Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA135617
`ESTTA Tracking number:
`04/16/2007
`
`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
`
`Cardinal Health 409, Inc.
`04/14/2007
`
`2725 Scherer Drive North
`St. Petersburg, FL 33716-1016
`UNITED STATES
`
`Attorney
`information
`
`Joseph R. Dreitler
`Frost Brown Todd LLC
`10 West Broad Street Suite 2300
`Columbus, OH 43215-3484
`UNITED STATES
`jdreitler@fbtlaw.com, jprince@fbtlaw.com Phone:614.559.7280
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79018057
`04/16/2007
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`XYTIS PHARMACEUTICALS LIMITED
`90 Fetter Lane London EC4A 1JP
`
`0869264
`
`02/13/2007
`04/14/2007
`
`11/09/2005
`
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and sevices in the class are opposed, namely: Pharmaceutical products, namely,
`pharmaceutial products for the treatment of psychiatric and neurological disorders including
`schizophrenia, cognitive impairment, apathy, depression, bipolar disorders 1 and 2, depression
`comorbidites with psychiatric disorders, anxiety, including but not limited to generalized anxiety
`disorder, epilepsy, sleep disorders, drug addiction, including addiction to cocaine and
`methamphetamines, memory and learning impairment conditions and attention deficit hyperactivity
`disorder, preparations for the treatment, alleviation and/or prevention of neurodegenerative or
`neuroinflammatory disorders, including Alzheimer's disease, Parkinson's disease and multiple
`sclerosis, pharmaceutical products for the treatment, alleviation and/or prevention of secondary brain
`damage, brain swelling and other neuroinflammatory pathologies including traumatic brain injury,
`brain oedema, including neurosurgery induced brain oedema, stroke, ischemia, migraine and other
`forms of neuropathological pain condition, pharmaceutical products for the treatment or alleviation of
`neuropathic pain, analgesics, anti-inflammatory preparations including such preparations for use in
`the treatment or alleviation of rheumatoid arthritis and osteo arthritis, muscle relaxants, anti-emetics,
`antispasmodic agents, ophthalmic agents including products for the treatment of retinal and optical
`
`

`

`neurodegenerative conditions, non-depolarising skeleton neuromuscular blocking agents and
`preparations for assisting in the cessation of smoking
`Class 044.
`All goods and sevices in the class are opposed, namely: Medical testing for others
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1547936
`
`07/18/1989
`
`Application Date
`
`11/03/1988
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`ZYDIS
`
`NONE
`
`Class 005. First use: First Use: 1988/10/25 First Use In Commerce: 1988/10/25
`A FAST DISSOLVING, ORALLY ADMINISTERED DOSAGE FORM FOR
`DRUGS, VITAMINS, AND DIETARY SUPPLEMENTS, FOR BOTH HUMAN
`AND VETERINARY USE
`
`Attachments
`
`XYTIS Opp.pdf ( 14 pages )(679696 bytes )
`
`Signature
`Name
`Date
`
`/joseph r dreitler/
`Joseph R. Dreitler
`04/16/2007
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF Trademark Application No. 79/018057
`
`DATE OF PUBLICATION: February 13, 2007
`
`Cardinal Health 409, Inc.,
`
`OPPOSGI‘,
`
`Opposition No.2
`
`V.
`
`Xytis Pharmaceuticals Limited
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`CARDINAL HEALTH 409, INC. (“Cardinal Health”), a Delaware corporation having a
`
`principal place of business at 2725 Scherer Drive North, St. Petersburg, Florida 33716, until
`
`April 10, 2007 a wholly-owned subsidiary of and controlled by CARDINAL HEALTH, INC., a
`
`Delaware corporation with a principal place of business at 7000 Cardinal Place, Dublin, Ohio,
`
`believes that it is and will be damaged by registration of the mark XYTIS, trademark application
`
`Serial No. 79/018057 by Xytis Pharmaceuticals Limited (hereinafter referred to as “Applicant”)
`
`for:
`
`Pharmaceutical products, namely, pharmaceutical products for the treatment of
`psychiatric and neurological disorders including schizophrenia, cognitive
`impairment, apathy, depression, bipolar disorders 1 and 2, depression
`comorbidites with psychiatric disorders, anxiety, including but not limited to
`generalized anxiety disorder, epilepsy, sleep disorders, drug addiction, including
`addiction to cocaine and methamphetamines, memory and learning impairment
`conditions and attention deficit hyperactivity disorder, preparations for the
`treatment, alleviation and/or prevention of neurodegenerative or
`neuroinflammatory disorders, including Alzheimer's disease, Parkinson's disease
`and multiple sclerosis, phannaceutical products for the treatment, alleviation
`
`

`

`and/or prevention of secondary brain damage, brain swelling and other
`neuroinflammatory pathologies including traumatic brain injury, brain oedema,
`including neurosurgery induced brain oedema, stroke, ischemia, migraine and
`other forms of neuropathological pain condition, pharmaceutical products for the
`treatment or alleviation of neuropathic pain, analgesics, anti-inflammatory
`preparations including such preparations for use in the treatment or alleviation of
`rheumatoid arthritis and osteo arthritis, muscle relaxants, anti-emetics,
`antispasmodic agents, ophthalmic agents including products for the treatment of
`retinal and optical neurodegenerative conditions, non—depolarising skeleton
`neuromuscular blocking agents and preparations for assisting in the cessation of
`smoking, in international class 5; and
`
`Medical testing for others, in international class 44;
`
`and hereby oppose the same under the provisions of Section 13 of the Trademark Act of July 5,
`
`1946 (15 U.S.C. § 1063).
`
`As grounds therefor, it is alleged that:
`
`1.
`
`Cardinal Health and its related and/or affiliated companies and predecessors in
`
`business (all hereinafter referred to as “Opposer”), since at least as early as 1980 and continuing
`
`to the present, have been engaged in the business of manufacturing, distributing, and selling
`
`drugs and medical devices, pharmaceuticals, packaging for drugs and pharmaceuticals and
`
`providing numerous and various services relating to the medical, drug and pharmaceutical
`
`industry.
`
`2.
`
`Opposer’s predecessor in interest, Cardinal Health, Inc., began operating as
`
`Cardinal Foods, Inc., in 1971 and over the past thirty-four (34) years, the company grew and
`
`expanded in scope in the types of medical, drug and pharmaceutical products and services it
`
`offers to the public. On April 10, 2007, Cardinal Health 409, Inc. was divested and now operates
`
`as a separate company.
`
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`3.
`
`Opposer and its predecessors in interest has, since long prior to May 13, 2005,
`
`Applicant’s claimed priority date under Section 66(a) for the Madrid Protocol application of
`
`XYTIS in Application Serial No. 79/018057, been engaged in the manufacture, distribution, use,
`
`offering and promotion of a dispensing tablet and technology used in a wide variety of
`
`medicines, drugs and pharmaceutical products, under the marks ZYDIS; and by reason of such
`
`use and the high quality of its products bearing such trademarks, Opposer now enjoys a valuable
`
`good will and an enviable reputation with respect to its ZYDIS trademark.
`
`4.
`
`Opposer’s use of ZYDIS as a trademark was long prior to Applicant’s claimed
`
`priority filing date of May 13, 2005 for XYTIS.
`
`5.
`
`Opposer is the owner of the trademarks ZYDIS, the United States Trademark
`
`Registration thereof, and the goodwill symbolized by the trademark and the registration thereof,
`
`as follows:
`
`ZYDIS — Reg. No. 1,547,936, registered July 18, 1989, for a fast dissolving, orally
`
`administered dosage form for drugs, vitamins, and dietary supplements, for both
`
`human and veterinary use in international class 05.
`
`A copy of the above registration and related assignment information from TESS and ASSIGN,
`
`showing record title in Opposer is attached as Exhibit 1. As soon as a certified copy of
`
`registration is obtained showing title in Opposer, it will be submitted to the TTAB with an
`
`Amended Notice of Opposition.
`
`6.
`
`The registration identified in paragraph 5 is valid and subsisting; and constructive
`
`notice of the registrant’s claim of ownership under 15 U.S.C. § 1072. The registration is
`
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`

`incontestable, which provides conclusive evidence of its validity, registrant's ownership of the
`
`mark and registrant's exclusive right to use the mark in commerce under 15 U.S.C. § 1l15(b).
`
`7.
`
`Opposer has since October 25, 1988, long prior to Applicant’s claimed priority
`
`filing date, used its ZYDIS trademark on numerous medical, drug and pharmaceutical goods,
`
`including:
`
`a) Zyprexa anti-psychotic medication;
`
`b) Maxalt - migraine medication;
`
`c) Zofran - chemotherapy nausea and vomiting medication;
`
`d) Feldene - arthritis and osteoporosis medication;
`
`e) Zelapar - Parkinson’s medication;
`
`f) Claritin OTC — allergy medication;
`
`g) Ebastine - allergic rhinitis medication.
`
`In addition, Opposer is currently developing many other medicine and drug products to
`
`be delivered using the ZYDIS trademark and technology.
`
`8.
`
`Opposer and Applicant are competitors in the marketplace for the sale of medical,
`
`pharmaceutical and drug products, and Opposer’s ZYDIS product could be used to dispense
`
`Applicant’s XYTIS products. For example, Opposer currently uses itS ZYDIS product and
`
`technology to dispense the anti-psychotic drug, Zyprexa, a competitive product to the goods set
`
`forth in Applicant’s description of XYTIS goods being medications for psychiatric disorders.
`
`ColLib146582vl
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`- 4 -
`
`

`

`9.
`
`Opposer’s ZYDIS trademark and Applicant’s XYTIS mark are similar in
`
`appearance and sound, and oral orders for such a drug product could be easily confused to the
`
`detriment of patients. Neither term is a dictionary term and so the users and purchasers would not
`
`be able to distinguish the two marks because they have no known meaning in the English
`
`language.
`
`10.
`
`The ZYDIS trademark has been extensively marketed and publicized and has
`
`become well-known throughout the United States in the medical, pharmaceutical and over the
`
`counter drug fields.
`
`l 1.
`
`Upon information and belief, there are no restrictions in the goods descriptions of
`
`Applicant’s application, so that it must be presumed that all of Applicant’s XYTIS products and
`
`services would be offered to and used by many of the same customers and distributed to many of
`
`the same end users who would also be in the market for and use Opposer’s ZYDIS products.
`
`12.
`
`Upon information and belief, Applicant’s XYTIS goods and services will be
`
`advertised, marketed, promoted, sold and provided through the same channels of trade and will
`
`be advertised in the same types of publications and trade shows as products sold under Opposer’s
`
`ZYDIS trademark and Applicant’s XYTIS goods and services will be sold to the same classes of
`
`the purchasing public for use by many of the same consumers as Opposer’s ZYDIS products.
`
`13.
`
`The designation XYTIS which the Applicant seeks to register is confusingly
`
`similar to Opposer's ZYDIS trademark in sound and spelling, and is similar in appearance, and,
`
`as noted previously, the words are indistinguishable in pronunciation — zydis and zydis — since the
`
`letter “x” is pronounced as a “Z” when it is at the beginning of a word (ex. Xylophone,
`
`xenophobe, Xavier, etc.). Moreover, the letter “t” and “d” are very similar in pronunciation and
`
`ColLib146582vl
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`- 5 -
`
`

`

`so the chances of the marks “ZYDIS” and “XYTIS” both being pronounced identically when
`
`spoken or ordered — “‘zi-dis” — is great. In addition to the potential serious health consequences
`
`of one product being substituted for the other, consumers and potential customers will believe
`
`that XYTIS goods and services are connected with, affiliated with or endorsed by the owner of
`
`Opposer's trademark ZYDIS.
`
`14.
`
`Opposer has spent, and continues to spend, large sums of money in the
`
`advertisement, marketing, promotion, and sale of its goods identified and distinguished by its
`
`ZYDIS trademark, and by reason of such advertising, promotion, marketing and the high quality
`
`of its products carrying the ZYDIS trademark, Opposer now enjoys a valuable goodwill and an
`
`enviable reputation with respect to its ZYDIS trademark and products that bear the mark.
`
`15.
`
`The distinctive trademark ZYl)IS is not (to the knowledge of the Opposer) used
`
`by any other entity in the medical, pharmaceutical or drug field, and the ZYDIS mark has
`
`attained widespread favorable public recognition as the source of goods in or by Opposer, and
`
`the said ZYDIS trademark distinguishes Opposer’s goods from the goods and services of others.
`
`16.
`
`The use and registration of the XYTIS mark by the Applicant will cause the
`
`purchasing public and those who use or are familiar with Opposer's goods to assume,
`
`erroneously, and to be confused, misled and/or deceived, that the Applicant’s XYTIS mark and
`
`goods and services are made by or originate with, are licensed by, endorsed or sponsored by, or
`
`are in some other way associated or connected with Opposer, all to Opposer’s great injury and
`
`irreparable damage, as well as potential great damage to the public health.
`
`17.
`
`For the reasons set forth in paragraphs 1 through 16, Opposer believes, and in
`
`believing asserts, that the goodwill in its distinctive ZYDIS trademark will be damaged under
`
`ColLib146582v1
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`— 6 —
`
`

`

`Section 2 (d), and that the Applicant should be denied the registration of XYTIS in International
`
`Classes 05 and 44 for each and every one of the goods and services for which it has filed an
`
`application.
`
`18.
`
`By reason of the foregoing, Applicant’s application of XYTIS in International
`
`Classes 05 and 44 is likely to cause confusion with the Opposer’s ZYDIS trademark and
`
`products, and is thus not registrable under Section 13 o_/"the Trademark Act 0f1946 (15 US. C.
`
`§ 1063).
`
`WHEREFORE, Opposer prays that this Opposition be sustained and that application
`
`Serial No. 79/018057 for Applicant’s mark XYTIS in International Classes 05 and 44 be refused
`
`registration.
`
`The fee of $600.00 for this Opposition, as provided by Sections 13 and 31 ofthe
`
`Trademark Act of 1 946 is paid by charging Opposer’s attorneys’ Deposit Account No. 06-2226.
`
`Please recognize Joseph R. Dreitler, Brian J. Downey and Mary R. True, all members of
`
`the Bar of the State of Ohio, as its attorneys to prosecute this Notice of Opposition and to
`
`transact all business in the Patent and Trademark Office in connection herewith. Please address
`
`all communications to: Joseph R. Dreitler, c/o Frost Brown Todd, One Columbus, 10 West
`
`Broad St., Suite 2300, Columbus, OH 43215-3484, (614) 559-7280.
`
`ColLib146582v1
`
`— 7 -
`
`

`

`Dated: April 16, 2007
`
`Respectfully submitted,
`
`rzflflm
`
`J
`
`h R. Dreitler
`
`Brian J. Downey
`Mary R. True
`FROST BROWN TODD, LLC
`One Columbus
`
`10 W. Broad St., Suite 2300
`
`Columbus, OH 43215-3484
`Telephone: (614) 559-7228
`Facsimile:
`(614)464-1737
`
`Counsel for Opposer
`CARDINAL HEALTH 409, INC.
`
`Attachments — 1
`
`COLLibrary 01090510537510 l67l69vl
`
`ColLibl46582vl
`
`— 8 —
`
`

`

`
`
`EXHIBIT 1EXHIBIT 1
`
`

`

`UNI'l‘EI) ‘S’fA'I‘ES DEPARTMEN1‘ OF COMMIWCE
`
`United States ?atent and Trademark Office
`
`March 01. 1999
`
`1
`
`TTACHED LLS. 'TRADEl\‘!ARK REG1S'l'RATl0N 1,547,936 IS CERTIFIED TO BE A
`TRUE COPY WHICH XS IN FULL FORCE AND EFFECT‘ WITH N{)'I‘A'l"IONS OF ALI.
`S'l‘A'I‘I§'l’(}RY ACTIONS TAKEN TREREON AS I)ISCL(3SED BY THE RECORDS OF
`’ 3” T£133 UNITED S’I'A’i’E$ I’ATEN’I‘ AND 'l‘RA.I)EMA,RK OFFICE.
`
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`
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`
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`
`REG1s'n'«:m31) FOR A “mam OF 213 YIMRS FROM July I8, 1989
`SEC‘I’I()N 3 & 15
`
`Y
`
`3.413;: RI£(20RDS snow TITLE. TO BE IN: Registrant’
`
`By Authority of the
`
`COMMLSSIONER 01*‘ PATENTS AND TRADEMARKS
`
`P.
`
`AIN
`
`Certifying Officer
`
`
`
`

`

` Int. CL: 5
`
`Prior U.S. CL: 18
`
`United States Patent
`
`Reg. N0. 1,547,936
`and Trademark Office Registered July 18, 1989
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ZYDIS
`
`R.P. SCI-IERER CORPORATION (DELAWARE
`CORPORATION)
`2075 WEST BIG BEAVER ROAD
`DETROIT, Ml 48084
`
`FOR: A FAST DISSOLVING, ORALLY AD-
`MINISTERED DOSAGE FORM FOR DRUGS,
`VITAMINS, AND DIETARY SUPPLEMENTS.
`
`FOR BOTH HUMAN AND VETERINARY USE,
`IN CLASS 5 (US. CL. 18).
`FIRST USE 10-25-1988',
`IN COMMERCE
`1045-1988.
`
`SER. NO. 761,725. FILED 11-3-1988.
`SUSAN LEE, EXAMINING ATTORNEY
`
`

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`Int. CL: 5 Prior U.S. CI.: 18
`
`Reg. No. 1,547,936
`_
`mted States Patent and Trademark Office Registered July 18.1989
`
`U
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ZYDIS
`
`R.P. SCI-IERER CORPORATION (DELAWARE
`CORPORATION)
`2075 WEST BIG BEAVER ROAD
`DETROIT, MI 48084
`FOR: A FAST DISSOLVING, ORALLY AD-
`MINISTERED’ DOSAGE FORM FOR DRUGS,
`VITAMINS, AND DIETARY SUPPLEMENTS,
`
`FOR BOTH HUMAN AND VETERINARY USE,
`IN CLASS 5 (U.S. CL. I8).
`FIRST USE 10-25-1988;
`10-25-1988.
`SER. N0. 761,725, FILED II-3-1988.
`SUSAN LEE, EXAMINING ATTORNEY
`
`IN COMMERCE
`
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`

`MARK: AQUA~BIOSORB
`DRAWING TYPE: WORDS, LETTERS,
`
`OR NUMBERS IN TYPED FORM
`
`002752/0847 PAGE 2
`
`APPLICATION NUMBER: 74427568
`REGISTRATION NUMBER: 1841627
`
`FILING DATE: 08/23/1993
`ISSUE DATE: 06/28/1994
`
`MARK: LIQUIGEL
`DRAWING TYPE: WORDS, LETTERS,
`
`OR NUMERS IN TYPED FORM
`
`APPLICATION NUMER:
`REGISTRATION NUMBER:
`
`73599920
`1449212
`
`FILING DATE: 05/21/1986
`ISSUE DATE: 07/28/1987
`
`MARK: LIQUIGEL
`DRAWING TYPE: WORDS, LETTERS,
`
`OR NUMBERS IN TYPED FORM
`
`APPLICATION NUMBER: 74019947
`REGISTRATION NUMBER: 1626643
`
`FILING DATE: 01/17/1990
`ISSUE DATE: 12/11/1990
`
`MARK: LIQUI-GELS
`DRAWING TYPE: WORDS, LETTERS,
`
`OR NUMBERS IN TYPED FORM
`
`APPLICATION NUMBER:
`REGISTRATION NUMBER:
`
`74049799
`1932412
`
`FILING DATE: 04/10/1990
`ISSUE DATE: 11/07/1995
`
`MARK: R.P. SCHERER
`
`LDRAWING TYPE: WORDS, LETTERS,
`
`OR NUMBERS IN TYPED FORM
`
`‘APPLICATION NUMBER: 73761725
`REGISTRATION NUMBER: 1547936
`
`FILING DATE: 11/03/1998
`
`ISSUE DATE: 07/13/1989
`
`.
`MARK’
`DRAwING“TYPE: WORDS, LETTERS,
`
`OR NUMBERS IN TYPED FomM§§§'
`
`SAUNDRA BALLENGER, EXAMINER
`ASSIGNMENT DIVISION
`OFFICE OF PUBLIC RECORDS
`
` L
`
`