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Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA54145
`
`Filing d9-t33
`
`11/18/2005
`
`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
`
`Name
`
`Bayer Consumer Care LLC
`
`Granted to
`
`D3“?
`of previous
`extension
`
`1 1/20/2005
`
`36 Columbia Road
`
`Address
`
`Morristown, NJ 07962
`UNITED STATES
`
`Todd E. Adler
`
`Heller Ehrman LLP
`
`333 Bush Street
`
`Attorney
`information
`
`San Francisco, CA 94104-2878
`UNITED STATES
`
`sf-trademark@hellerehrman. com, todd. adler@hellerehrman. com
`Phone:415-772-6000
`
`Applicant Information
`
`Application No 78210836
`
`P“b::;‘i°“
`
`05/24/2005
`
`Opposition
`Filing Date
`
`Applicant
`
`11/18/2005
`
`Opposition
`Period Ends
`
`§
`
`11/20/2005
`
`Boots Healthcare USA, Inc.
`Corporation Trust Center 1209 Orange Street
`
`

`
`Wilmington, DE 19801 1 196
`UNITED STATES
`
`Goodsl Services Affected by Opposition
`
`Class 005.
`
`All goods and sevices in the class are opposed, namely: Pharmaceutical preparations for
`the treatment and/or prevention of nasal congestion, sore throat, asthma, allergies,
`constipation, diarrhea, acne, dermatitis, psoriasis, fungal infection, cold sores, anxiety,
`sleep disturbance, ear Wax and to assist in the cessation of smoking
`
`Signature
`
`ITodd Adler/
`
`Name
`
`Todd E. Adler
`
`Date
`
`11/18/2005
`
`

`
`IN THE UNITED STATES FATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Ap lication Serial No. 78/2l0,836
`Published in the Oficial Gazette on May 24, 2005
`Trademark: ELEVA
`
`
`
`Boots Healthcare USA, Inc.,
`
`
`
`
` Applicant.
`
`NOTICE OF OPPOSITION
`
`~ Bayer Consumer Care LLC (“Opposer”), a Delaware limited liability company
`
`having a principal place of business at 36 Columbia Road, Morristown, NJ 07962,
`
`believes it will be damaged by registration of the mark ELBVA shown in Serial No.
`
`78/210,836 in International Class 5 and hereby opposes the same.
`
`As grounds for opposition, Opposer alleges:
`
`l.
`
`Opposer has obtained all necessary extensions of time in which to oppose
`
`the challenged trademark following publication.
`
`2.
`
`Boots Healthcare USA, lnc. (“Applicant”), has filed an application to
`
`register the mark ELEVA for “pharmaceutical preparations for the treatment and/or
`
`prevention of nasal congestion, sore throat, asthma, allergies, constipation, diarrhea, acne,
`
`dermatitis, psoriasis, fungal infection, cold sores, anxiety, sleep disturbance, ear Wax and
`
`Bayer Consumer Care LLC,
`
`Opposer
`
`V.
`
`

`
`to assist in the cessation of smoking” in International Class 5, as evidenced by the
`
`publication of such mark in the Oficial Gazette on May 24, 2005.
`
`3.
`
`Applicant is, upon information and belief, a Delaware corporation, having a
`
`place of business at 1209 Orange Street, Wilmington, Delaware 19801.
`
`4.
`
`Oppose]: has, since at least as early as April 25, 1988, used the mark
`
`ALEVE in connection with pharmaceutical preparations. Opposer is the owner of, among
`
`others, an incontestable registration for the trademark ALEVE (United States Registration
`
`No. 1,536,042, registered April 25, 1989) for “anti-inflammatory, analgesic, and
`
`antipyretic pharmaceutical preparations” in class 5.
`
`5.
`
`There is no issue as to priority. Upon information and belief, Applicant has
`
`not used the mark ELEVA on its goods prior to February 4, 2003, as evidenced by
`
`Applicant’s Intent-to—Use application filed on February 4, 2003. The date of registration
`
`and use of the ALEVE mark is thus well before the filing date of Applicant’s ELEVA
`
`application, and Opposer’s ALEVE mark therefore has priority over Applicant’s ELEVA
`
`application.
`
`6.
`
`Opposer has sold its goods under the mark ALEVE throughout the United
`
`States and has developed exceedingly Valuable goodwill with respect to the mark
`
`ALEVE.
`
`7.
`
`By virtue of its efforts and the expenditure of considerable sums for
`
`promotional and advertising activities and by virtue of the excellence of its goods,
`
`

`
`Opposer has gained for its mark ALEVE a most vatuable reputation and has created, in
`
`the minds of the buying public, an exciusive association between ALEVE and its goods.
`
`8.
`
`The trademark proposed for registration by Applicant, namely, ELEVA, is
`
`likely to be confused with Opposer’s mark, ALEVE, because the marks are similar in
`
`appearance, sound and overali commercial impression.
`
`9.
`
`Applicant seeks to register ELEVA as a mark in connection with goods that
`
`are substantiallysimilar to the goods of Opposer and such use so nearly resembles
`
`Opposer’s use as to be likely to cause confusion, to cause mistake or to deceive within the
`
`meaning of 15 U.S.C. § lO52(d).
`
`10.
`
`IfAppIicar1t is permitted to use and register the ELEVA mark for its goods
`
`as specified in the opposed application, confusion in trade resulting in damage and injury
`
`to Opposer would be caused and would result by reason of the fact that Applicant’s mark
`
`is confusingly similar to Opposer’s mark. Persons familiar with Opposer’s ALEVE mark
`
`would be likely to buy Applicant’s ELEVA goods as goods offered and sold by Opposer.
`
`Furthermore, any defect, objection, or fault found with Applicant’s goods marketed under
`
`its ELEVA mark would be likely to reflect upon and seriously injure the reputation that
`
`Opposer has established for its goods offered under its ALEVE mark.
`
`11.
`
`The mark ALE‘/E is distinctive and famous throughout the United States,
`
`and has become closely associated with the goods of Opposer. The ALEVE mark became
`
`famous prior to the filing of ApplicaI1t’s intent-to-use application for ELEVA.
`
`

`
`12.
`
`The trademark proposed for registration by Applicant, namely ELEVA, is
`
`likely to dilute and actually dilutes Opposer’s ALEVE mark and reduces the capacity of
`
`the famous ALEVE mark to identify the goods. of Opposer.
`
`13.
`
`If Applicant is granted the registration herein opposed, such registration
`
`would be a source of damage and injury to Opposer.
`
`WHEREFORE, Oppose}: prays that the opposition be sustained and that the
`
`application be refused for registration.
`
`Respeetfuiiy submitted,
`HELLER EHRMAN LLP
`
`Dated: November 18, 2005
`
`By:
`
`
`
` \._
`
`
`0 man
`et M.
`Todd E. Adler
`Attorneys for Bayer Consumer Care LLC
`333 Bush Street
`San Francisco, CA 94104
`415-772-6000
`
`Please refer to Our File No.: 241720039

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