Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA76983
`ESTTA Tracking number:
`04/19/2006
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`BIOTEST AG
`04/26/2006
`
`Waldfriedstrasse 4
`Frankfurt/Main, 60 528
`GERMANY
`
`Attorney
`information
`
`Joseph E. Maenner
`RatnerPrestia
`P.O. Box 980
`Valley Forge, PA 19482-0980
`UNITED STATES
`TMVF@ratnerprestia.com Phone:(610) 407-0700
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78449930
`04/19/2006
`
`Publication date
`Opposition
`Period Ends
`
`12/27/2005
`04/26/2006
`
`BioVest International, Inc.
`8500 Evergreen Boulevard NW
`Minneapolis, MN 55433
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and sevices in the class are opposed, namely: Biologic product compositions, namely
`proteins, antibodies, vaccine compositions, cell based products and growth factors, for use in the
`cure, mitigation, treatment and prevention of disease
`
`Related
`Proceedings
`
`Opposition of Serial No. 78/449,977 and Opposition of Serial No. 78/449,968
`
`Attachments
`
`SSM-910 NotOfOpp.pdf ( 7 pages )(311797 bytes )
`
`Signature
`Name
`Date
`
`/Joseph E. Maenner/
`Joseph E. Maenner
`04/19/2006
`
`

`
`SSM-910
`
`-
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Biotest AG
`(A German Corporation)
`Waldfriedstrasse 4
`
`60528 Frankfurt/Main
`Federal Republic of Germany
`Opposer
`
`v.
`
`:
`:
`:
`
`:
`:
`:
`
`3
`
`Trademark Registration
`Application Serial No. 78/449,930
`
`Filed: July 13, 2004
`
`Mark: BIOVEST
`
`Published in the Official Gazette: Dec. 27, 2005
`
`BioVest International, Inc.
`8500 Evergreen Blvd, NW
`Minneapolis, MN 55433
`
`:
`: Opposition No.
`'
`
`Applicant
`
`NOTICE OF OPPOSITION
`
`In the matter of the application for registration of the mark BIOVEST for
`
`“Biologic product compositions, namely proteins, antibodies, vaccine compositions, cell
`
`based products and growth factors, for use in the cure, mitigation, treatment and
`
`prevention of disease,” in International Class 005 in Serial No. 78/449,930 filed July 13,
`
`2004 by Biovest International, Inc. (hereinafter ‘‘Applicant’’) and published for opposition on
`
`Page TM 405 of the Official Gazette dated December 27, 2005, Biotest AG (hereinafter
`
`“Opposer”) believes that it would be damaged by such registration, and hereby opposes the
`
`registration of Applicant's mark.
`
`The grounds for the opposition are as follows:
`
`1.
`
`Opposer is a German corporation. Opposer has a place of business at
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`Waldfriedstrasse 4, 60528 Frankfurt/Main, Federal Republic of Germany.
`
`2.
`
`Opposer is in the business of developing and distributing a wide
`
`variety of pharmaceutical products including, among other things, reagents, sera,
`
`antibodies, and antigens, as well as diagnostic products including those for the treatment of
`
`infections.
`
`3.
`
`Opposer uses BIOTEST (and design), in both a word format and a
`
`composite logo format (including the word BIOTEST and a design), as its trade name and
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`

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`SSM-910
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`TRADEMARK
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`as a trademark/service mark in connection with its goods and services, as an indicator of
`
`-the source of its goods and services.
`
`4.
`
`Opposer is the owner of U.S. Registration No. 2,961,650, filed on
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`February 21, 2002 and registered on June 14, 2005, and claiming dates of first use in July
`
`2, 1977, for the mark BIOTEST (and design) for:
`
`a) International Class 001: in-vitro diagnostic preparations for scientific
`
`purposes; test kits comprising reagents, sera, monoclonal and polyclonal antibodies, natural
`
`and recombinant antigens, and microtiter plates, and reagents for scientific and research
`
`purposes; systems for determining resistance for scientific purposes comprising nutrient
`
`media, cell culture media, and dried media; buffers, salts, solvents for research and
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`scientific purposes; test kits comprising buffers, salts, solvents and reagents for industrial
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`and scientific purposes for hygiene monitoring on surfaces, in air and liquids, and systems
`for identification of germs for scientific and research purposes comprising nutrient media,
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`buffers and salts; DNA probes for tissue typing, germ or pathogen identification and blood
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`group determination;
`
`b) International Class 005: pharmaceutical and veterinary preparations and
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`products for treating immune insufficiencies, especially autoimmune insufficiencies, cancer,
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`virus infections, conditions of virus reactivation, anemia, protein anemia, immune globulin
`
`anemia, blood coagulation disorders, and deficiencies in blood coagulation factors, or for
`
`preventing rejections in transplantation medicine; food for babies; medical plasters;
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`materials for wound, burn or surgical dressing; pharmaceutical preparations for hematology,
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`oncology, transplantation medicine, nephrology, pediatrics, for intensive care medicine
`
`namely blood products, immune globulin preparations, globulin preparations, coagulation
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`factors; medicines for use in transplantation procedures and for influencing blood
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`coagulation; immune globulin preparations for treating immune insufficiencies, especially
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`autoimmune insufficiencies, cancer, virus infections, conditions of virus reactivation,
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`anemia, protein anemia, immune globulin anemia, blood coagulation disorders, and
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`deficiencies in blood coagulation factors, or for preventing rejections in transplantation
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`medicine; serum preparations, and serum proteins and solutions comprising the same for
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`medical use; human albumin for medical use; blood products for medical use, namely blood
`
`plasma; blood substitutes; plasma substitutes and plasma expanders; vaccines, especially
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`on basis of immune globulines; blood coagulation preparations, especially coagulation
`
`factors for clinical and medical laboratory use; antibiotics; medicines for treating the central
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`2
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`SSM-910
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`TRADEMARK
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`nervous system; medicines for treating heart and circulation diseases; medicines for
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`treating the respiratory system; medicines for urological treatment; medicines for treatment
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`of digestive organs and corresponding/adjoining glands; hormones; vitamins;
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`immunosuppressive, anti-inflammatory, and antiallergic medicines; dermatological,
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`ophtalmological and otological medicines; in—vivo and in-vitro diagnostic preparations for
`clinical or medical purposes and clinical or medical laboratory use; antibodies, namely
`I
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`mono- and polyclonal antibodies for use in in—vivo clinical and medical diagnostics and for
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`patient therapy; in vitro diagnostic agents for medical purposes, especially for determination
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`of proteins, such as antibodies, monoclonal antibodies or immune globulins, or for
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`determinations of nucleic acids, for blood group diagnostics and antibody determination,
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`tissue typing, cell diagnostics, microbiological diagnostics, and determination of toxic
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`compounds; test kits comprising ready to use nutrient media for microorganisms, especially
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`bacteria, and reagents for medical and laboratory uses, especially for blood group
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`diagnostics, antibody determination, tissue typing, cell diagnostics, microbiological
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`diagnostics, determination of toxic substances; test kits comprising monoclonal and
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`polyclonal antibodies and natural and recombinant antigenes, for tests on serological and
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`immune genetic basis, and reagents therefore for human and veterinary medical laboratory
`
`purposes; immunoassays such as ELISA's, consisting of reagents, sera, monoclonal and
`polyclonal antibodies, natural and recombinant antigens, and microtiter plates, and reagents
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`therefore for human and veterinary medical laboratory purposes; diagnostic preparations for
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`human or veterinary medical uses in the treatment of infections; media for bacteriological
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`cultures, namely ready-to—use culture media and nutrient media and ingredients thereof;
`
`c) International Class 009: plates and multiwell microtiter plates for cell
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`typing, blood and virus diagnostics; blood warmers; apparatus namely incubator, cell sorter,
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`cell counter, shaker, pipettes, plates and vials for cell recovery and for handling of cells,
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`including disposable materials; measuring and surveying apparatus namely sample holder,
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`reader, photometer, centrifuge, shaker, incubator, washer, particle counter and air sampler
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`for removal, determination and quantification of microorganisms in air, liquids and on
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`surfaces; measuring and surveying kits/systems and agar strips for determination and
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`quantification of substances, namely blood sugar, blood and respiratory alcohol, toxic
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`substances, oxygen and blood constituents such as hemoglobin; kits/systems comprising
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`agar strips, air samplers, particle counters, anemometers and agar strips for determination
`
`of air borne germs and for sanitary and hygiene monitoring, laboratory robot, for automated
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`processing of microtiter plate based assays like ELISAs, DNA hybridization assays and cell
`
`agglutination tests; kits/systems comprising agar strips, air samplers, particle counters,
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`3
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`anemometers and agar strips for determination of air borne germs and for determination of
`
`particle size and number in air; kits/systems comprising air samplers, sample holders and
`
`reader for clean room air monitoring; all the foregoing for use in research and/or non-
`
`medical laboratories; and
`
`d) International class 010: medical, apparatus for clinical or diagnostic use,
`
`namely apparatus for serological blood typing, blood grouping or serological detection of
`
`blood groups; bottles and containers specially designated for storage and conservation of
`
`solutions for transfusions and infusions; transfusion and infusion apparatus and devices,‘;
`
`namely containers, syringes, catheters, transdermal delivery systems comprising blood
`
`warmers and plasma for clinical use; apparatus for cell recovery and for handling of cells,
`
`including disposable materials namely plates, spatula, vials, pipette tips and beakers for
`
`clinical or diagnostic use; measuring and surveying apparatus for clinical and diagnostic use
`
`namely sample holder, reader, photometer, dipsticks, teststrips, and agar strips for
`
`determination and quantification of substances, especially blood sugar, blood and
`
`respiratory alcohol, toxic substances, oxygen and blood constituents such as hemoglobin;
`
`plates and multiwell microtiter plates for cell typing, blood and virus diagnostics for clinical
`
`and diagnostic use; all of the foregoing for medical, clinical, diagnostic and/or surgical use
`
`(hereinafter “Opposer’s Registration”).
`
`5.
`
`Opposer also holds International Registration No. 372,700, filed on
`
`May 23, 1969 and registered on September 21, 1970 (in Germany, Austria, Bosnia and
`
`Herzegovina, Belgium, the Netherlands, Luxemburg, Czech Republic, Algeria, France,
`
`Croatia, Italy, Lichtenstein, Morocco, Portugal, Romania, Slovenia, Slovakia, Vietnam,=and
`
`Serbia & Montenegro) for BIOTEST for:
`
`a) International Class 001: chemicals for science, namely reactive intended
`
`for chemical-medical goals, including the diagnostic goals; chemicals for industry, namely
`
`stabilizing for diagnostic and pharmaceutical preparations, culture media for cellular fabrics;
`
`b) International Class 003: preparations of washing being used for cleaning of
`
`medical instruments;
`
`c) International Class 005: reagents intended for diagnostic goals;
`
`pharmaceutical products, namely blood, components of blood (in particular érythrocytes,
`
`serums, plasma), preparations replacing blood and preparations replacing the components
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`

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`TRADEMARK
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`of blood, solutions of filling of volume, nutritive solutions and applicable albumin solutions
`
`per infusion, solutions of perfusion;
`
`d) International Class 007: machines and apparatus to crimp the containers
`
`for blood, preparations for replacing blood and the serums;
`
`e) International Class 009: scientific apparatus, namely laboratory apparatus
`
`intended for the chemical-medical examinations; and
`
`f) International Class 010: medical apparatus and instruments being used for
`
`removal, the application and the separation of solutions of transformation and infusion;
`
`bottles and containers being used for the conservation of solutions of transfusion and
`
`infusion.
`
`6.
`
`In the course of Opposer’s ordinary business, as a regular expense
`
`pursuant to ongoing marketing efforts, Opposer spends approximately $400,000 per year
`
`advertising its goods for distribution to customers.
`
`7.
`
`Opposer advertises its goods bearing the mark BIOTEST (and design)
`
`in scientific journals and at technical conventions, to audiences that may include Applicant's
`
`customers.
`
`8.
`
`Opposer’s average annual sales of goods bearing the mark BIOTEST
`
`(and design) since 2002 have totaled approximately $10.50 Million.
`
`9.
`
`Consumers have come to associate the mark BIOTEST (and design)
`
`on such goods as being associated with Opposer.
`
`10.
`
`Upon information and belief, Applicant is a Delaware corporation
`
`having a place of business at 8500 Evergreen Boulevard NW, Minneapolis, Minnesota
`
`55433.
`
`11.
`
`Applicant is the listed owner of U.S. Intent—to-Use Application Serial
`
`No. 78/449,930 (hereinafter “the ‘930 Application”) for the mark BIOVEST filed July 13,
`
`2004 for: “Biologic product compositions, namely proteins, antibodies, vaccine
`
`compositions, cell based products and growth factors, for use in the cure, mitigation,
`
`treatment and prevention of disease” in International Class 005.
`
`

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`SSM-910
`
`TRADEMARK
`
`12.
`
`Applicant filed the ‘930 Application subsequent to the registration date
`
`of Opposer’s Registration and has not alleged actual use.
`
`13.
`
`Opposer’s first date of use in the United States of July 1977 in
`
`connection with the goods named in its registration precedes Applicant's application for the
`
`BIOVEST mark by manyyears.
`
`14.
`
`Opposer’s mark BIOTEST (and design) is used with respect to, among
`
`other things, immune therapies.
`
`15.
`
`Upon information and belief, Applicant intends to use the mark
`
`BIOVEST with respect to immune therapies.
`
`16.
`
`Applicant's mark BIOVEST is nearly identical to Opposer’s mark
`
`BIOTEST (and design) in appearance, with the difference being only one letter (“V” versus
`
`“T”, respectively) in the middle of each word.
`
`17.
`
`Applicant's mark BIOVEST is nearly phonetically identical to Opposer’s
`
`mark BIOTEST (and design), with the difference being only the “V” sound versus the “T”
`
`sound, respectively, in the middle of each word.
`
`18.
`
`Because Opposer’s mark BIOTEST (and design) is nearly identical to
`
`Applicant's mark BIOVEST, both in sound as well as in appearance, registration of the mark
`
`BIOVEST in connection with the goods listed in the ‘930 Application is likely to cause
`
`confusion or is likely to deceive purchasers as to the source of such goods.
`
`19.
`
`Because of the similarity between the goods listed in the ‘930
`
`Application and the goods produced and sold by Opposer, registration of the mark BIOVEST
`
`in connection with the goods listed in the ‘930 Application is likely to cause confusion or is
`
`likely to deceive purchasers as to the source of such goods.
`
`20.
`
`If Applicant is permitted to register the mark BIOVEST and, thereby,
`
`obtain the prima facie exclusive right to use in commerce the mark BIOVEST on goods that
`
`are the same or similar to the goods sold by Opposer in connection with its BIOTEST (and
`design) mark, confusion in the trade is likely to result, to the detriment of Opposer, because
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`purchasers are likely to confusedly assume that the goods of Applicant sold under the mark
`
`BIOVEST emanate from Opposer.
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`21.
`
`If Applicant is permitted to register the mark BIOVEST Opposer will
`
`not have the ability to ensure the quality of Applicant's goods, risking irreparable damage to
`
`Opposer’s reputation and goodwill and/or tarnishment to its mark BIOTEST (and design).
`
`WHEREFORE, Opposer requests that the ‘930 Application for the mark
`
`BIOVEST be rejected and that the registration of the mark BIOVEST be refused.
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`A duplicate copy of this Notice of Opposition and the fee required in Rule
`
`2.6(a)(17) are enclosed herewith.
`
`Respectfully submitted,
`
` Benjami
`
`aenner
`Joseph E
`Attorneys for Opposer
`
`RatnerPrestia
`Suite 301
`
`1235 Westlakes Drive, Berwyn
`P.O. Box 980
`
`Valley Forge, PA. 19482
`(610) 407-0700
`
`The Commissioner is hereby authorized
`at any time to charge any fees required,
`or credit any overpayment, to Deposit
`Account No. 18-0350.
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that this correspondence is being electronically filed to
`the Trademark Trial and Appeal Board of the United States Patent and Trademark Office on the
`date shown below.