Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA172876
`ESTTA Tracking number:
`11/05/2007
`
`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
`
`Novartis AG
`11/07/2007
`
`CH-4002
`Basel,
`SWITZERLAND
`
`Attorney
`information
`
`Michael Chiappetta
`Fross Zelnick Lehrman & Zissu, P.C.
`866 United Nations Plaza
`New York, NY 10017
`UNITED STATES
`mchiappetta@fzlz.com Phone:212-813-5900
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79020841
`11/05/2007
`
`0876262
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`07/10/2007
`11/07/2007
`
`01/02/2006
`
`TAVARTIS GmbH
`Kroetengasse 10 64853 Otzberg
`
`GERMANY
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Pharmaceutical and veterinary preparations
`for the treatment of cancer, diabetes complications, neurodegenerative diseases, endothelial cell
`damages, macro-and microvascular damages, obesity, aging;dietetic foods adapted for medical use
`Class 042.
`All goods and services in the class are opposed, namely: Scientific research; technological
`consultation in the technological fields of chemistry, biology, medicine, pharmacy, and food and
`nutrition; industrial design; industrial chemical analyses, analyses for immunological research,
`analyses for medical research, analyses for pharmaceutical research, chemical analyses of food and
`nutrition; design and development of computer hardware and software
`Class 044.
`All goods and services in the class are opposed, namely: Human medical services; veterinary
`services; pharmaceutical and pharmacological services, namely medical and pharmaceutical
`consultation, food and nutrition consultation; hygienic and beauty care for human beings and animals,
`namely anti-aging consultation
`
`

`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`2997235
`
`09/20/2005
`
`NOVARTIS
`
`NONE
`
`Application Date
`
`02/10/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Class 005. First use: First Use: 1997/09/30 First Use In Commerce: 1997/09/30
`Adjuvants for use with veterinary vaccines and veterinary vaccines for
`companion animals, farmed fish and livestock; veterinary products for
`companion animals, farmed fish and livestock, namely, cardiovascular treatment
`preparations, arthritis treatment preparations, renal treatment preparations,
`respiratory treatment preparations, reproductive treatment preparations, allergy
`treatment preparations, antibiotics, insecticides, pesticides and feed additives for
`veterinary use in the treatment of parasites, fleas, worms, renal diseases, heart
`diseases, allergic diseases, parasitic and bacterial infections, lameness,
`respiratory diseases, scours or enteritis, viral diseases, clostridial diseases,
`pinkeye, liver abscesses, influenza, pneumonia, mastitis, West Nile virus and
`erysipelas; insecticides and rodenticides for agricultural use, disinfectants for
`veterinary use
`
`2336960
`
`04/04/2000
`
`NOVARTIS
`
`NONE
`
`Application Date
`
`07/09/1996
`
`Foreign Priority
`Date
`
`02/15/1996
`
`Class 001. First use:
`[ chemicals and chemical preparations for use in industry, agriculture,
`horticulture and forestry, namely, chemicals for use in manufacturing optical
`lenses; Adjuvants for use in manufacturing agricultural preparations; Adjuvants
`for use in manufacturing pharmaceutical preparations; Chemical additives for
`use in manufacturing - pharmaceutical preparations, defoliants, wound pastes
`for trees and plants, plant growth regulators, preparations for the treatment of
`seeds, preparations for the protection of seeds and plants against plant
`pathogens, plant protection agents of a prophylactic nature; and Manures ]
`Class 005. First use:
`pharmaceutical preparations for the treatment of - dermatological,
`cardiovascular, hematological, bone, respiratory, central nervous system,
`endocrinological, circulatory, gastroenterological, hormonal and diabetic
`disorders, coughs, colds, influenza, headaches, stomach and digestive
`disorders, muscular and/or rheumatic disorders, anti-inflammatory agents,
`immune system disorders and related diseases, allergic reactions, metabolic
`disorders, anti-infectives, occular disorders, and for use in oncology; diagnostic
`
`

`
`preparations and/or reagents for clinical or medical laboratory use; Contact lens
`and eyecare solutions and preparations, namely, disinfectants, cleaning
`solutions, saline solutions and wetting solutions; Nicotine for medicinal purposes
`in liquid, pill, tablet, caplet, powder or transdermal patch form; [ Hormones; ]
`Dietetic substances for medical purposes, namely, nutritional, vitamin, herbal
`and mineral supplements and preparations, nutritional drink mix for use as a
`meal replacement, nutritional supplements in snack bar form for use as a meal
`replacement; Food and beverages for babies, infants and invalids, namely, baby
`food, infant formula, food for enteral administration and food for medically
`restricted diets; and Pesticides, fungicides, [ herbicides ] and insecticides, all for
`commercial, [ agricultural ] and/or domestic use
`Class 009. First use:
`[ contact lenses; Eyeglasses; Sunglasses; and Optical lenses not for medical
`use ]
`Class 010. First use:
`[ artificial or biological skin tissue for subsequent implantation; Intraocular lenses
`
`] C
`
`lass 029. First use:
`[ prepared entrees consisting primarily of meat, fish, poultry, game and/or
`vegetables; Meat extracts; Preserved, dried, frozen or cooked fruits and
`vegetables; Jams and fruit or vegetable preserves; Fruit-based snack foods;
`Fruit toppings; Dairy products, excluding ice cream, ice milk and frozen yogurt;
`Milk ]
`Class 030. First use:
`[ ready to eat snack bars made from combinations of cereal, fruit, grains and
`nuts; Breakfast and processed cereals; Cereal based snack foods; Bread;
`Biscuits; Chocolate; Candy; Cocoa; Sugar; Tapioca; Sago; Rusks; Desserts,
`namely, cakes and puddings; Malt for food purposes; Ice cream, frozen yogurt,
`ice milk and ice cream substitute; Chocolate syrup; Corn syrup; and Food
`additives for non-nutritional purposes for use as a flavoring, ingredient or filler ]
`Class 031. First use:
`[ bran, cereal and protein based foodstuffs for animals; Vegetable, fruit and
`flower seeds for agricultural and horticultural purposes; Fresh fruits and
`vegetables; Living plants and live flowers ]
`Class 032. First use:
`[ non-alcoholic beverages, namely, soft drinks, fruit drinks, fruit juices;
`Concentrates, syrups or powders used in the preparation of soft drinks; and Fruit
`syrups used in the preparation of soft drinks ]
`Class 042. First use:
`[ engineering services; plant, tree and seed breeding services; Horticultural
`services; Printing; and Material testing ]
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`75166964
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Attachments
`
`78365657#TMSN.jpeg ( 1 page )( bytes )
`75131409#TMSN.gif ( 1 page )( bytes )
`071105 Notice of Opposition (F0126715).PDF ( 4 pages )(79488 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Michael Chiappetta/
`Michael Chiappetta
`11/05/2007
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 79/020,841
`Mark: TAVARTIS
`
`...................................................._-X
`
`NOVARTIS AG,
`
`'
`
`Opposer,
`
`against-
`
`Opposition No.
`
`TAVARTIS GMBH,
`
`:
`Applicant.
`....................................................--X
`
`NOTICE OF OPPOSITION
`
`Opposer, Novartis AG, a Switzerland corporation located and doing business at CH-
`
`4002, Basel, Switzerland, believes that it would be damaged by registration of the mark
`
`TAVARTIS, Serial No. 79/020,841, published in the Official Gazette on July 10, 2007, and
`
`hereby opposes the same.
`
`As grounds for the opposition, Opposer alleges as follows:
`
`1.
`
`Opposer is the owner of the trademark and trade name NOVARTIS in connection
`
`with a wide variety of pharmaceutical preparations for humans and veterinary medicines.
`
`Opposer has used the mark NOVARTIS in commerce since at least as early as 1997, and the
`
`mark is now famous.
`
`2.
`
`Novartis is the owner of the following U.S. registrations:
`
`- NOVARTIS, Reg. No. 2,997,235, registered September 20, 2005, for veterinary
`
`pharmaceuticals in International Class 5.
`
`- NOVARTIS, Reg. No. 2,336,960, registered April 4, 2000 for pharmaceuticals in
`
`International Class 5.
`
`

`
`
`
`These registrations are valid and subsisting, and Reg. No. 2,336,960 has become incontestable
`
`under Section 15 of the Trademark Act.
`
`3.
`
`Opposer also owns pending U.S. App. No. 75/166,964 for NOVARTIS for use in
`
`connection with education and advisory services in the health sector, the chemical-
`
`pharmaceutical sector as well as in agriculture and in the field of nutritional science in
`
`International Class 42.
`
`4.
`
`Applicant has filed an application to register the mark TAVARTIS for use in
`
`connection with “pharmaceutical and veterinary preparations,” “scientific research; technological
`
`consultation in the technology fields of chemistry, biology, medicine, pharmacy and food and
`
`nutrition,” “human medical services” and other related goods and services in International
`
`Classes 5, 42 and 44.
`
`5.
`
`6.
`
`Upon information and belief, Applicant has not yet used the TAVARTIS mark.
`
`The mark TAVARTIS to be registered by Applicant is strikingly similar in sound,
`
`appearance, meaning and commercial impression to Opposer’s registered, long-used and famous
`
`trademark NOVARTIS. The goods covered in Applicant’s application are identical and/or
`
`closely related to products and services offered by Opposer under its NOVARTIS mark that
`
`consumer confusion is likely to result.
`
`7.
`
`Upon information and belief, Applicant applied to register the TAVARTIS mark
`
`with full knowledge of Opposer's rights to the NOVARTIS mark and with full knowledge of
`
`Opposer's then-existing federal trademark registrations for the NOVARTIS mark.
`
`8.
`
`The registration of Applicant’s mark is inconsistent with Opposer’s prior rights in
`
`the NOVARTIS mark and is inconsistent with Opposer’s statutory grant of exclusivity of use of
`
`{1=o|2e5o7_n 1
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`2
`
`

`
`
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`the registered NOVARTIS mark, and would destroy Opposer’s investment and goodwill in its
`
`NOVARTIS mark.
`
`9.
`
`The mark TAVARTIS sought to be registered by Applicant is so similar to
`
`Opposer’s NOVARTIS mark as to be likely to cause confusion, or to cause mistake, or to
`
`deceive the purchasing public by creating the erroneous impression that Applicant’s goods are
`
`authorized, licensed or sponsored by Opposer, or in some other way connected with Opposer, all
`
`to Opposer’s great injury and harm. As such, any such use or registration of the mark
`
`TAVARTIS by Applicant would violate Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`10.
`
`Because Opposer’s NOVARTIS mark is famous, Applicant’s use and registration
`
`of a highly similar mark TAVARTIS will dilute the distinctiveness of Opposer’s mark by
`
`blurring and/or tarnishing it. Accordingly, Applicant’s use and registration of REVARTIS is in
`
`violation of Section 43(c) of the Federal Trademark Act, 15 U.S.C. §l125(c).
`
`WHEREFORE, Opposer requests that its Notice of Opposition be granted and that
`
`Application Serial No 79/020,841 be denied.
`
`Respectfully submitted,
`FROSS ZELNICK LEHRMAN
`"Jr’ /
`
`
`
`_
`.
`JO '
`Michael Chiappe a
`Attorneys for Opposer
`866 United Nations Plaza
`
`New York, New York 10017
`
`(212) 813-5900
`
`Dated: New York, New York
`November 5, 2007
`
`(rmzssou 1
`
`3
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`

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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned, counsel for Opposer Novartis AG, hereby certifies that a true and
`
`correct copy of the attached NOTICE OF OPPOSITION was served by First Class Mail, postage
`
`prepaid, on counsel for Applicant, on November 5, 2007, by mailing the same to Joyce H.A. Von
`
`Natzmer, Pequignot & Myers LLC, 200 Madison Avenue, Suite 1901, New York, New York
`
`10016.
`
`
`
`{I-70126507.! )
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