL WARRANTIES OF
`MERCHANTABILITY AND FITNESS OF PURPOSE ARE DISCLAUVIED. Remedies for any
`breach and Engelhar-d's liability, including that for patent infringement. are limited as provided in
`Engelhard's Terrns and Conditions of Sale. Engelhard is not liable for consequential, incidental. or
`special damages. Nothing should be construed as a recommendation or inducement to infringe any
`patent. No assumption should be made that all safety or environmental protection measures are
`indicated, or that other measurs may not be required.
`EC-7877 IOIU3
`
`Engelhard corporation
`101 Wood Avenue
`
`lselin, NJ 08830-0770
`Telephone: 732 205-7006
`Fax: 732 321-1598
`
`Web site: www.enge|hard.com
`
`© 2003 Engelhard Corporation
`
`

`
`
`
`ll
`
`Engelhard - LigandNetT“ catalyst immobilization agent Overview
`
`Page 1 of l
`
`I-'lUI'n'ELll4IRD
`change tho nature oi things.
`
`Technologies we create
`
`Markeis we serve
`
`
`
`LigandNet"" catalyst
`immobilization agent
`
`I Process Technologies
`
`
`I LigandNet"‘ catalyst
`immobilization agent
`Market Applications
`
`Overview Supporting documents
`
`LigandNet““ catalyst immobilization agent
`
`t
`n
`
`N m t I
`Ll
`mm" in
`io:
`
`Immobilization of homogeneous symmetric and asymmetric
`hydrogenation catalysts is made quick and easy with
`LigandNet'" --Engeihard's second generation immobilization
`technology. Precious metal precursors, such as Rh_(COD)
`ZBF4, are immobilized for ease of filtration from reaction mixtures. Engelhard LigandNet
`can also be reused - improving cost effectiveness.
`
`Apovmi
`ic ll atal
`
`08/ 12/2004
`En9s|_t1a[d_Pi§L
`EQwder_CQate
`Flxiil
`NI
`
`Qatmas
`
`QMD Flrfit Egg
`
`Through a simple ligand exchange reaction, an immobilized precursor such as Rh(COD)
`2BF4 -- provides users with the ability to screen a wide assortment of ligands in an
`Immobilized state. The precursor Rh(COD)2BF4, when modified with (S)-BINAP, (R,R)—
`MeDuPHOS, (R,R)-DIPAMP or (S)-DIOP, has been applied successfully in chiral
`hydrogenation reactions.
`
`Engelhard supplies a wide variety of immobilized homogeneous precursors for
`enantioseiectlve reactions. we have assembled a team dedicated to responding to the
`needs of the pharmaceuticals and fine chemicals industry. Our network of technical
`professionals would welcome the opportunity to discuss customized solutions for your
`specific application.
`
`For more information, contact Erogess Technologies Sgales
`
`Prini;-fijgndly vgfiign
`
`iomclixiflixiametiflossamlfiomaqbs
`
`0 Engeihard Cc
`
`hitp://www.engeIhard.com/db/template/engelhardxml?TechnologyClassID=0&MarketID=...
`
`8/12/2004