Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA242890
`ESTTA Tracking number:
`10/15/2008
`
`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
`
`Nexsys Electronics, Inc.
`10/15/2008
`
`667 Folsom Street
`San Francisco, CA 94107
`UNITED STATES
`
`Attorney
`information
`
`Lori S. Kozak
`Blakely Sokoloff Taylor & Zafman
`12400 Wilshire BoulevardSeventh Floor
`Los Angeles, CA 90025
`UNITED STATES
`Lori_Kozak@bstz.com, tm_filings@bstz.com, patricia_see@bstz.com
`Phone:310-207-3800
`Applicant Information
`
`77236024
`10/15/2008
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`MedImpact Healthcare Systems, Inc
`5th Floor 10680 Treena Street,
`San Diego, CA 92131
`UNITED STATES
`Goods/Services Affected by Opposition
`
`06/17/2008
`10/15/2008
`
`Class 036.
`All goods and services in the class are opposed, namely: Pharmacy online benefit services, namely,
`online communication through internet website, website portal links, e-mail and web-based database
`access for clients and pharmacies, and administration of pharmacy benefit plans, not including
`diagnostic medical imaging and physician practice management
`
`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
`
`2062099
`
`05/13/1997
`
`Application Date
`
`07/31/1995
`
`Foreign Priority
`
`NONE
`
`
`ESTTA242890
`ESTTA Tracking number:
`10/15/2008
`
`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
`
`Nexsys Electronics, Inc.
`10/15/2008
`
`667 Folsom Street
`San Francisco, CA 94107
`UNITED STATES
`
`Attorney
`information
`
`Lori S. Kozak
`Blakely Sokoloff Taylor & Zafman
`12400 Wilshire BoulevardSeventh Floor
`Los Angeles, CA 90025
`UNITED STATES
`Lori_Kozak@bstz.com, tm_filings@bstz.com, patricia_see@bstz.com
`Phone:310-207-3800
`Applicant Information
`
`77236024
`10/15/2008
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`Publication date
`Opposition
`Period Ends
`MedImpact Healthcare Systems, Inc
`5th Floor 10680 Treena Street,
`San Diego, CA 92131
`UNITED STATES
`Goods/Services Affected by Opposition
`
`06/17/2008
`10/15/2008
`
`Class 036.
`All goods and services in the class are opposed, namely: Pharmacy online benefit services, namely,
`online communication through internet website, website portal links, e-mail and web-based database
`access for clients and pharmacies, and administration of pharmacy benefit plans, not including
`diagnostic medical imaging and physician practice management
`
`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
`
`2062099
`
`05/13/1997
`
`Application Date
`
`07/31/1995
`
`Foreign Priority
`
`NONE
`
`
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Date
`
`MEDWEB
`
`NONE
`
`Class 009. First use: First Use: 1995/07/01 First Use In Commerce: 1995/07/01
`integrated computer hardware and software in the field of medical image
`communications and information
`
`1999672
`
`09/10/1996
`
`MEDWEB
`
`NONE
`
`Application Date
`
`09/08/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Class 038. First use: First Use: 1994/11/23 First Use In Commerce: 1994/11/23
`electronic transmission of data and documents via computer
`Class 042. First use: First Use: 1994/11/23 First Use In Commerce: 1994/11/23
`computer services, namely providing access to computer databases in the field
`of diagnostic medical imaging; consulting services in the field of establishing and
`providing network services for medical imaging and diagnostics among medical
`practitioners and providers; leasing of computers
`
`Attachments
`
`Scan001.PDF ( 5 pages )(119573 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 First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Lori S. Kozak/
`Lori S. Kozak
`10/15/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trademark Application
`Serial No. 77/ 236024
`
`Filed: July 23, 2007
`
`Mark: MEDWEB
`
`Published: June 17, 2008
`
`
`
`) ) ) ) )
`
`) ) ) )
`
`) )
`
`Nexsys Electronics, Inc.,
`
`Opposer,
`
`V.
`
`Medlmpact Healthcare Systems, Inc.
`
`Applicant
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`NOTICE OF OPPOSITION
`
`Nexsys Electronics, Inc., a corporation organized under the laws of the state of New
`
`York, believes that it will be damaged by the registration of the mark shown in U.S.
`
`Trademark Application Serial No. 77/236024 in International Class 36 and, by and
`
`through its undersigned attorneys, hereby opposes the same.
`
`As grounds for opposition, it is alleged that:
`
`(
`
`1.
`
`Upon information and belief, Applicant Medlmpact Healthcare Systems, Inc.
`
`(hereinafter ”Applicant”) seeks to register the mark MEDWEB for services
`
`identified as ”pharmacy online benefit services, namely, online communication
`
`through internet website, website portal links, e—mail and web—based database
`
`060531.G0l5
`
`1
`
`LSK
`
`
`
`access for clients and pharmacies, and administration of pharmacy benefit plans,
`
`not including diagnostic medical imaging and physician practice management”
`
`in International Class 14.
`
`2.
`
`Upon information and belief, the subject application was filed on July 23, 2007
`
`and was published for opposition in the Official Gazette on June 17, 2008.
`
`Opposer timely filed an extension of time to file an opposition on July 18, 2008.
`
`3.
`
`Opposer is the owner of U.S. Registration No. 1999672 for the mark MEDWEB
`
`for
`
`”electronic transmission of data and documents via computer” in
`
`International Class 38 and ”computer services, namely providing access to
`
`computer databases in the field of diagnostic medical
`
`imaging; consulting
`
`services in the field of establishing and providing network services for medical
`
`imaging and diagnostics among medical practitioners and providers; leasing of
`
`computers” in International Class 42.
`
`4.
`
`Opposer is also the owner of US. Registration No. 2062099 for the mark
`
`MEDWEB for ”integrated computer hardware and software in the field of
`
`medical image communications and information” in International Class 9.
`
`5.
`
`Opposer adopted and commenced interstate use of the mark MEDWEB for its
`
`medical and computer related goods and services, including online databases
`
`060531.G0l5
`
`2
`
`LSK
`
`
`
`and information services, long prior to any date which may be lawfully claimed
`
`by Applicant.
`
`By virtue of its long use and advertising and promotion over many years,
`
`Opposer’s MEDWEB mark enjoys considerable notoriety and fame among the
`
`relevant public. By virtue of Opposer’s considerable sales as well as the high
`
`quality of
`
`its products and services, Opposer’s MEDWEB mark enjoys
`
`considerable and valuable good will for medical and computer related goods and
`
`services.
`
`When used in connection with the Applicant's services, Applicant's proposed
`
`mark so nearly resembles Opposer’s mark as to result in confusion, mistake,
`
`and/or deception in that the public will wrongly assume that Opposer has
`
`approved of Applicant, is affiliated with Applicant, or has otherwise sanctioned,
`
`sponsored, or licensed the goods and services of Applicant.
`
`If Applicant is permitted to use and register the above-referenced proposed mark
`
`for the services named, confusion, deception and /or mistake in the trade would
`
`likely occur, thereby causing damage and injury to Opposer. Persons familiar
`
`with Opposer’s MEDWEB mark would be likely to believe that Applicant's
`
`services are licensed by, sponsored by, or are in some way connected, related or
`
`associated with Opposer.
`
`O6053l.GOl5
`
`3
`
`LSK
`
`
`
`8.
`
`The registration of Applicant's mark will cause the dilution of the distinctive
`
`quality of Opposer’s mark, to Opposer’s irreparable damage.
`
`WHEREFORE, Opposer prays that this opposition be granted and that Applicant's
`
`Application Serial No. 77/236024 for the mark MEDWEB be abandoned.
`
`Respectfully submitted,
`
`NEXSYS ELECTRONICS, INC.
`
`Dated: De» :5, ggjss
`
`ori Stockton Kozak
`
`BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN, LLP
`12400 Wilshire Boulevard, Seventh Floor
`Los Angeles, CA 90025
`(310) 207-3800
`
`06053l.G015
`
`4
`
`LSK
`
`
`
`PROOF OF SERVICE
`
`I, Tamika Tucker, hereby declare that I am employed by the law firm of
`
`BLAKELY, SOKOLOFF, TAYLOR & ZAFMAN, 12400 Wilshire Boulevard, Seventh
`
`Floor, Los Angeles, California 90025-1026; that I am over 18 years of age and not a party
`
`to the within action; and that I served the following document: NOTICE OF
`
`following address:
`
`Laura M. Lloyd
`
`Gordon & Rees, LLP
`
`101 W Broadway, Suite 1600
`
`San Diego, CA 92101-8217
`
`I certify under penalty of perjury that the foregoing is true and correct. Executed at Los
`
`Angeles, California this 15h day of October, 2008.
`
`
`
` Na e: Tamika Tucker
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
