Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA91683
`ESTTA Tracking number:
`07/26/2006
`
`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
`Entity
`Address
`
`Aradigm Corporation
`Corporation
`3929 Eden Point Way
`Hayward, CA 94545
`UNITED STATES
`
`Citizenship
`
`California
`
`Attorney
`information
`
`Michelle J. Hirth
`Sheppard, Mullin, Richter & Hampton, LLP
`Embarcardero Four, 17th Floor
`San Francisco, CA 94111
`UNITED STATES
`mhirth@sheppardmullin.com Phone:(415) 434-9100
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78571945
`07/26/2006
`
`Publication date
`Opposition
`Period Ends
`
`06/27/2006
`07/27/2006
`
`Adhesives Research, Inc.
`P.O. Box 100
`Glen Rock, PA 17327
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and sevices in the class are opposed, namely: Pharmaceutical preparations, namely, a
`drug delivery system comprising oral dissolvable or erodable films, containing pharmaceutically-
`active ingredients for the release of a wide variety of therapeutic agents
`
`Attachments
`
`Notice of Opposition.PDF ( 25 pages )(957342 bytes )
`
`Signature
`Name
`Date
`
`/mjh/
`Michelle J. Hirth
`07/26/2006
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`Seria1N0.: 7'8/571,945
`
`Filed:
`
`February 22,2005
`
`Published:
`
`June 27, 2006
`
`Trademark:
`
`ARK
`
`)
`
`) )
`
`) )
`
`) )
`
`)
`)
`)
`)
`)
`
`ARADIGM CORPORATION,
`
`Opposer,
`
`V.
`
`ADHESIVES RESEARCH, INC,
`
`,,
`
`Appiicant.
`
`Hon. Asst. Cornrn. For Trademarks
`
`United States Patent and Trademark Office
`PO. Box 1451
`
`Alexandria, VA 223134451
`
`NOTICE OF OPPOSITION
`
`Aradigm Corporation ("Aradigm") believes that it witl be damaged by the
`
`registration of the mark ARX, which is the subject of Application Serial No. 78/571 ,945, and
`
`hereby opposes registration of the same under the provisions of Section 13 of the
`
`Trademark Act of July 5, 1946, as amended, 15 U.S.C. § E063, and Trademark Rule
`
`2.101, 37 CPR. § 2.101.
`
`Application Serial No. 78/571,945 for the mark ARK was filed in the name
`
`of Adhesives Research, Inc. on February 22, 2005 and was published for opposition in
`
`the Oficial Gazette on June 27, 2006, with the identification of goods for the application
`
`reading "pharmaceutical preparations, namely, a drug delivery system comprising oral
`
`dissolvable or erodable filrns, containing pharmaceuticaily-active ingredients for the
`
`release of a wide variety of therapeutic agents."
`
`W02AWEST:FHM\40004I943.1
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`As grounds for the opposition, Opposer alleges that:
`
`1.
`
`Opposer Aradigm is a California corporation having its principal
`
`place of business at 3929 Eden Point Way, Hayward, California 94545.
`
`2.
`
`Aradigm manufactures and sells, in interstate commerce,
`
`pharmaceutical preparations, drug delivery devices for aerosolized delivery of medicines
`
`and medical apparatuses under the trademarks AERX, AERX (Stylized), AERX
`
`ESSENCE, AERX STRIP and AERX ULTRA.
`
`3.
`
`Aradigm is the owner of record of Registration No. 1,946,528,
`
`Application Serial No. 74/ 578,372 filed on September 26, 1994, for AERX (Stylized) for
`
`use in connection with "medical apparatus, namely mechanical breathing pump for use in
`
`surgery" in international Class 10. A copy of the aforementioned registration is
`
`appended to this Notice of Opposition as Exhibit A. The foregoing registration is
`
`currently Valid and subsisting. Aradigrn has continuously offered and sold mechanical
`
`breathing pumps for use in surgery under the AERX (Stylized) mark since at least as
`
`early as September 21, 1994.
`
`4.
`
`Aradigm is the owner of record of Registration No. 2,279,572,
`
`Application Serial No. 74/607,941 filed on December 7, 1994, for AERX for use in
`
`connection with "pharmaceutical preparations, namely analgesics, hormones, pain killers;
`
`pharmaceutical preparations for treatment of respiratory conditions, diabetes and for use
`
`in endocrine therapy" in International Class 5. A copy of the aforementioned registration
`
`is appended to this Notice of Opposition as Exhibit B. The foregoing registration is
`
`currently valid and subsisting. Aradigrn has continuously offered and sold
`
`pharmaceutical preparations under the AERX mark since at least as early as June 4, 1999.
`
`5.
`
`Aradigm is the owner of record of Registration No. 2,283,455,
`
`Application Serial No. 74/607,946 filed on December 7, 1994, for AERX for use in
`
`connection with "drug delivery devices for aerosolized delivery of medicines" in
`
`International Class 10. A copy of the aforementioned registration is appended to this
`
`Notice of Opposition as Exhibit C. The foregoing registration is currently valid and
`
`W02-WEST:F§-lM'\40G04l943.l
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`subsisting. Aradigrn has continuously offered and sold such drug delivery devices under
`
`the AERX mark since at least as early as June 4, 1999.
`
`6.
`
`Aradigni is the owner of record of Registration No. 2,832,609,
`
`Application Serial No. 76/359,830 filed on January 17, 2002, for AERX ESSENCE for
`
`use in connection with "pharmaceutical preparations, namely analgesics, hormones,
`
`psychotropics, anti—infect.ives, anti—inflammatories, and anti-cancer agents for use in the
`
`treatment of disease Via application to the lungs" in International Class 5 and "medical
`
`apparatus, namely, mechanically-based devices used to deliver drugs and biologics to the
`
`lungs" in International Class 10. A copy of the aforementioned registration is appended
`
`to this Notice of Opposition as Exhibit D. The foregoing registration is currently Valid
`
`and subsisting. Aradigm has continuously offered and sold pharmaceutical preparations
`
`and medical apparatuses under the AERX ESSENCE mark since at least as early as
`
`September 2002.
`
`7.
`
`Aracligrn is the owner of record of Registration No. 2,854,425,
`
`Application Serial No. 76/360,201 filed on January 17, 2002, for AERX STRIP for use in
`
`connection with "pharmaceutical preparations, namely analgesics, hormones,
`
`psychotropics, anti-infectives, ar1ti—inflarnmato1ies, and anti—cancer agents for use in the
`
`treatment of disease via application to the lungs" in International Class 5 and "medical
`
`apparatus, namely, forin~t'1ll~seal dosage packets used in aerosolized delivery of drugs
`
`and biologics to the lungs" in International Class l0. A copy of the aforementioned
`
`registration is appended to this Notice of Opposition as Exhibit E. The foregoing
`
`registration is currently valid and subsisting. Aradigm has continuously offered and sold
`
`pharmaceutical preparations and medical apparatuses under the AERX STRIP mark since
`
`at least as early as September 2002.
`
`8.
`
`Aradigrn is the owner of record of Registration "No. 2,843,548,
`
`Application Serial No. 76/360,l5l filed on January 17, 2002, for AERX ULTRA for use
`
`in connection with "pliarrnaceutical preparations, namely analgesics, hormones,
`
`psychotropics, anti-infectives, anti—inflan1niatories, and anti—cancer agents for use in the
`
`W02—WEST:Fl--lM\400(}41943.l
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`treatment of disease via application to the lungs" in International Class 5 and "medical
`
`apparatus, namely, electronically-based devices used to deliver drugs and biologics to the
`
`Iungs" in lnternational Class 10. A copy of the aforementioned registration is appended
`
`to this Notice of Opposition as Exhibit F. The foregoing registration is currently valid
`
`and subsisting.
`
`9.
`
`Aradigrn has invested millions of doliars in the advertising and
`
`promotion of its trademarks AERX (Stylized), AERX, AERX ESSENCE, AERX STRIP
`
`and AERX ULTRA (the "AERX Marks") for its pharmaceutical preparations, drug
`
`delivery devices and medical apparatuses and, upon information and belief, the AERX
`
`Marks have become well—known and recognized as Aradigrnfs marks among consumers
`
`in the relevant industry.
`
`l0.
`
`As a result of Aradigm's extensive investment and effort in
`
`promoting the AERX Marks for its pharniaceuticai preparations, drug delivery devices
`
`and medical apparatuses, the AERX Marks have, upon information and belief, come to be
`
`recognized by consumers as well»l<nown rnarks uniquely associated with and belonging
`
`to Aradigm.
`
`1 1.
`
`Upon information and belief, Applicant Adhesives Research, inc. is
`
`a Pennsylvania corporation with its principal piace of business at 400 Seaks Run Road,
`
`PO. Box 100, Glen Rock, Pennsylvania 17327. Applicant Adhesives Research, Inc. is
`
`the current owner of record of Appiication Serial No. 78/57 l ,945.
`
`12.
`
`Applicant seeks registration for the designation AR); allegedly to be
`
`used for "pharmaceutical preparations, namely, a drug system comprising oral
`
`dissolvable or erodable films, containing pliarmacei1tically—active ingredients for the
`
`release of a wide variety of therapeutic agents" under the Application.
`
`13.
`
`Applicant's proposed mark ARK is confusingly similar to Aradignfs
`
`previously used and registered AERX Marks and, when used in connection with the
`
`purported pharmaceutical preparations, is likely to cause confusion or mistake or to
`
`deceive.
`
`W62-W1’-ZS'I":Fl-§M\4(}O(}4i943.}
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`-4-
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`14.
`
`Aradigm is not connected in any way with Applicant or the proposed
`
`use by Applicant of the AR); mark for pharmaceutical preparations as set forth in the
`
`Application.
`
`15.
`
`Aradigrn's AERX Marks are of sufficient fame and have a sufficient
`
`reputation among consumers such that, if and when the mark set forth in the Application
`
`is used for pharmaceuticai preparations, a connection with Aradigrn will be presumed by
`
`consumers.
`
`16.
`
`Upon information and belief, Applicant's proposed use of ARK will
`
`disparage Aradigm, falsely suggest a connection with Aradigrn, or bring Aradigrn into
`
`disrepute.
`
`17.
`
`The registration of Applicant's alleged ARX mark on the Principal
`
`Register would be inconsistent with Aradignfs rights under the aforementioned
`
`registration and common law, and would be damaging to Aradigm.
`
`WHERE-FORE, Aradigm requests that Application Serial No. 78/57 1 ,945
`
`be rejected, that no registration be issued in connection with the Application and that the
`
`Board raie in favor of Opposer in this Opposition Proceeding.
`
`1”“:
`
`Dated: Julyzéifi ,2006
`
`snapmno, MULLIN, Ricrrrnn & HAZ\/EPTON LLP
`
`B}?
`
`1
`
`
`it
`
`_
`
`.
`V"":-«LR
`H
`
`‘*5
`ti/"
`
`
`Michelle D. Kahn
`Michelle 5. Hirth
`
`Attorneys for Opposer
`ARADIGM CORPORATEON
`
`Four Embarcadero Center
`
`17th Floor
`
`San Francisco, CA 94111
`TEL: (415) 434-9100
`FAX: (415) 434-3947
`
`W92-WES?:FHlV§\4(}0G41943.i
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`

`
`EXHIBIT A
`
`

`
`
`
`Int. CL: 10
`
`@
`
`Prior U.S. Cls.: 26, 39 and 44
`
`Reg. No. 1,946,528
`United States Patent and Trademark Office
`Registered Jan. 9, 1996
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ZWV
`
`INHNZTECH, INC. (MISSOURI CORPORATION)
`750 GODDARD AVENUE
`CHBSTERFSELD, MO 63005
`
`FOR: MEDICAL APPARATUS, NAMELY ME»
`CHANICAL BREATHING PUMP FOR USE IN
`SURGERY, IN CLASS £0 (U.S. CLS. 26, 39 AND
`44).
`
`FIRST USE 9~21—1994;
`9-2!-E994.
`
`IN COMMERCE
`
`SER. NO. 74mS78,3'72, FiLED 9-26-1994.
`
`IRA J. GOODSAID, EXAIVHNING ATTORNEY
`
`;2
`3'55
`53:
`e.<'
`
`i %
`
`‘é
`§E
`9
`
`
`
`1'
`.+z‘
`
`SE.
`
`-I
`
`

`
`EXHIBIT B
`
`

`
`
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`
`Patent and Trademark Office to the named registrant.
`
`The records of the United States Patent and Trademark Office show that
`
`an application for registration ofthe Mark shown in this Certificate was filed in the
`
`Office, that the application was examined and determined to be in compliance with
`
`the requirements ofthe law and with the regulationsprescribed by the Commissioner
`
`of Patents and Trademarks, and that the Applicant is entitled to registration of the
`
`Mark under the Trademark Act of 1946, as Amended.
`
`A copy of the Mark and pertinent data from the application are a part of
`
`this certificate.
`
`This registration shall remain in force for TEN (10) years, unless
`
`terminated earlier as provided by law, and subject to compliance with the provisions
`
`of Section 8 of the Trademark Act of 1946, as Amended.
`
`
`
`Acting Conimissioner 0fPatent.f and Tradeznarics
`
`

`
`Int. CL: 5
`
`Prior U.S. Cls.: 6, 18, 44, 46, 51, and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,279,572
`Registered Sep. 21, 1999
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`AERX
`
`ARADIGM CORPORATION (CALIFORNIA
`CORPORATION)
`26219 EDEN LANDING ROAD
`HAYWARD, CA 94545
`
`USE IN ENDOCRINE THERAPY. IN CLASS 5
`(U.S. CLS. 6, 38, 44, 46, SE AND 52).
`FIRST USE
`6—4~I999;
`IN COMMERCE
`6-4-4999.
`
`FOR: PHARMACEUTICAL PREPARATIONS,
`NAMELY ANALGESICS, HORMONES, PAIN
`KILLERS;
`PHARMACEUTICAL
`PREPARA-
`TIONS FOR THE TREATMENT OF RESPIRA-
`TORY CONDITIONS, DIABETES AND FOR
`
`SN 74—607,94-I, FILED 12-74994.
`
`ALEXANDER L. POWERS, EXAMINING AT-
`TORNEY
`
`
`
`E‘
`
`E iE E
`
`
`
`wmmmyzg-:=:.w:=:-‘~.-~»
`
`

`
`EXHIBIT C
`
`

`
`
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`
`Patent and Trademark Office to the named registrant.
`
`The records of the United States Patent and Trademark Office show that
`
`an application for registration of the Mark shown in this Certificate was filed in the
`
`Office, that the application was examined and determined to be in compliance with
`
`the requirements ofthe law and with the regulations prescribed by the Commissioner
`
`of Patents and Itrademarks, and that the Applicant is entitled to registration of the
`
`Mark under the Trademark Act of 1946, as Amended.
`
`A copy of the Mark and pertinent data from the application are a part of
`
`this certificate.
`
`This registration shall remain in force for TEN (10) years, unless
`
`terminated earlier as provided by law, and subject to compliance with the provisions
`
`of Section 8 of the Trademark Act of 1946, as Amended.
`
`Acting Cormnissr'oner ofPazen1s and Trademarks
`
`
`
`
`
`-‘-'.vma€<’k\'"3r8r€c\.:::«w~.-w.-..'.I‘-
`
`

`
`..:«.,ss;:ma:éa
`
`
`
`
`\fE
`Ey
`
`6 ,
`
`Maintenance Requirements
`
`Section 8:
`
`This registration wiii be cancelled after six (6) years by the
`
`Commissioner of Patents and Trademarks, UNLESS, before the end ofthe sixth
`
`yearfoltowing the date of registration shown on this certificate, the registrant
`
`files in the U.S. Patent and Trademark Office an affidavit of continued use as
`
`required by Section 8 of the Trademark Act of 1946, 15 U.S.C. §i058, as
`
`Amended. It is recommended that the Registrant contact the Patent and
`
`Trademark Office approximately five years after the date shown on this
`
`registration to determine the requirements and fees for filing a Section 8
`
`affidavit that are in effect at that time. Currently a fee and a specimen showing
`
`how the mark is used in commerce are required for each international class of
`
`goods and/or services identified in the certificate of registration and both must
`
`be enclosed with the affidavit.
`
`Section 9:
`
`This registration wiii expire by law after ten (10) years,
`
`UNLESS, before the end.’ofthetenthyearfollowingthe date ofregistration shown
`
`on this certificate, the registrant files in the US. Patent and Trademark Office
`
`an application for renewal of the registration as required by Section 9 of the
`
`Trademark Act of 1946, 15 U.S.C. §I059, as Amended. It is recommended that
`
`the Registrant contact the Patent and Trademark Office approximately nine
`
`years after the date shown on this registration to determine the requirements
`
`and fees for filing a Section 9 application for renewal that are in effect at that
`
`time. Currently a fee and a specimen showing how the mark is used in commerce
`
`are required for each international class of goods and/or services identified in the
`
`certificate of registration and both must be enclosed with the application for
`renewai.
`
`

`
`Int. CL: 10
`
`Reg‘ No. 2,283,455
`Prior US. 1313.: 26, 39, and 44
`
`United States Patent and Trademark Office Registered Oct. 5, 1999
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`AERX
`
`ARADIGM CORPORATION (CALIFORNIA
`CORPORATION)
`25219 EDEN LANDING ROAD
`HAYWARD, CA 94545
`
`FIRST USE
`«M44999.
`
`64-1999;
`
`IN COMMERCE
`
`SN 744507.946, FILED I2~»7-1994.
`
`FOR: DRUG DELIVERY DEVICES FOR
`AEROSOLEZED DELIVERY OF MEDICINES,
`IN CLASS 10 (U.S. QLS. 26, 39 AND 44).
`
`ALEXANDER L. POWERS, EXAMINING AT-
`TORNEY
`
`

`
`EXHIBIT D
`
`

`
`
`
`k\W’att
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`
`Patent and Trademark Qflice to the named registrant.
`
`The records of the United States Patent and Trademark Ofice show that
`
`an application for registration of the Mark shown in this Certificate was filed in the
`
`Oflice; that the application was examined and determined to be in compliance with
`
`the requirements ofthe law and with the regulations prescribed by the Director ofthe
`
`United States Patent and Trademark Office,‘ and that the Applicant is entitled to
`
`registration ofthe Mark under the Trademark Act of 1946, as Amended.
`
`A copy of the Mark and pertinent data from the application are part of
`
`this certificate.
`
`This registration shall remain in force for TEN (I0) years, unless
`
`terminated earlier as provided lzry last; and subject to compliance with the provisions
`
`ofSection 8 of the Traden-iarkAet of'1 946, as Amended.
`
`s'I:"tiri;3 lJti'(’('i{ii‘ ofktlw {:"nit(-=a' States Patent and T.-'ua'eniark Oilite
`
`

`
`
`
`
`
`Int. Cls.: 5 and 10
`
`Prior US. Cls.: 6, 18, 26, 39, 44, 46, 51, and 52
`
`Reg. No. 2,832,609
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`AERX ESSENCE
`
`ARADIGM CORPORATION {CALIFORNIA COR-
`PORATEON)
`3929 POiNT EDEN WAY
`HAYWARD, CA 94545
`
`FOR MEIZHCAL APPARATUS, NAMELY, ME-
`CHANICALLY-BASED DEVICES USED TO DEL!-
`VER DRUGS AND BIOLOGICS TO THE LUNGS, {N
`CLASS 10 (US. (31.8. 26, 39 AND em}.
`
`FOR: PHARMACEUTKCAL PREPARATIONS,
`NAMELY ANALGESICS,
`I-IORMONES, PSYCHO»
`TROPICS, ANTI-INFECTIVES, ANT[-INFLAMMA-
`TORIES, AND ANTI-CANCER AGENTS FOR USE
`IN THE TREATMENT OF DISEASE VIA APPLICA-
`TEON TO THE LUNGS, IN CLASS 5 (US. CLS. 6, 18,
`44, 46, 51 AND 52).
`
`FiRST USE 9-B-2002; EN COMMERCE 9~G-2062.
`
`OWNER OF US. REG. NOS. 1,946,528, 2,279,572,
`AND 2,283,455.
`
`SN 76-359,836, FILED 1-17-2092.
`
`FIRST USE 9-0-2002; [N COMMERCE 9-0-2002.
`
`MICHAEL SOUDERS, EXAMINING ATTORNEY
`
`

`
`EXHIBIT E
`
`

`
`
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`
`Patent and Trademark Oflice to the named registrant.
`
`The records of the United States Patent and Trademark Ofiice show that
`an application for registration of the Mark shown in this Certificate was filed in the
`Office,‘ that the application was examined and determined to be in compliance with
`the requirements ofthe law and with the regulations prescribed by the Director ofthe
`United States Patent and Trademark Oflice; and that the Applicant is entitled to
`registration ofthe Mark under the Trademark Act of19-46, as Amended.
`'
`
`A copy of the Man’: and pertinent data from the application are part of
`this certificate.
`
`the owner of the
`To avoid CANCELLATION of the registration,
`registration must submit a declaration of continued use or excusable non-use
`between thefifth and sixth years after the registration date. (See next pagefor more
`information.) Assuming -such a declaration is properly filed,
`the registration will
`remain inforceflor ten (10) years, unless terminated by an order ofthe Commissioner
`for Trademarks or a federal court. (See next page for inflztrmation on maintenance
`reqairementsfitr successive ten—year periods.)
`
`
`
`Acting Director ofthe United States Patent and Trademark Oflice
`
`

`
`REQUIR1-nu/IENTS T0 MAINTAIN YOUR 3}: i;nEnAL
`TRADEMARK REGISTRATION
`
`Requirements in the First Ten Years*
`What and When to File:
`
`* First Filing: A Deeiaration of Continued Use (or Excusable Non-use), filed between the
`5th and 69‘ years after the registration date. (See 15 U.S.C. §i058; 37 C.F.R. §2.16l.)
`* Second Filing: A Declaration of Continued Use (or Excasable Non—use) ggfi an
`Application for Renewal, filed between the 9th and 103* years after the registration date.
`(See 15 U.S.C. §l058 and §i059; 37 C.F.R. §2.I61 and 2.183.)
`
`Requirements in Successive 'I‘en-Year Periods*
`What and When to File:
`
`- A Declaration of Continued Use (or Excusable Non—use) gig an Application for
`Renewai, filed between each 9th and 10311-year period after the date when the first
`ten~year period ends. (See 15 U.S.C. §i058 and §I059; 37 C.F.R. §2.16l and 2.183.)
`
`Grace Period Fiiings*
`
`There is a siX-month grace period for filing the documents listed above, with payment of
`an additional fee.
`
`The U.S. Patent and Trademark Office (USPTO) will N31‘ send you any future notice
`or reminder of these filing requirements. Therefore, you should Contact the USPTO
`approximately one year prior to the deadlines set forth above to determine the
`requirements and fees for submission of the required filings.
`NOTE: Electronic forms for the above documents, as well as information regarding
`current filing requirements and fees, are available online at the USPTO web site:
`
`www.usp_t_o_.ggg
`
`YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT
`FILE THE DOCUMENTS IDENTIFIED ABOVE DURING THE
`SPECIFIED TIME PERIODS.
`
`*Exception for the Extensions of Protection under the Madrid Protocol:
`The holder of an international registration with an extension of protection to the United
`States must file, under slightly different time periods, a Declaration of Continued Use (or
`Excusable Non-use) at the USPTO. See 15 U.S.C. §114lk; 37 C.F.R. §7.36. The renewal
`of an international registration, however, must be filed at the International Bureau of the
`World Intellectual Property Organization, under Article 7 of the Madrid Protocol. See 15
`U.S.C. §1141j; 37 C.F.R. §7.41.
`
`

`
`Int. Cls.: 5 and 10
`
`Prior U.S. Cls.: 6, I8, 26, 39, 44, 46, 51, and 52
`
`Reg. No. 2,854,425
`United States Patent and Trademark Office
`Registered June 15, 2004
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`AERX STRIP
`
`ARADIGM CORPORATION (CALEFORNIA COR-
`PORATION)
`3929 POINT EDEN WAY
`HAYWARD, CA 94545
`
`FOR: PHARMACEUTICAL PREPARATIONS,
`NAMELY ANALGESICS, HORMONES, PSYCHO-
`TROPICS, ANTLINFECTIVES, ANTI~INFLAMMA-
`TORIES, AND ANTI-CANCER AGENTS FOR USE
`IN THE TREATMENT OF DISEASE VIA APPLICA-
`TION TO THE LUNGS, IN CLASS 5 (U.S. CLS. 6, 18,
`44, 46. 51 AND 52).
`
`LEZEI) DELIVERY OF DRUGS AND BIOLOGICS TO
`THE LUNGS, IN CLASS 10 (US. CLS. 26, 39 AND 44).
`
`FIRST USE 943-2002; IN COMMERCE 9-0-2902.
`
`OWNER OF U.S. REG. NOS. 1,946,528, 2,279,572,
`AND 2,283,455.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "STRIP" , APART FROM THE
`MARK AS SHOWN.
`
`FIRST USE 9-0-2002; EN COMMERCE 9-0-2002.
`
`SN 76-360,201, FILED I-17-2002.
`
`FOR: MEDICAL APPARATUS, NAMELY, FORM~
`FILI.—SEAL DOSAGE PACKETS USED IN AEROSO-
`
`MICHAEL SOUDERS, EXAMINiNG ATTORNEY
`
`

`
`EXHIBIT F
`
`

`
`
`
`CERTIFICATE OF REGISTRATION
`
`PRINCIPAL REGISTER
`
`The Mark shown in this certificate has been registered in the United States
`
`Patent and Trademark Ofiice to the named registrant.
`
`The records of the United States Patent and Trademark Oflice show that
`an application flair registration of the Mark shown in this Certificate was filed in the
`0fi‘ice; that the application was examined and determined to be in compliance with
`the requirements ofthe law and with the regulations prescribed by the Director ofthe
`United States Patent and Trademark Ofiice; and that the Applicant is entitled to
`registration ofthe Mark under the Trademark Act of1946, as Amended.
`
`A copy of the Mark and pertinent data from the application are part of
`this certificate.
`
`the owner of the
`To avoid CANCELLATION of the registration,
`registration mast submit a declaration of continued use or excusable non-use
`between thefifth and sixth years after the registration date. (See next pagefor more
`information.) Assuming such a declaration is properly filed,
`the registration will
`remain in forcefor ten (1 0) years, unless terminated by an order ofthe Commissioner
`for Trademarks or a federal court. (See next page for infiormation on maintenance
`requirements for successive ten-year periods.)
`
`
`
`

`
`TRADEMARK REGISTRATION
`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`
`Requirements in the First Ten Years*
`What and When to File:
`
`6 First Filing: A Declaration of Continued Use (or Excusable Non~—use), filed between the
`5th and 631 years after the registration date. (See 15 U.S.C. §1058; 37 CPR. §2.161.)
`- Second Filing: A Declaration of Continued Use (or Excusable Non—nse) and an
`Application for Renewal, filed between the 9th and 1031 years after the registration date.
`(See 15 U.S.C. §l()58 and §1059; 37 CPR. §2.l6l and 2.183.)
`
`Requirements in Successive Ten—Year Periods*
`What and When to File:
`
`° A Declaration of Continued Use (or Excusable Non——use) and an Application for
`Renewal, filed between each 931 and l0th~year period after the date when the first
`ten-«year period ends. (See 15 U.S.C. §l058 and §1059; 37 C.F.R. §2.161 and 2.183.)
`
`Grace Period Filings*
`There is a six-month grace period for filing the documents listed above, with payment of
`an additional fee.
`
`The U.S. Patent and Tradetnark Office (USPTO) will E‘ send you any future notice
`or reminder of these filing requirements. Therefore, you should contact the USPTO
`approximately one year prior to the deadlines set forth above to determine the
`requirements and fees for submission of the required filings.
`NOTE: Electronic forms for the above documents, as well as information regarding
`current filing requirements and fees, are available online at the USPTO web site:
`
`www.uspflgg_1g
`
`
`
`YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT
`FILE THE DOCUMENTS IDENTIFIED ABOVE DURING THE
`SPECIFIED TEVIE PERIODS.
`
`
`
`*Exception for the Extensions of Protection under the Madrid Protocol:
`The holder of an international registration with an extension of protection to the United
`States must file, under slightly different time periods, a Declaration of Continued Use (or
`Excusable Non-use) at the USPTO. See 15 U.S.C. §114lk; 37 C.F.R. §7.36. The renewal
`of an international registration, however, tnust be filed at the International Bureau of the
`World Intellectnal Property Organization, under Article 7 of the Madrid Protocol. See 15
`U.S.C. §114lj; 37 C.F.R. §7.4i.
`
`

`
`Int. Cls.: S and 10
`
`Prior U.S. Cls.: 6, 18, 26, 39, 44, 46, 51, and 52
`
`Reg. No. 2,843,548
`United States Patent and Trademark Office
`Registered May 18, 2004
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`AERX ULTRA
`
`ARADIGM CORPORATION (CALIFORNIA COR-
`PORATION}
`3929 POENT EDEN WAY
`HAYWARD, CA 94545
`
`FOR: MEDICAL APPARATUS, NAMELY, ELEC-
`TRONICALLY-BASED DE‘/iCES USED TO DELL
`VER DRUGS AND BEOLOGICS TO THE LUNGS, IN
`CLASS E0 (U.S. CLS. 26, 39 AND 44).
`
`FOR: PHARMACEUTICAL PREPARATIONS,
`NAMELY ANALGESICS, HORMONES, PSYCHO-
`TROPICS, ANTHNFECTWES, ANTI-£NFLAMMA-
`TORIES, AND ANTI-CANCER AGENTS FOR USE
`IN THE TREATMENT OF DISEASE VIA APPLICA-
`. TION TO THE LUNGS, IN CLASS 5 (US. CLS. 6, 18,
`44, 46, 51 AND 52).
`
`FIRST USE 9-02002; IN COMMERCE 9~U-2002.
`
`OWNER OF U.S. REG. NOS. £346,528, 2,279,572,
`AND 2,283,455.
`
`SN 76-360,f5l, FILED 1-17-2002.
`
`FIRST USE 9-0-2002; IN COMMERCE 9-0-2002.
`
`MICHAEL SOUDERS, EXAMINING ATTORNEY