Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA205361
`ESTTA Tracking number:
`04/16/2008
`
`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
`
`Penumbra, Inc.
`04/16/2008
`
`2401 Merced Street, Suite 200
`San Leandro, CA 94577
`UNITED STATES
`
`Correspondence
`information
`
`Simone M. Katz
`Shartsis Friese LLP
`One Maritime Plaza 18th Floor
`San Francisco, CA 94111
`UNITED STATES
`skatz@sflaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79032245
`04/16/2008
`
`0906850
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`12/18/2007
`04/16/2008
`
`07/25/2006
`
`Paion Deutschland GmbH
`Martinstr. 10-12
`52062 Aachen,
`GERMANY
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Pharmaceutical preparations, namely,
`pharmaceutical preparations derived from living organism proteins and peptides for treatment and
`diagnosis of tumors, cancer, dermatological diseases, spinal cord injuries, osteoporosis, cell
`degeneration, allergies, endocrine diseases, hormonal imbalances, nervous diseases, diseases of
`the respiration system, kidney and bladder diseases, infectious diseases, gastrointestinal diseases,
`pain and epilepsy; pharmaceutical anti-inflammatory preparations; pharmaceutical nutriceutical
`preparations for the treatment of strokes, neuron damage, thrombotic diseases, tumors, cancer, heart
`disease including heart failure, circulation disorders, dermatological diseases, spinal cord injuries,
`osteoporosis, cell degeneration, allergies, endocrine diseases, hormonal imbalances, nervous
`diseases, diseases of the respiration system, kidney and bladder diseases, infectious diseases,
`gastrointestinal diseases, pain and epilepsy; blood cloning test kits comprised of medical diagnostic
`reagents; medical and clinical diagnostic reagents for clinical or medical laboratory use;
`Pharmaceutical preparations, namely, thrombolytic, fibrinolytic anti-coagulative, antithrombotical or
`neuroprotective substances for the treatment of blood clotting, cell protection and cell regeneration;
`products from biotechnological methods, namely, proteins for therapeutic and diagnostic use in the
`
`

`
`treatment and diagnosis of blood clotting disorders
`Class 010.
`All goods and services in the class are opposed, namely: Laboratory and analysis apparatus for
`medical, pharmaceutical and laboratory tests; medical devices, namely, coated catheters, medical
`stents, surgical implants comprising artificial materials; membranes intended for medical use, namely,
`filters for dialysis, hemofiltration
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`The mark is merely descriptive
`
`Trademark Act section 2(d)
`Trademark Act section 2(e)(1)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`78679046
`
`Application Date
`
`07/26/2005
`
`04/29/2008
`
`Foreign Priority
`Date
`PENUMBRA STROKE SYSTEM
`
`NONE
`
`NONE
`
`Class 010. First use: First Use: 2005/11/00 First Use In Commerce: 2005/11/00
`medical devices for treatment of strokes; namely, devices for removal of
`thromboembolic material from arteries
`
`Attachments
`
`78679046#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition.pdf ( 5 pages )(23719 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Signature
`Name
`Date
`
`/Simone M. Katz/
`Simone M. Katz
`04/16/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PENUMBRA, INC.,
`
`Opp. No.2
`
`Opposer,
`
`V.
`
`PAION DEUTSCHLAND GMBH,
`
`Applicant.
`
`Ser. No.: 79/032245
`
`Date of Publication:
`
`December 18, 2007
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer, PENUMBRA, INC., a Delaware corporation having its principal place of
`
`business at 2401 Merced Street, Suite 200, San Leandro, California 94577 (“Opposer”),
`
`believes that it will be damaged by registration of the mark PENUMBRA IS BRAIN
`
`shown in Application Serial No. 79/032245 (“Application”) filed by Paion Deutschland
`
`GmbH (“Applicant”), and hereby opposes the same pursuant to the provisions of Section
`
`13 of the Lanham Act (15 U.S.C. § 1063). The Application was published in the Official
`
`Gazette on December 18, 2007. Opposer was granted an extension of time until April 16,
`
`2008 to oppose the Application.
`
`As grounds for the opposition it is alleged that:
`
`1.
`
`Opposer is a medical device company that develops and manufactures
`
`products to treat patients suffering from strokes and other neurovascular diseases.
`
`Opposer is the owner of common law rights in the trademarks PENUMBRA STROKE
`
`SYSTEM, PENUMBRA SYSTEM, and the logo design PENUMBRA.
`
`NOTICE OF OPPOSITION
`
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`

`
`2.
`
`Opposer is also the owner of Application Serial No. 78/679046, filed as an
`
`intent—to—use application on July 26, 2005 for the trademark PENUMBRA STROKE
`
`SYSTEM for “medical devices for treatment of strokes; namely, devices for removal of
`
`thromboembolic material from arteries” in International Class 10, and subsequently
`
`claimed a first use in commerce of November 2005.
`
`3.
`
`On information and belief, Applicant is a pharmaceutical company based in
`
`Germany that develops drugs for the treatment of stroke and other thrombotic diseases.
`
`4.
`
`Applicant filed its Application on July 25, 2006, based on Section 66(a) of
`
`the Lanham Act (15 U.S.C. §ll4lf(a)), claiming a priority date of January 31, 2006, for
`
`among other goods and services, “medical devices, namely, coated catheters, medical
`
`stents, surgical implants comprising artificial materials; membranes intended for medical
`
`use, namely,
`
`filters
`
`for dialysis, hemofiltration” in International Class
`
`10, and
`
`“pharmaceutical nutriceutical preparations for the treatment of strokes, neuron damage,
`
`thrombotic diseases” in International Class 5.
`
`5.
`
`Opposer began to use its PENUMBRA STROKE SYSTEM trademark for
`
`its medical devices in the United States prior to the filing and priority dates of the
`
`Application.
`
`6.
`
`On information and belief, Applicant uses the mark PENUMBRA IS
`
`BRAIN, if at all, as a slogan to identify its goods and services.
`
`LIKELIHOOD OF CONFUSION gCLAIM 1}
`
`7.
`
`The facts alleged in paragraphs 1 through 6 are restated and incorporated
`
`herein by reference.
`
`NOTICE OF OPPOSITION
`
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`
`

`
`8.
`
`Applicant’s goods in International Classes 10 and 5 are identical to and/or
`
`closely related to Opposer’s medical devices sold under the PENUMBRA STROKE
`
`SYSTEM trademark.
`
`9.
`
`The PENUMBRA IS BRAIN mark is comprised of and begins with the
`
`dominant
`
`term PENUMBRA that appears
`
`in Opposer’s PENUMBRA STROKE
`
`SYSTEM trademark.
`
`10.
`
`The PENUMBRA IS BRAIN mark so resembles Opposer’s PENUMBRA
`
`STROKE SYSTEM trademark, when applied to medical devices and/or pharmaceuticals
`
`that treat strokes, as to be likely to cause confusion, to cause mistake or to deceive the
`
`consuming public by creating the false impression that Applicant’s goods originate with
`
`or come from the same source as Opposer’s goods, or are endorsed by, sponsored by or
`
`connected in some way with Opposer.
`
`11.
`
`On information and belief, Applicant has taken the position that Opposer’s
`
`logo design PENUMBRA is likely to cause confusion with Applicant’s PENUMBRA IS
`
`BRAIN mark in the European Community, and has opposed registration of said mark on
`
`those grounds.
`
`12.
`
`Registration of the Application should be refused under Section 2(d) of the
`
`Lanham Act (15 U.S.C. § l052(d)) for the reason that the PENUMBRA IS BRAIN mark
`
`consists of or comprises a mark that so resembles Opposer’s previously used and not
`
`abandoned PENUMBRA STROKE SYSTEM trademark for medical devices, as to be
`
`likely, when applied to Applicant’s goods, to cause confusion, mistake and/or to deceive.
`
`THE PENUMBRA IS BRAIN MARK IS MERELY DESCRIPTIVE AND HAS
`
`NOTICE OF OPPOSITION
`
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`
`

`
`NOT ACQUIRED DISTINCTIVENESS {CLAIM 21
`
`13.
`
`The facts alleged in paragraphs 1 through 6 are restated and incorporated
`
`herein by reference.
`
`14.
`
`The United States Patent and Trademark Office (“USPTO”) has taken the
`
`position that the use of the term PENUMBRA for medical devices that treat strokes
`
`merely describes a purpose or function of the goods.
`
`15.
`
`Applicant uses the PENUMBRA IS BRAIN mark in relation to medical
`
`devices, including catheters and stents, and pharmaceuticals for the treatment of strokes.
`
`16.
`
`Based on the prior position taken by the USPTO, the PENUMBRA IS
`
`BRAIN mark, when used in connection with Applicant’s goods, merely describes a
`
`function or purpose of the goods.
`
`17.
`
`The PENUMBRA IS BRAIN mark has not become distinctive of the
`
`Applicant’s goods in commerce.
`
`18.
`
`Registration of the Application should be refused under Section 2(e) of the
`
`Lanham Act (15 U.S.C. § 1052(e)) because the PENUMBRA IS BRAIN mark, when
`
`used in connection with Applicant’s goods, is merely descriptive of them, and Applicant
`
`should not be granted an exclusive right to use the term PENUMBRA for medical
`
`devices or pharmaceuticals that treat stroke patients.
`
`WHEREFORE, Opposer prays that this Opposition be sustained and registration
`
`of Application Serial No. 79/032245 be refused.
`
`///
`
`NOTICE OF OPPOSITION
`
`- 4 -
`
`

`
`Dated: April 16, 2008
`
`Respectfully Submitted
`SHARTSIS FRIESE LLP
`
`By: /Simone M. KatZ/
`SIMONE M. KATZ
`
`Attorneys for Opposer
`PENUMBRA, INC.
`
`6907\001\SKATZ\1502894.4
`
`NOTICE OF OPPOSITION
`
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