Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA180259
`ESTTA Tracking number:
`12/12/2007
`
`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
`
`King Pharmaceuticals, Inc.
`12/12/2007
`
`501 Fifth St.
`Bristol, TN 37620
`UNITED STATES
`
`Correspondence
`information
`
`Gianni Servodidio
`Attorney
`Jenner & Block LLP
`919 Third Ave-37th Flr
`New York, NY 10022
`UNITED STATES
`gps@jenner.com Phone:1-212-891-1620
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79020119
`12/12/2007
`
`0874731
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`SHENZHEN KINGWORLD MEDICINE CO., LTD.
`1001, 10/F, Block A, Tianan Bldg Renmin Nan Road
`SHENZHEN 518016,
`CHINA
`Goods/Services Affected by Opposition
`
`08/14/2007
`12/12/2007
`
`01/24/2005
`
`Class 005.
`All goods and services in the class are opposed, namely: Herbal teas for medicinal purposes, namely
`aiding in weight loss; nutritional oils not for food or cosmetic purposes, namely oils for use in treating
`depression; pharmaceutical preparations for the treatment of respiratory diseases and disorders;
`pharmaceutical preparations for the treatment of digestive diseases and disorders; pharmaceutical
`preparations for the treatment of gynecological diseases and disorders; pharmaceutical preparations
`for the treatment of cardiovascular and cerebrovascular diseases and disorders; pharmaceutical
`preparations for the treatment of rheumatic diseases and disorders; pharmaceutical preparations for
`the treatment of orthopaedics diseases and disorders; pharmaceutical preparations for the treatment
`of endocrine diseases and disorders; pharmaceutical preparations for the treatment of urogenital
`diseases and disorders; pharmaceutical preparations for the treatment of anti-neoplastic diseases
`and disorders; pharmaceutical preparations for enhancing and improving immunity ability in the
`human body; pharmaceutical preparations for the treatment of antivirotic diseases and disorders;
`pharmaceutical preparations for the treatment of antibiosis diseases and disorders; pharmaceutical
`preparations for the treatment of infection and antisepsis for external use; vitamin preparations;
`
`

`
`diagnostic preparations for medical use; allergy capsules; decongestant capsules; anti-allergic
`medicines for humans; medicines for the treatment of gastrointestinal diseases for humans; sanitary
`sterilizing preparations; air deodorizers; air freshening preparations; depuratives for the body;
`pharmaceutical preparations for the treatment of dentalgia
`
`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
`
`2871392
`
`08/10/2004
`
`Application Date
`
`07/15/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`KING PHARMACEUTICALS
`
`NONE
`
`Class 005. First use: First Use: 1994/06/30 First Use In Commerce: 1994/06/30
`Prescription pharmaceuticals-- namely, cardiovascular medications;
`endocrinology medications; anti-infective medications; critical care medications--
`namely preparations for the treatment of infections, anticoagulants, and
`anesthetics; pediatric medications, namely-- antibiotics, respiratory medications,
`ophthalmic medications, gastrointestinal medications, and anti-inflammatory
`medications; gastrointestinal medications; anti-hematosis medications;
`ophthalmic medications; anti-inflammatory medications; and vaccines,
`antibiotics, nutritional supplements, and preparations for the treatment of
`disease in small and large animals including pets and livestock
`
`U.S. Registration
`No.
`Registration Date
`
`2927079
`
`02/22/2005
`
`Application Date
`
`07/12/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`KING PHARMACEUTICALS
`
`NONE
`
`Class 005. First use: First Use: 1994/06/30 First Use In Commerce: 1994/06/30
`pharmaceuticals for human and veterinary use, namely, morphine, codeine, and
`related injectables; cough syrup, antihistamines, decongestants, dermatological
`preparations, and vitamins
`
`Attachments
`
`74700382#TMSN.gif ( 1 page )( bytes )
`NEW_YORK-#13963-v3-Notice_of_Opposition.pdf ( 6 pages )(21938 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
`
`/Gianni Servodidio/
`Gianni Servodidio
`12/12/2007
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 79/020,119
`Published in the Official Gazette
`
`on August 14, 2007
`KING PHARMACEUTICALS, INC.
`
`Opposer,
`
`V.
`
`SHENZEN KINGWORLD MEDICINE, CO.,
`LTD.
`
`Applicant.
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`NOTICE OF OPPOSITION
`
`TO THE TRADEMARK TRIAL AND APPEAL BOARD:
`
`Opposer KING PHARMACEUTICALS, INC., is a corporation organized and existing
`
`under the laws of the State of Tennessee, domiciled at Bristol, Tennessee, and having a place of
`
`business at 501 Fifth Street, Bristol, TN 37620, believes that it would be damaged by the
`
`registration of the designation KINGWORLD and Design, for “E-lerlaal
`
`teas for medicinal
`
`purposes, namely aiding in weight
`
`loss; nutritional oils not for food or cosmetic purposes,
`
`namely oils for
`
`in treating depression; pharrnaceutical. preparations for the treatrnent of
`
`respiratory diseases and disorders; pharmaceutical preparations for the treatment of digestive
`
`diseases and disorders; pharmaceutical preparations for the treatment of gynecoltogitcal diseases
`
`and disorders; pharmaceutical preparations
`
`for
`
`the
`
`treatrnent of
`
`cardiovascular
`
`and
`
`eerebrovaseular diseases and disorders; pharrnaeeutical preparations for the treatment of
`
`rheurnatic diseases and disorders; pharmaceutical preparations for the treatment of orthopaedics
`
`diseases and disorders; pharmaceutical preparations for the treatment of endocrine diseases and
`
`disorders; pharrnaceutica.l preparations for the treatment of urogenital diseases and disorders;
`
`pharmaceutical preparations
`
`for
`
`the treatment of anti--neoplastic diseases and disorders;
`
`pharmaceutical preparations for enhancing ahd improving immunity ahility in the human ‘body;
`
`13963.3
`
`

`
`pharniaceuticai preparations
`
`for
`
`the
`
`treatment of
`
`antivirotic diseases
`
`and disorders;
`
`pharrnaeeuticai preparations
`
`for
`
`the
`
`treatment of
`
`antibiosis
`
`diseases
`
`and disorders;
`
`pharrnaceuticai preparations for the treatment of infection and antisepsis for external use; vitamin
`
`preparations; diagnostic preparations for medical use; allergy capsules; decongestant capsules;
`
`anti—aliergie medicines for humans; medicines for the treatment of gastrointestinal diseases for
`
`humans;
`
`sanitary sterilizing preparations;
`
`air deodorizers;
`
`air
`
`freshening preparations;
`
`depuratives
`
`for
`
`the body; pharmaceutical preparations
`
`for
`
`the tr‘eatment of dentalgia”
`
`(Int. Class 5), and having requested extensions of time up to and until December 12, 2007 to
`
`oppose said, hereby opposes same.
`
`As grounds of opposition, it is alleged that:
`
`COUNT I
`
`l.
`
`Opposer, by itself or through its related companies, is now and has for many years
`
`past been engaged in the sale and distribution of a full line of pharmaceutical products and
`
`related services under its well—knoWn KING PHARMACEUTICALS mark.
`
`2.
`
`Since at least as early as 1994, Opposer, by itself or through its related companies,
`
`adopted and began using the KING PHARMACEUTICALS mark for a full
`
`line of
`
`pharmaceutical
`
`products
`
`in
`
`the United States. Since
`
`this
`
`time, Opposer’s KING
`
`PHARMACEUTICALS mark has been continuously and prominently used and promoted in
`
`association with
`
`a wide
`
`variety
`
`of
`
`pharmaceutical
`
`products. Opposer’s KING
`
`PHARMACEUTICALS mark has come to be well—known and of great value to Opposer and is
`
`recognized and relied upon by the trade and the public as identifying the products sold by
`
`Opposer and distinguishing them from the products of others.
`
`3.
`
`Opposer’s products sold under the KING PHARMACEUTICALS mark have
`
`been extensively advertised and promoted, and widely distributed, offered for sale and sold in
`
`interstate
`
`commerce
`
`throughout
`
`the United
`
`States. Accordingly, Opposer’s KING
`
`PHARMACEUTICALS mark has come to be famous and widely recognized and relied upon by
`
`the trade and the public as representing the source of Opposer’s products.
`
`13963.3
`
`

`
`4.
`
`Since long prior to January 24, 2005, the filing date of Applicant’s request for
`
`Extension of Protection or any use in commerce of the designation KINGWORLD and Design
`
`by Applicant, Opposer, by itself or through its related companies, commenced use of the KING
`
`PHARMACEUTICALS mark on a Variety of pharmaceutical products distributed in the United
`
`States. Opposer, by itself or through its related companies, has continuously used and is currently
`
`using the KING PHARMACEUTICALS mark in connection with a Variety of pharmaceutical
`
`products.
`
`5.
`
`Based on the foregoing, Opposer has established common law rights in the KING
`
`PHARMACEUTICALS mark and owns all right, title and interest in the following United States
`
`registrations:
`
`KING PHARMACEUTICALS, Reg. No. 2,871,392 for “Prescription
`pharmacenticals---- namely, cardiovascular medications; endocrinology
`medications; anti—infective medications; critical care medications—— namely
`preparations for the treatment of infections, anticoagulants, and anesthetics;
`pediatric medications, namely~~ antibiotics, respiratory medications, ophthalmic
`medications, gastrointestinal medications, and anti—intlai:nin,atory medications;
`gastrointestinal medications; anti--liematosis medications; ophthalmic
`niedications; anti~inflainmatory medications; and vaccines, antibiotics, nutritional
`supplements, and preparations for the treatment of disease in small and large
`animals including pets and livestock”
`
`KING PHARMACEUTICALS, Reg. No. 2,927,079 for “pliai'rnacenticals for
`,‘nnin,an and Veterinary use, namely, ,‘(i’l0I‘pl’li,Yi€:, codeine, and related injectables;
`con gli syiup, antihistamines, decongestants, dermatological preparations, and
`Vitai'nins‘”’
`
`6.
`
`On or about January 24, 2005, Applicant filed Application Serial No. 79/020119
`
`to register the designation KINGWORLD and Design in International Class 5 for Various
`
`products including but not limited to a number of pharmaceutical preparations.
`
`7.
`
`Applicant’s designation KINGWORLD and Design consists of the primary
`
`element of the KING PHARMACEUTICALS mark and closely resembles and invokes
`
`Opposer’s KING PHARMACEUTICALS mark.
`
`8.
`
`Applicant’s
`
`pharmaceutical
`
`preparations
`
`sold
`
`under
`
`the
`
`designation
`
`KINGWORLD and Design are likely to travel in the same channels of trade as Opposer’s
`
`13963.3
`
`

`
`pharmaceutical products sold under the KING PHARMACEUTICALS mark, and would likely
`
`be purchased by the same class of consumers as purchase Opposer’s products, causing
`
`consumers and the trade to wrongly associate Applicant’s products with Opposer, and causing
`
`the purchasing public to assume that goods bearing designation KINGWORLD and Design
`
`emanate from or are approved, licensed or sponsored by Opposer, have the same source as the
`
`Opposer’ s products, or that Applicant is affiliated with Opposer and its business.
`
`9.
`
`Applicant’s designation KINGWORLD and Design so closely resembles
`
`Opposer’s KING PHARMACEUTICALS mark when applied to the goods of Applicant as to be
`
`likely to cause confusion,
`
`to cause mistake and to deceive consumers as to the origin,
`
`sponsorship and approval of Applicant’s products, with consequent injury to Opposer and to the
`
`public in violation of Section 2(d) of the Trademark Act, 15 U.S.C. § l052(d).
`
`l0.
`
`Opposer will be damaged by the registration sought by Applicant because such
`
`registration will support and assist Applicant
`
`in the confusing and misleading use of the
`
`designation sought to be registered, and will give color of exclusive statutory rights in Applicant
`
`in violation and derogation of the prior and superior rights of Opposer.
`
`COUNT II
`
`ll.
`
`Opposer repeats and realleges the allegations contained in paragraphs l—l0 above
`
`as if the same were set forth at length herein.
`
`l2.
`
`Opposer’s KING PHARMACEUTICALS marks is not only well—known, but is
`
`also famous as defined in Section 43(c) of the federal Trademark Act, 15 U.S.C. §ll25(c)(l).
`
`13.
`
`Due to the fame of Opposer’s KING PHARMACEUTICALS mark in the United
`
`States, the registration of Applicant’s KINGWORLD and Design designation will cause dilution
`
`of the distinctive quality of Opposer’s famous KING PHARMACEUTICALS mark, as defined
`
`in Section 43(c) of the federal Trademark Act, 15 U.S.C. § lll5(c).
`
`WHEREFORE, Opposer believes that
`
`it will be damaged by the registration of
`
`Applicant’s mark and prays that the request for Extension of Protection filed under Serial No.
`
`79/020,119 be refused and denied registration.
`
`13963.3
`
`

`
`Please recognize as attorneys for Opposer in this proceeding, Gianni P. Servodidio and
`
`Elizabeth Valentina (members of the Bar of the State of New York), and the law firm JENNER
`
`& BLOCK LLP, 919 Third Avenue, 37th Floor, New York, New York 10022. Please direct all
`
`communications to Gianni P. Servodidio at Jenner & Block LLP.
`
`Dated: December 12, 2007
`
`Respectfully submitted,
`
`By:/Gianni SeVodidio/
`Gianni P. Servodidio
`
`Elizabeth Valentina
`
`JENNER & BLOCK LLP
`
`919 Third Avenue
`
`New York, New York 10022
`
`(212) 891-1600
`
`Attorneys for Opposer
`KING PHARMACEUTICALS, INC.
`
`13963.3
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing NOTICE OF
`
`OPPOSITION has been served upon:
`
`JAMES M . SLATTERY
`
`BIRCH STEWART KOLASH & BIRCH LLP
`
`P.O. BOX 747
`
`FALLS CHURCH, VA 22040-0747
`
`by depositing a true copy of the same with the United States Postal Service as First Class Mail on
`
`December 12, 2007.
`
`/Martha Whitley/
`
`13963.3