jg BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`lllllllllllllllll|||ll|||||ll|||||ll||l|||||||||||
`
`01-20-2006
`
`Mark: KEPLAT
`
`Ser. No. 78/511,494
`
`Opposition No.
`
`) )
`
`)
`)
`)
`)
`)
`
`) )
`
`)
`
`UCB, S.A.
`
`Opposer,
`
`v.
`
`HISAMITSU PHARMACEUTICAL
`CO., INC.
`
`Apphcam
`
`NOTICE OF OPPOSITION
`
`”‘
`
`UCB, S.A. (“Opposer”), a Belgium Corporation located and doing business at Allee de la
`
`Recherche, 60 Brussels, Belgium, hereby opposes registration of Trademark Application Serial
`
`No. 78/511,494 for the mark KEPLAT covering “medicated transdermal patches, plasters, pads,
`
`cataplasms and creams for relief of aches of rheumatoid arthritis, and the aches and pains of
`
`muscles, joints and tendons; anti-inflammatory and analgesic agents; other pharmaceuticals in
`
`the form of patches, plasters, pads, cataplasms and creams for use in the treatment of lumbago,
`
`namely muscular and fascial lumbago, spondylosis deforrnans discopathy, and sprain of lumbar
`
`spine, osteoarthritis, humeroscapular periartebritis,
`
`tendinitis,
`
`tendo—vaginitis, peritendinitis,
`
`humeral epicondylitis, tennis elbow, myalgia and post-traumatic swelling and pain; antiphlogistic
`
`and analgesic spray for the temporary relief of minor muscular aches and pains; antiphlogistic
`
`and analgesic gel. for the temporary relief of minor muscular aches and pains” filed on November
`
`4, 2004 in the name of Hisamitsu Pharmaceutical Co., Inc., a Japanese company located and
`
`doing business at 408, Tashirodaikan-machi, Tosu-shi, Saga 841-0017 Japan (“Applicant”), and
`
`01/87/2006 HPHHHI
`
`00000139 501129
`
`76511494
`
`01 FC:6-102
`
`300.00 011
`
`WRFMAIN l2420540.2
`
`
`
`N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`lllllllllllllllll|||ll|||||ll|||||ll||l|||||||||||
`
`01-20-2006
`
`Mark: KEPLAT
`
`Ser. No. 78/511,494
`
`Opposition No.
`
`) )
`
`)
`)
`)
`)
`)
`
`) )
`
`)
`
`UCB, S.A.
`
`Opposer,
`
`v.
`
`HISAMITSU PHARMACEUTICAL
`CO., INC.
`
`Apphcam
`
`NOTICE OF OPPOSITION
`
`”‘
`
`UCB, S.A. (“Opposer”), a Belgium Corporation located and doing business at Allee de la
`
`Recherche, 60 Brussels, Belgium, hereby opposes registration of Trademark Application Serial
`
`No. 78/511,494 for the mark KEPLAT covering “medicated transdermal patches, plasters, pads,
`
`cataplasms and creams for relief of aches of rheumatoid arthritis, and the aches and pains of
`
`muscles, joints and tendons; anti-inflammatory and analgesic agents; other pharmaceuticals in
`
`the form of patches, plasters, pads, cataplasms and creams for use in the treatment of lumbago,
`
`namely muscular and fascial lumbago, spondylosis deforrnans discopathy, and sprain of lumbar
`
`spine, osteoarthritis, humeroscapular periartebritis,
`
`tendinitis,
`
`tendo—vaginitis, peritendinitis,
`
`humeral epicondylitis, tennis elbow, myalgia and post-traumatic swelling and pain; antiphlogistic
`
`and analgesic spray for the temporary relief of minor muscular aches and pains; antiphlogistic
`
`and analgesic gel. for the temporary relief of minor muscular aches and pains” filed on November
`
`4, 2004 in the name of Hisamitsu Pharmaceutical Co., Inc., a Japanese company located and
`
`doing business at 408, Tashirodaikan-machi, Tosu-shi, Saga 841-0017 Japan (“Applicant”), and
`
`01/87/2006 HPHHHI
`
`00000139 501129
`
`76511494
`
`01 FC:6-102
`
`300.00 011
`
`WRFMAIN l2420540.2
`
`
`
`published for purposes of opposition in the Official Gazette of the US. Patent and Trademark
`
`Office dated October 18, 2005, at page TM 477. Opposer will be damaged should the opposed
`
`application mature to registration. Opposer alleges the following grounds for opposition:
`
`1.
`
`Opposer is a global biopharmaceutical company with its headquarters in Brussels,
`
`Belgium. Opposer has subsidiaries and affiliated companies worldwide, and in the United States
`
`operates through its wholly-owned subsidiary, UCB Pharma, Inc.
`
`2.
`
`Opposer was founded in 1928 and,
`
`though it
`
`initially focused on industrial
`
`chemicals, the company also included a small pharmaceutical division based around Meurice
`
`Laboratories.
`
`In the early 1950s, Opposer set up a research center where new medicines such as
`
`ATARAX® were developed. Successful sales enabled the pharmaceutical division to expand,
`
`and led to the discovery of another important compound, called piracetam. This was marketed in
`
`the 1970s as NOOTROPIL® and used to treat memory and balance problems. Opposer built on
`
`its success by developing the well-known blockbuster antihistamine ZYRTEC® in the late
`
`l980’s.
`
`3.
`
`In late 1999, Opposer gained final approval from the United States Food and Drug
`
`Administration (“FDA”) to market its breakthrough drug KEPPRA®. KEPPRA is the brand
`
`name for an antiepileptic medication that is approved as add-on therapy in the treatment of adults
`
`and children from 4 years of age with partial onset seizures — one of the most common forms of
`
`epilepsy.
`
`It is approved in over 50 countries. KEPPRA antiepileptic medications are available
`
`in the United States in both tablet and liquid form.
`
`4.
`
`On April 19, 1999, Opposer filed an application for the mark KEPPRA in the
`
`United States Patent and Trademark Office, Ser. No. 75/686,195,
`
`for “pharmaceutical
`
`preparations for ‘the treatment of central nervous system diseases”. The application conferred to
`
`WRFMAIN 124205402
`
`_ 2 _
`
`
`
`Opposer a constructive right of priority, nationwide in scope, in and to the KEPPRA mark as of
`
`April 19, 1999 under Section 7(c) of the Trademark Act. The application matured to registration
`
`on May 29, 2001, Reg. No. 2,454,519. Opposer is the owner of all right, title and interest in and
`
`to the KEPPRA registration.
`
`5.
`
`On February 23, 2000, Opposer filed an application for the mark KEPPRA
`
`LEVETIRACETAM & Design in the United States Patent and Trademark Office, Ser. No.
`
`75/926,002,
`
`for “pharmaceutical preparations for the treatment of central nervous system
`
`diseases”. The application conferred to Opposer a constructive right of priority, nationwide in
`
`scope, in and to the KEPPRA LEVETIRACETAM mark as of February 23, 2000 under Section
`
`7(c) of the Trademark Act. The application matured to registration on June 17, 2003, Reg. No.
`
`2,726,258. Opposer is the owner of all right,
`
`title and interest
`
`in and to the KEPPRA
`
`LEVETIRACETAM registration.
`
`6.
`
`Opposer will submit current status and title copies, prepared by the Patent and
`
`Trademark Office, of its pleaded registrations at
`
`the appropriate time in this proceeding.
`
`Photocopies of Opposer’s registrations are attached hereto as Exhibit A and B and incorporated
`
`herein by reference. Opposer’s KEPPRA and KEPPRA LEVETIRACETAM Marks are
`
`collectively referred to herein as “Opposer’s KEPPRA Marks”.
`
`7.
`
`In April 2000, Opposer commenced use in commerce of Opposer’s KEPPRA
`
`Marks in the United States as trademarks for an anti—epilepsy drug. Opposer has used the names
`
`continuously and without interruption in commerce in connection with such goods to the present
`
`day.
`
`8.
`
`Based on the extensive, exclusive and continued use of Opposer’s KEPPRA
`
`Marks by Opposer, Opposer’s KEPPRA Marks have come to be recognized among the
`
`WRFMAIN 124205402
`
`_ 3 -
`
`m.
`
`l
`
`,
`
`
`
`consuming public as a designator of origin with respect to the anti-epilepsy drugs offered by
`
`Opposer.
`
`9.
`
`The constructive and actual dates of first use of Opposer’s KEPPRA Marks
`
`precede the filing date of the opposed application.
`
`10.
`
`By reason of the extensive, exclusive and continuous use of Opposer’s KEPPRA
`
`Marks, the marks have become distinctive of Opposer’s goods and serve to identify Opposer as
`
`the source of those goods.
`
`11.
`
`On information and belief, Applicant has adopted, or intends to adopt,
`
`the
`
`designation KEPLAT for use in connection with pharmaceutical preparations for the treatment of
`
`respiratory disorders, as set forth in the opposed application.
`
`12.
`
`The goods identified in the opposed application are identical to or are otherwise
`
`closely related to Opposer’s goods provided under the registrations for Opposer’s KEPPRA
`
`Marks.
`
`13.
`
`The proposed designation KEPLAT so resembles Opposer’s KEPPRA Marks in
`
`terms of appearance, sound, connotation and commercial
`
`impression, as to be likely, when
`
`applied to Applic:ant’s goods, to cause confusion or mistake, or to deceive.
`
`14.
`
`The likelihood of confusion between the proposed designation KEPLAT and
`
`Opposer’s KEPPRA Marks is critical because the consequences of confusion in the field of
`
`pharmaceuticals can be potentially life threatening to patients, and it is common practice for
`
`physicians to prescribe medications for non-approved uses, known as “off-label” uses.
`
`WRFMAIN l2420540.2
`
`
`
`15.
`
`Any defect, objection or fault found with any product sold under the mark
`
`KEPLAT would injure the exceedingly valuable reputation and goodwill that Opposer has
`
`established for products sold under the KEPPRA trademark.
`
`16.
`
`The proposed designation KEPLAT is confusingly similar to Opposer’s KEPPRA
`
`Marks so that registration of KEPLAT would be inconsistent with and damaging to Opposer’s
`
`exclusive rights in and to its registered marks in connection with the goods with which they are
`
`used and registered.
`
`17.
`
`Opposer will be damaged by registration of the trademark KEPLAT because such
`
`registration, if granted, will support and assist Applicant in the confusing and misleading use of
`
`Applicant’s mark. sought to be registered, and, in addition, will give color of exclusive statutory
`
`rights to Applicant in violation and derogation of the prior and superior rights of Opposer.
`
`WHEREFORE, Opposer prays that its opposition be sustained and that the opposed
`
`application be denied registration.
`
`Opposer hereby authorizes the filing fee of THREE HUNDRED DOLLARS ($300.00)
`
`and any additional charges necessary to institute this proceeding to be debited from the deposit
`
`account of Wiley Rein & Fielding, Account No. 501129.
`
`WRFMAIN l2420540.2
`
`
`
`This opposition is being filed by the undersigned attorneys at law, duly authorized to
`
`represent Opposer in this proceeding, pursuant to Trademark Rule 2.101(b).
`
`Respectfully submitted,
`
`UCB, S.A.
`
`
`
`Wi ey Rein & Fielding LLP
`1776 K Street, N.W.
`Washington, D.C. 20006
`(202) 719-7000
`
`Jeffrey R. Filipek
`Wenderoth, Lind & Ponack, L.L.P.
`
`2033 K Street, N.W. Suite 800
`Washington, D.C. 20006
`(202) 721-8200
`
`Attorneys for Opposer,
`UCB, S.A.
`
`Dated: January 2.0, 2006
`
`WRFMAIN 124205402
`
`
`
`EXHIBIT A
`
`
`
`Int. Cl.: 5
`
`Prior U.S. CIs.: 6, I8, 44, 46, SI and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,454,5l9
`Registered May 29, mm
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`KEPPRA
`
`UCB. SOCIETE ANONYME (BELGIUM COR-
`PQRATION)
`ALLEE DE LA RECHERCHE, 60
`BRUXELLES. BELGIUM
`
`PRIORITY CLAIMED UNDER SEC. 44(D) ON
`BENELUX APPLICATION NO. 932783. FILED 2-I8--
`I999. REG. NO. 0644890. DATED 2-I8-I999. EXPIRES
`2-|3.2oo9_
`
`FOR: PHARMACEUTICAL PREPARATIONS FOR
`THE TREATMENT OF CENTRAL NERVOUS SYS-
`TEM DISEASES. IN CLASS 5 (U.S. CLS. 6. 18.44.46. 5|
`AND 52).
`
`SER. NO. 75-686,l95. FILED 4-I9-I999.
`
`HANNO RITTNER, EXAMINING ATTORNEY
`
`
`
`EXHIBIT B
`
`
`
`
`
`Int. Cl.: 5
`
`Prior U.S. CIs.: 6, 18, 44, 46, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,726,258
`Registered June 17, 2003
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`UCB, socnana ANONYME (BELGIUM COR-
`PORATION)
`ALLEE DE LA RECHERCHE
`60, BRUXELLES, BELGIUM
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "LEVETIRACETAM", APART
`FROM THE MARK AS SHOWN.
`
`FOR: PHARMACEUTICAL PREPARATIONS FOR
`THE TREATMENT OF CENTRAL NERVOUS SYS-
`TEM DISEASES, IN CIASS S (U.S. CLS. 6, 18, 44, 46, 51
`AND 52).
`
`OWNER OF BENELUX REG. NO. 0664968, DATED
`9-2-2000, EXPIRES 9-2-2010.
`
`THE
`THE DRAWING IS LINED FOR
`VERTICAL LINING IS FOR THE COLOR RED. THE
`CROSSED LINING IS FOR ORANGE. THE HOR-
`IZONTAL LINING IS FOR BLUE.
`
`SER. NO. 75—926,002, FILED 2-23-2000.
`
`MICHAEL SOUDERS, EXAMINING ATTORNEY
`I
`
`..x..
`
`A 3 7
`
`‘-1"\
`
`
`
`EXHIBIT A
`
`
`
`Int. Cl.: 5
`
`Prior U.Sl. Cls:.: 6, I8, 44, 46, 51 and 52
`
`Reg. No. 2,454,5I9
`United States Patent and Trademark Office Registered M:Iy29.200l
`
`
`
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`KEPPRA
`
`UCB. socIETE ANONYME (BELGIUM COR-
`PORATION)
`ALLEE DE LA RECHERCHE. 60
`BRUXELLESI. BELGIUM
`
`PRIORITY CLAIMED UNDER sec. 44(D) ON
`BENELUX APPLICATION NO. 932733. FILED 2-I8--
`I999. REG. No. 0644890. DATED 2-I8-I999. EXPIRES
`2.13.2009
`
`FOR: PHARMACEUTICAL PREPARATIONS FOR
`THE TREATMENT or CENTRAL NERVOUS SYS-
`TEM DISEASES. IN CLASS 5 (us. CLS. 6. 18,44. 4c». 5|
`AND 52).
`
`,
`,
`55*‘ N0" 7-‘”"“"'°5~ "LED 4"°"°99'
`
`HANNO RITTNER, ExAMININc; ATTORNEY
`
` ,-,¢fl&)3~j_..,..1~.l
`
`11...».,
`
`
`
`EXHIBIT B
`
`
`
`
`
`Int. Cl.: 5
`
`Prior U.S. Cls.: 6, 13, 44, 46, 51 and 52
`_
`Umted States Patent and Trademark Office
`
`Reg. No. 2,726,258
`Registered June 17, 2003
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`UCB, socmre ANONYME (BELGIUM con-
`PORATION)
`ALLEE DE LA RECHERCHE
`60, BRUXELLES, BELGIUM
`
`FOR: PHARMACEUTICAL PREPARATIONS FOR
`THE TREATMENT OF CENTRAL NERVOUS SYS-
`TEM DISEASES, IN CLASS 5 (U.S. CLS. 6, 18, 44, 46, 51
`AND 52).
`
`OWNER OF BENELUX REG. NO. 0664968, DATED
`9-2-2000, EXPIRES 9-2-2010.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "LEVETIRACETAM", APART
`FROM THE MARK AS SHOWN.
`
`THE DRAWING IS LINED FOR COLOR. THE
`VERTICAL LINING IS FOR THE COLOR RED. THE
`CROSSED LINING IS FOR ORANGE. THE HOR-
`IZONTAL LINING IS FOR BLUE.
`
`SER. NO. 75-926,002, FILED 2-23-2000.
`
`MICHAEL SOUDERS, EXAMINING ATTORNEY
`)9
`
`:1.
`I
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