IN THE UNITED STATES PATENT AND TRADEMARK Or. .u._
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`LEO Pharma A/S,
`
`: Opposition No. 91171694
`
`2 Appl. No. 76/636,322
`:
`
`Opposer,
`
`\I.
`
`Lev Pharmaceuticals, |nc.,
`
`Applicant.
`
`Opposer's Reply to Applicant’s Response to
`Motion for Leave to Amend Notice of Opposition
`
`During discovery, Applicant has not produced any materials showing use,
`
`and in fact, Applicant produced documents showing that Applicant has never used the
`
`mark “LEV PHARMA” for services for others. Therefore, Opposer seeks leave to
`
`amend the pleadings to add allegations based on the lack of use. Applicant responds to
`
`Opposer’s Motion to Amend with complaints about irrelevant discovery issues and
`
`meritless allegations that Applicant will be prejudiced if it has to show use of its mark.
`
`Such allegations are a smoke screen calculated to divert the Board from the apparent
`
`fraud committed by Applicant in filing its service mark application. Accordingly, Opposer
`
`requests that the Board grant Opposer's Motion to Amend the Notice of Opposition.
`
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`05-15-2008
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`U_9_ Pelenl & Thfllc/TM Mail Rzpl it
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`t?
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`
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`LEO Pharma A/S,
`
`: Opposition No. 91171694
`
`2 Appl. No. 76/636,322
`:
`
`Opposer,
`
`\I.
`
`Lev Pharmaceuticals, |nc.,
`
`Applicant.
`
`Opposer's Reply to Applicant’s Response to
`Motion for Leave to Amend Notice of Opposition
`
`During discovery, Applicant has not produced any materials showing use,
`
`and in fact, Applicant produced documents showing that Applicant has never used the
`
`mark “LEV PHARMA” for services for others. Therefore, Opposer seeks leave to
`
`amend the pleadings to add allegations based on the lack of use. Applicant responds to
`
`Opposer’s Motion to Amend with complaints about irrelevant discovery issues and
`
`meritless allegations that Applicant will be prejudiced if it has to show use of its mark.
`
`Such allegations are a smoke screen calculated to divert the Board from the apparent
`
`fraud committed by Applicant in filing its service mark application. Accordingly, Opposer
`
`requests that the Board grant Opposer's Motion to Amend the Notice of Opposition.
`
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`05-15-2008
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`U_9_ Pelenl & Thfllc/TM Mail Rzpl it
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`t?
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`Opposer’s Motion was Timely
`
`When Opposer originally filed the Notice of Opposition, Opposer was
`
`unaware that Applicant had not actually used the service mark LEV PHARMA in
`
`commerce for the recited services. During discovery Opposer learned that Applicant
`
`could not substantiate legitimate use of the service mark in commerce for the recited
`
`services. Within weeks of learning that Applicant had not been using the mark LEV
`
`PHARMA in commerce, the parties began settlement discussions, and the Board
`
`suspended the proceedings for nearly 9 months while it ruled on a Motion for Protective
`
`Order.
`
`Applicant’s protestation of an inexcusable 14-month delay ignores the fact
`
`that the Opposition was suspended for 9 of those 14 months, and the parties were
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`actively engaged in settlement discussions for 11 of those 14 months.
`
`In other words,
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`far from being unexplained, Applicant knew exactly why Opposer did not seek to amend
`
`the pleadings. Opposer believing or hoping that the opposition could be settled, acted
`
`reasonable and did not spend the time, effort and expense to amend the pleadings
`
`while the Opposition was suspended and also while the parties were in settlement
`
`discussions. There would be no point in amending the pleadings, if the parties could
`
`reach a settlement.
`
`Specifically, Applicant correctly points out that Applicant’s discovery
`responses in late January 2007, implied that it had not used the mark in commerce for
`
`the recited services. Weeks later, the parties began settlement discussions and on
`
`March 6, 2007, Opposer sent a formal settlement offer along with supplemental
`
`
`
`discovery responses. Shortly thereafter, on March 16, 2007, the Board suspended the
`
`proceedings while it ruled on a Motion for Protective Order that Opposer requested.
`
`During the pendency of the Motion for Protective Order, the parties
`
`continued to make several offers and counter-offers in the hope of resolving the dispute.
`
`The last offer made by Opposer was on October 8, 2007. On December 4, 2007, the
`
`Board granted Opposer’s Motion for Protective Order, re-started discovery and re-set
`
`the trial schedule. However, the parties appeared to agree on several terms of
`
`settlement and continued to attempt to reach agreement on the remaining issues. On
`
`January 4, 2008, Applicant made another counter-offer which included several
`
`substantive terms that Opposer had stated were not acceptable. After deliberation and
`
`discussions regarding options, in February 2008, Opposer concluded that continued
`
`settlement discussions were not warranted because Applicant continued to insist on
`
`demands, such as, a worldwide settlement and other unacceptable terms. Shortly
`
`thereafter, Opposer filed a Motion for Summary Judgment based on Applicant’s non—use
`
`of the mark.
`
`In response, Applicant contended that Opposer had not sufficiently pled
`
`non-use and fraud. Opposer then promptly filed the Motion to Amend the Notice of
`
`Opposition.
`
`As can be seen from the foregoing, Opposer did not delay. Opposer
`
`pursued settlement with Applicant during the suspension of the proceedings, and has
`
`sought to amend the pleadings after it became apparent that settlement could not be
`
`reached and discovery has not closed.
`
`After making unfounded claims of delay in its Response, Applicant
`
`rambles on about prejudice and insidious delays because Opposer did not further
`
`
`
`supplement its discovery responses to Applicant’s liking. However, the issue here is not
`
`whether Opposer produced sufficient documents to satisfy Applicant.
`
`If Applicant did
`
`not like Opposer’s document production, Applicant should have filed a motion to
`
`compel.
`
`In fact, this is not the first time Applicant has tried to cloud up matters with
`
`discovery complaints. Applicant tried the same strategy when it opposed Applicant’s
`
`Request for a Protective Order. The Board saw through Applicant’s attempts to cloud
`
`the issues, and in the Board's Order of December 4, 2007, granting Opposer’s Motion,
`
`the Board specifically reminded Applicant that the proper way to deal with a perceived
`
`lack of sufficient document production is to seek a motion to compel. Rather than
`
`heeding the Boards direction, Applicant continues to complain about discovery
`
`responses in every paper as a smoke screen to mask Applicant’s own shortcomings
`
`and fraud on the Patent and Trademark Office.
`
`Opposer also notes that it was Applicant that forced Opposer to seek to
`
`amend the pleadings.
`
`In response to Opposer’s Motion for Summary Judgment,
`
`Applicant chose not to address the issues substantively, but instead claimed that the
`
`issues were not sufficiently plead in the Notice of Opposition. Opposer promptly sought
`
`to amend the pleadings to eliminate Applicant's objections and unveil Applicant’s fraud
`
`in filing its service mark application.
`
`Applicant’s attempts to cloud the issues are also reflected in the authority
`
`it cites to support its arguments. For example, in arguing that Opposer unduly delayed,
`
`Applicant frequently cites Lockheed Martin Corp. v. Network Solutions Inc., 44 U.S.P.Q.
`
`2d 1521 (C.D. Cal. 1997). However, Applicant fails to note that Lockheed filed its
`
`motion to amend after an agreed upon cut-off date, despite the fact that before the cut-
`
`
`
`off date, Lockheed was aware of the information that led to the motion to amend the
`
`pleadings. Further still, Lockheed's amendments to the pleadings would have added
`
`tenuous claims that would have required significant discovery of third parties.
`
`In other
`
`words, the facts in Lockheed are nothing like the facts in the present case. Further, the
`
`other cases cited by Applicant are also factually different from the facts presented here
`
`and are clearly not relevant to the current circumstances.
`
`It is clear that Applicant Would Not be Unduly Prejudiced by Having
`
`to Show Legitimate Use of its Service Mark as Sworn in its Application.
`
`As previously noted, the Board will liberally grant leave to amend the
`
`pleadings unless the amendment would cause undue prejudice to the non-moving party.
`
`See T.B.M.P. §507.02 (2"“ ed. Rev. 2004). Clearly, Applicant would not be unduly
`
`prejudiced by having to show its service mark use from its own records. Applicant does
`
`not need any discovery, because the issues are based on information that is in
`
`Applicant’s custody and/or control.
`
`In fact, it should be easy for Applicant to show that it
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`had been using the mark, as it stated in sworn declarations to the Patent and
`
`Trademark Office. Applicant is merely trying to avoid facing its apparent fraud in filing
`
`its application.
`
`Interestingly, Applicant does not state how it would be prejudiced by the
`
`addition of the allegations of non-use. Instead, Applicant makes the conclusory
`
`statement that it will be unfairly prejudiced, and then goes on a tirade about discovery
`
`complaints. Such a diversion is simply a smoke screen in an attempt to hide the fact
`
`that there is no rational basis for finding that Applicant would be unduly prejudiced by
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`having to establish that it used the mark in commerce as it has sworn.
`
`
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`Finally, even if Applicant were to somehow adequately provide that it
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`needed discovery to show that it has used the mark in commerce, discovery has not
`
`been closed. Specifically, the proceedings were suspended again in February 2008,
`
`before the end of discovery. Accordingly, Applicant simply has no basis to claim undue
`
`prejudice by Opposer adding allegations directed to non-use of the mark by Applicant.
`
`Moreover, there is a great public interest in exposing this type of fraud on the
`
`Trademark Office in instances where an applicant deceives the Office by swearing that
`
`it has used a mark when the applicant has not.
`
`Submission of Registrations Pursuant to 37 C.F.R. 2.122(d)
`
`Pursuant to 37 C.F.R. 2.122(d), attached are two copies of both of
`
`Opposer’s registrations that are cited in the Amended Notice of Opposition. As required
`
`by 37 CFR § 2.122(d)(1), the copies were prepared by the United States Patent and
`
`Trademark Office, and include the current status and title information for the
`
`registrations. Accordingly, Applicant requests that the Board make the attached
`
`registrations of record when entering the Amended Notice of Opposition.
`
`It is well-settled that establishing ownership of an allegedly confusingly
`
`similar registration is sufficient to prove standing. Cunningham v. Laser Golf Corp., 55
`
`USPQ2d 1842, 1844 (Fed. Cir. 2000). Furthermore, these registrations are of record for
`
`all purposes, including summaryjudgment. TBMP §528.05(d). Accordingly, the
`
`registrations should eliminate the complaints regarding standing that Applicant raised in
`
`its Response in an attempt to distract the Board from the relevant issues in Opposer’s
`
`Motion to Amend.
`
`
`
`CONCLUSION
`
`The Board has consistently reiterated that it will liberally grant leave to
`
`amend the pleading. This is particularly true when the discovery period is still open.
`
`Since the additional allegations in the amended pleadings are based on Applicant’s lack
`
`of use of the mark, there is no undue prejudice to Applicant to substantiate use.
`
`Moreover, the Board should support exposing Applicant’s fraud and terminating this
`
`proceeding at an early stage to benefit the Board, the public and Opposer. Accordingly,
`
`Opposer requests that the Board grant Opposer’s Motion to Amend the Notice of
`
`Opposition to support Opposer’s Motion for Summary Judgment.
`
`Respectfully submitted,
`
`Attorneys for Opposer
`LEO Pharma A/S
`
`Date
`
`Zoo
`
`EC?
`
`Dann, Dorfman, Herrell and Skillman, P.C.
`1601 Market Street, Suite 2400
`Philadelphia, PA 19103
`Telephone:
`(215) 563-4100
`Facsimile: (215) 563-4044
`
`
`
`7126414
`
`
`
`
`
`'fl@§,El § Sin3
`UNITED STATES DEPARTMENT OF COMMERCE
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION 1,777,615 IS
`CERTIFIED T0 B-E A TRUE COPY WHICH IS IN FULL FORCE AND
`
`EFFECT WITH NOTATIONS OF ALL STATUTORY ACTIONS TAKEN
`
`THEREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
`
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`United States Patent and Trademark Office
`
`
` May 06,2008
`
`
`
`PATENT AND TRADEMARK OFFICE.
`
`REGISTERED FOR A TERM OF 10 YEARS FROM June 22, 1993
`
`1st RENEWAL FOR A TERM OF 10 YEARS FROM June 22, 2003
`SECTION 8
`'
`
`SAID RECORDS SHOW TITLE TO BE IN:
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`LEO PHARMA A/S
`
`A DENMARK CORPORATION
`
`By Authority of the
`
`_
`Undersecretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`
`
`
`
`Certifying Officer
`
`
`
`» Int. Cl.: -5
`
`Prior U.$'.? Cl.: 18
`
`United States Patent and Trademark Office
`
`Reg. No. 1,777,615
`Registered June 22, 1993 -
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`LEO ~
`
`LEO PHARMACEUTICAL PRODUCTS LTD. Al
`S. (LOVENS KEMISKE FABRIK PRODUK-.
`TIONSAKTIESELSKAB)
`(DENMARK JOINT .
`STOCK COMPANY)
`’
`' NO. 55 INDUSTRIPARKEN
`' DK—2750 BALLERUP, DENMARK’
`
`‘
`
`FOR: PHARMACEUTICAL PREPARATIONS:
`’, NAMELY,‘ ANT!BIOTIC,' ANTIBACTERIAL, DI-
`URETIC,
`.ANTlI-IYPERTENSIVE, VITAMIN.
`MINERAL SUPPLEMENT, HORMONE, ANTI-:‘
`
`INFLAMMATORY, ANALGESIC, ANTICOAGU:
`LANT, ANESTHETIC, AND CYTOSTATIC'
`AGENT PREPARATIONS, IN CLASS 5 (U.S..CL.
`18).‘
`.
`REG.’ NO.
`DENMARK
`OF‘
`OWNER
`VR02.350l985, DATED 8-2-1985,
`EXPIRES
`8-2-1995.
`
`SER. NO. 74-228,851, FILED 12-6-1991.
`
`LAURA SMITH, EXAMINING ATTORNEY
`
`
`
`
`
`
`7126414
`
`
`
`
`
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` THE ATTACHED U;S. TRADEMARK REGISTRATION 1,782,361 IS
`
`CERTIFIED TO BE A TRUE COPY WHICH IS IN FULL FORCE AND
`
`
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Ollice
`
` May 06, 2008
`
`
`
`
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`
`EFFECT WITH NOTATIONS OF ALL STATUTORY ACTIONS TAKEN
`
`TIIEREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
`
`
`
`
`REGISTERED FOR A TERM OF 10 YEARS FROM July 20, 1993
`
`
`
`1st RENEWAL FOR A TERM OF 10 YEARS FROM July 20, 2003
`SEC'I‘ION s
`’
`
`SAID RECORDS snow TITLE TO BE IN:
`
`
`
`up‘:
`
`LEO PHARMA A/S
`
`' A DEMWARK CORPORATION
`
`
`
`
`
`PATENT AND TRADEMARK OFFICE.
`
`
`
`Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office
`
`By Authority of the
`
`
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`Int. C1,: 5
`
`Prior U.S., Cl.: 18
`
`Reg. No. 1,782,361
`United States Patent and Trademark Office Registered July 20,1993
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`
`
`LEO PHARMACEUTICAL PRODUCTS LTD. A/
`s (LOVENS KEMISKE FABRIK monox-
`TIONSAKTIESELSKAB)
`(DENMARK JOINT
`STOCK COMPANY)
`'
`No. 55 INDUSTRIPARKEN
`DK-2750 BALLERUP, DENMARK
`
`FOR: PHARMACEUTICAL PREPARATIONS;
`NAMELY. ANTIBIOTIC. ANTIBACTERIAL. DI-
`URETIC, ANTII-IYPERTENSIVE, VITAMIN,
`MINERAL SUPPLEMENT, HORMONE, ANTI-
`INFLAMMATORY, ANALGESIC, ANTICOAGU-
`
`LANT, ANESTHETIC, AND CYTOSTATIC
`AGENT PREPARATIONS. IN CLASS 5 (U.S. CL.
`18).
`OWNER OF DENMARK REG. NO. 2615-I984.
`DATED 7-20-I984, EXPIRES 7520-1994.
`THE LINING IN THE MARK IS A FEATURE
`OF THE MARK AND IS NOT INTENDED TO
`INDICATE COLOR.
`
`SER. N0. 74—228,850, FILED 12-6-I991.
`
`LAURA SMITH, EXAMINING ATTORNEY
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing Opposer’s Reply to Applicant’s
`Response to Motion for Leave to Amend Notice of Opposition was served on May 13,
`2008, by first class mail, postage prepaid, addressed to
`
`Erica D. Klein, Esq.
`Kramer Levin Naftalis Frankel LLP
`
`1177 Avenue of the Americas
`
`New York, NY 10036
`
`as counsel for Applicant, Lev Pharmaceuticals, Inc.
`
`
`
`Christine Gersbach
`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the
`United States Postal Service as first-class mail in an envelope addressed to
`Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451 on May 13,
`2008.
`
` *1, .-
`1"
`\mm»\\£\
`p .
`Christine biersbach
`
`V
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