Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA15183
`
`Filing date3
`
`09/15/2004
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Pacesetter, Inc. doing business as St. Jude Medical Cardiac Rhythm
`Management Division
`
`09/22/2004
`
`Name
`
`Granted to
`
`D“?
`of previous
`extension
`
`Pacesetter, Inc. doing business as St. Jude Medical Cardiac Rhythm
`Management
`15900 Valley View Court
`
`Address
`
`Sylmar, CA 91342
`UNITED STATES
`
`Relationship to
`party who filed The name of the opposer field has an 80 character limit and Division
`Extension of
`did not fit in the name of the opposer field.
`
`time to oppose
`
`Steven M. Mitchell
`
`Attorney
`information
`
`Pacesetter, Inc. doing business as St. Jude Medical Cardiac Rhythm
`Management Division
`15900 Valley View Court
`Sylmar, CA 91342
`UNITED STATES
`
`smeltzer@sj m. com Phone: 8 1 8-493 -2170
`
`Applicant Information
`
`
`
`ESTTA Tracking number: ESTTA15183
`
`Filing date3
`
`09/15/2004
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated
`application.
`
`Opposer Information
`
`Pacesetter, Inc. doing business as St. Jude Medical Cardiac Rhythm
`Management Division
`
`09/22/2004
`
`Name
`
`Granted to
`
`D“?
`of previous
`extension
`
`Pacesetter, Inc. doing business as St. Jude Medical Cardiac Rhythm
`Management
`15900 Valley View Court
`
`Address
`
`Sylmar, CA 91342
`UNITED STATES
`
`Relationship to
`party who filed The name of the opposer field has an 80 character limit and Division
`Extension of
`did not fit in the name of the opposer field.
`
`time to oppose
`
`Steven M. Mitchell
`
`Attorney
`information
`
`Pacesetter, Inc. doing business as St. Jude Medical Cardiac Rhythm
`Management Division
`15900 Valley View Court
`Sylmar, CA 91342
`UNITED STATES
`
`smeltzer@sj m. com Phone: 8 1 8-493 -2170
`
`Applicant Information
`
`
`
`Application No 76535840
`
`P“b(':;:‘i°“
`
`405/25/2004
`
`Opposition
`Filing Date
`
`09/15/2004
`
`Opposition
`Period Ends
`
`§
`109/22/2004
`
`Applicant
`
`Cardiac Pacemakers, Inc.
`
`Goods! Services Affected by Opposition
`
`Class 010.
`
`All goods and sevices in the class are opposed, namely: Implantable cardiac rhythm
`
`management devices capable of sensing heart activity and providing pacing and
`defibrillating therapy as needed
`
`Opposition pending against 76536437 and Opposition pending against 76535842
`
`Attachments
`
`Notice of Opp Statement 76535840 Pacer+.pdf( 3 pages )
`Exhibit A - Inside Baltimore.pdf ( 1 page )
`
`Signature
`
`fsteven m. mitchellf
`
`Name
`
`Steven M. Mitchell
`
`Date
`
`09/15/2004
`
`
`
`I IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re the Matter of Application Serial No.
`76/535,840
`
`Published i11 tl1e OFFICIAL GAZETTE on
`
`March 25, 2004
`
`PACESETTER, INC. doing business as
`ST. JUDE MEDICAL CARDIAC
`
`RHYTHM MANAGEMENT DIVISION
`
`Opposer
`V. _
`
`CARDIAC PACEMAKERS, INC.
`Applicant
`
`M_l\../\./\../\./\../\_/\../\../\)\_/\-../\4'
`
`Opposition No.: Unknown (Unassigned)
`
`BOX TTAB
`FEE
`
`Commissioner for Trademarks
`
`_
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`NOTICE OF OPPOSITION
`
`PACESETTTER, INC., doing business as ST. JUDE MEDICAL CARDIAC RHYTHM
`MANAGEMENT DIVISION, a corporation organized and existing under the laws of the State of
`Delaware, believes that it will be damaged by registration of the_ mark shown in Serial No.
`76/535,840 in Class 10 (medical apparatus) and hereby opposes the same.
`
`As grounds of opposition, it is alleged that:
`
`1.
`
`Opposer develops, manufactures and distributes cardiovascular medical devices for
`the global cardiac rhythm management, cardiac surgery and cardiology and vascular
`access therapy areas.
`
`
`
`
`
`Applicant seeks to register PACER+ as a trademark “for implantable cardiac rhythm
`management devices capable of sensing heart activity and providing pacing and
`defibrillating therapy as needed”.
`
`Opposer and others in the industry use variations on the term PACER for cardiac
`rhythm management devices.
`
`The term PACER and variations, including the term PACER+, are generic terms in
`the medical technology industry used in connection with cardiac rhythm management
`devices.
`'
`
`As a generic term andfor a variation on a generic term, PACER+ is not registrable
`under the Lanham Act.
`
`In the alternative, PACER+, as a variation on a generic term, is a merely descriptive
`term in the medical industry when applied to and used in connection with cardiac
`rhythm management devices, and PACER+ has not acquired secondary meaning or
`become distinctive of the goods identified in the involved application.
`
`The term PACER has been adopted by the medical community as a generic term, as
`shown on the following article:
`'
`
`'DKs
`Device
`
`Insde Baltimore
`
`Baltimore
`News
`
`Article
`
`Paer, Rjects Other
`
`debaltimor
`
`e.com/ne
`
`ws/health;
`line 13
`
`Copy of the foregoing article is attached hereto as Exhibit A.
`
`If Applicant is permitted to use and register the term PACER+, as specified in the
`application herein opposed, confusion in trade resulting in damage and injury to
`Opposer would be caused and would result by reason of the use of a generic or
`merely descriptive term as a mark.
`
`If Applicant is granted the registration herein opposed, it would thereby obtain at least
`a prima facie exclusive right to the use of its mark. Such registration would be a
`source of damage and injury to Opposer by, among other things, interfering with
`Opposer’s right to use variations on the term PACER for cardiac rhythm management
`devices.
`
`
`
`
`
`WI-IEREFORE, Opposer prays that the application Serial No. 76/535,840 be rejected, and
`that the mark therein sought for the goods herein specified in International Class 10 be denied and
`refused.
`
`Respectfully submitted,
`
`Dated: September 15, 2004
`
`_ By
`
`/Steven M. Mitchell/
`
`Steven M. Mitchell
`
`Registration No. 31,857
`Attorney for Opposer
`
`
`
`Insidebalti1nore.com
`
`Page 1 of 1
`
`HEALTH NEWS
`
`August 13, 2004
`
`FDA OKs Pacer, Rejects Other Device
`A government advisory panel voted to approve a pacemaker for people with congestive heart
`failure, but rejected a different device that included a defibrillator.
`
`
`
`
`The panel of outside experts voted 7—O in favor of approving Medtronic Corp.'s Insync heart
`pacing device for people suffering congestive heart failure.
`
`In recommending approval, the committee urged some labeling changes and said approval should
`be conditional on continued follow—up of participants in the clinical trials.
`
`Earlier in the day the group concluded 6—to~2 that Contak CD, made by Guidant Corp., didn't meet
`the necessary effectiveness standards.
`
`The FDA is not required to follow the recommendations of its advisory panels, but it most often
`does so.
`
`The Guidant machine combines a defibrillator with an electrical device that helps regulate the
`beating of the heart. It's designed to assist people with failing hearts and can detect unusual
`rhythms and stimulate the heart with electrical pulses to restore proper beating. The company had‘
`sought approval for use of Contak CD in patients with congestive heart failure.
`
`Some heart pacers with defibrillators are on the market, such as that recently implanted in Vice
`President Dick Cheney, but his device does not have the type of heart regulator that the Guidant
`machine includes.
`
`Earlier this year, Guidant drew criticism from the FDA for claims it made about its device in a
`press release. Later, however, the FDA said an agency spokeswoman went too far in that
`criticism.
`
`More Health News...
`
`Copyright 2001 The Associated Press.
`All Rights Reserved.
`
`
`E?
`ii ©2001 The E.W. Scripps Co.
`
`_,_.1;ttp;flwww;iasideba1ti1no1'e.9onl/newsK11§a1tt1/fda:pegerQ71 1 .s11t1n1 .
`
`fl
`
`_
`
`8/ 1 3/2004
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