Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA260100
`ESTTA Tracking number:
`01/12/2009
`
`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
`
`PIONEER SURGICAL TECHNOLOGY, INC.
`01/11/2009
`
`375 RIVER PARK CIRCLE
`MARQUETTE, MI 49855
`UNITED STATES
`
`Attorney
`information
`
`John E. Lyhus
`Fitch, Even, Tabin & Flannery
`120 South LaSalle, Suite 1600
`Chicago, IL 60603
`UNITED STATES
`trademark@fitcheven.com Phone:3125777000
`Applicant Information
`
`78506558
`01/12/2009
`
`NONE
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`PAION DEUTSCHLAND GMBH
`MARTSTRASSE 10-12
`AACHEN, 52062
`GERMANY
`Goods/Services Affected by Opposition
`
`07/15/2008
`01/11/2009
`
`NONE
`
`Class 001.
`All goods and services in the class are opposed, namely: Reagents for scientific or medical research
`use; diagnostic reagents for scientific or research use, biochemical reagents for scientific or medical
`research use; reagents for scientific or research use, none of the foregoing goods for use in the
`agricultural industry, including biopharming
`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 clotting test kits comprised of medical diagnostic
`reagents; medical and clinical diagnostic reagents for clinical or medical laboratory use, none of the
`foregoing goods for use in the agricultural industry, including biopharming
`Class 035.
`All goods and services in the class are opposed, namely: Computerized database management,
`namely, editing, evaluating and processing data for third parties
`Class 041.
`All goods and services in the class are opposed, namely: Educational services, namely, providing
`informational events in the nature of seminars and workshops in the fields of pharmacology, medical
`procedures, product research and development of medical devices and pharmaceutical preparations,
`none of the foregoing services offered to the agricultural industry, including biopharming
`Class 042.
`All goods and services in the class are opposed, namely: Database development for others;
`computer programming for others; performing chemical analyses for others; technical consultation in
`the field of biotechnology; licensing of intellectual property; services of a biotechnological laboratory,
`namely, conducting lab research for others in the field of drug research and development;
`pharmaceutical consulting, namely, providing pharmaceutical advice to others regarding
`governmental regulatory laws and practices, performing pre-clinical studies, quality control;
`preparation of expert opinions in the field biology, molecular biology, pharmacology, chemistry, bio-
`technology, bio-chemistry, product research and development of medical devices and pharmaceutical
`preparations, and molecular diagnostic services of a bio-chemist, namely, product research and
`development services for others in the area of gene expression analysis, namely, proteogenomic
`profiling, DNA-sequencing, drug target development and identifying, designing and analyzing
`therapeutic proteins; diagnostic services in the field of molecular science, comparative genome
`analysis, DNA-arrays including DNA-microarrays, creation of nucleic acid libraries, screening of
`nucleic acid libraries; performance of pre-clinical studies, namely, conducting and managing pre-
`clinical trials and studies of pharmaceutical, bio-technology and health care products; bio-chemical
`and biotechnological research and development for others, namely, bio-technological research and
`development regarding medical disease diagnosis and pharmacology, namely, prenatal diagnostic
`and identification of hereditary factors leading to diseases, identification of genes involved in the
`formation of cancer, identification of target molecules for cancer treatment. scientific research on and
`development of medical diagnostic equipment and pharmaceutical preparations and products for the
`treatment 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; scientific and technical consulting for others in the field of medical science and
`drug research, namely, identifying, designing, and developing drugs, specifically, therapeutic
`proteins, gene expression analysis, namely, proteogenomic profiling, DNA-sequencing, drug target
`development, identification and design; medical science research services for others, namely,
`prenatal diagnostics, molecular diagnostics, comparative genome analysis, DNA-arrays including
`DNA microarrays, creating and screening of nucleic acid libraries, identifying hereditary factors
`leading to diseases, identifying genes involved in the formation of cancer, identification of target
`molecules for cancer treatment, none of the foregoing services offered to the agricultural industry,
`including biopharming
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79028077
`01/12/2009
`
`0896419
`
`Paion Deutschland GmbH
`Martinstr. 10-12
`52062 Aachen,
`GERMANY
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`11/04/2008
`
`05/11/2006
`
`

`
`Goods/Services Affected by Opposition
`
`Class 001.
`All goods and services in the class are opposed, namely: Research reagents; biochemical
`preparations for scientific purposes
`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 nutraceutical
`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 clotting 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 and
`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 devices for medical and
`pharmaceutical investigations, namely, portable medical devices for conducting blood specimen
`analysis of the human blood clotting system and for conducting medical diagnostic tests in the nature
`of medical apparatus for diagnosing suspected heart attacks, strokes, thrombosis, circulations and
`vascular disorders, embolisms, kidney failures, liver damages, infections, viral infections, sepsis,
`inflammatory and neuronal disorders
`Class 041.
`All goods and services in the class are opposed, namely: Educational services, namely, providing
`seminars, educational exhibitions, correspondence courses, colloquiums, conferences, congresses,
`and workshops in the field of biotechnology, pharmacology, biochemistry, molecular biology, medical
`procedures, product research and development of medical devices and pharmaceutical preparations,
`research procedures, protein design diagnostics, molecular diagnostics, proteogenomic profiling,
`gendiagnostics
`Class 042.
`All goods and services in the class are opposed, namely: Database development for others;
`computer programming for others; performing chemical analyses for others; technical consultation in
`the field of biotechnology; services of a biotechnological laboratory, namely, conducting lab research
`for others in the field of drug research and development; pharmaceutical consulting, namely,
`performing pre-clinical studies, quality control; preparation of technical expert opinions in the field of
`chemical engineering, biology, molecular biology, pharmacology, chemistry, bio-technology, bio-
`chemistry, product research and development of medical devices and pharmaceutical preparations;
`and molecular diagnostic services of a bio-chemist, namely, product research and development
`services for others in the areas the treatment and diagnosis of stroke, neuron damage, thrombotic
`diseases, heart diseases including heart failure, circulation disorders, gene expression analysis,
`namely, protogenomic profiling, DNA-sequencing, drug target development and identifying, designing
`and analyzing therapeutic proteins, diagnostic services in the field of molecular science, comparative
`genome analysis, DNA-arrays including DNA-microarrays, creation of nucleic acid libraries, screening
`of nucleic acid libraries; performance of pre-clinical studies, namely, conducting and managing pre-
`clinical trials and studies of pharmaceutical, bio-technology and health care products; bio-chemical
`and biotechnological research and development for others, namely, bio-technical research and
`development regarding medical disease diagnosis and pharmacology, namely, prenatal diagnostic
`and identification of hereditary factors leading to diseases, identification of genes involved in the
`formation of cancer, identification of target molecules for cancer treatment, scientific research on and
`development of medical diagnostic equipment and pharmaceutical preparations and products for the
`treatment 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; scientific and technical consulting for others in the field of medical science and
`drug research, namely, identifying, designing, and developing drugs, specifically, therapeutic
`proteins, gene expression analysis, namely, proteogenomic profiling, DNA-sequencing, drug target
`development, identification and design; medical science research services for others in the fields of
`prenatal diagnostics, molecular diagnostics, comparative genome analysis, DNA-arrays including
`DNA-microarrays, creating and screening of nucleic acid libraries, identifying hereditary factors
`leading to diseases, identifying genes involved in the formation of cancer, identification of target
`molecules for cancer treatment
`
`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
`
`2264842
`
`07/27/1999
`
`PIONEER
`
`NONE
`
`Application Date
`
`05/27/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Class 010. First use: First Use: 1994/03/31 First Use In Commerce: 1994/03/31
`SURGICAL CABLES, TENSIONERS, CRIMPERS, CRIMPS, AND OTHER
`IMPLANTABLE ORTHOPEDIC DEVICES
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3321663
`
`10/23/2007
`
`PIONEER
`
`Application Date
`
`05/24/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2006/12/07 First Use In Commerce: 2006/12/07
`Implantable orthopedic devices, namely, surgical implants and bone implants
`composed of living or natural materials; spinal fixation and stabilization materials
`composed of living or natural materials; Bone fillers consisting of living or natural
`materials; Bone cement for medical purposes
`Class 010. First use: First Use: 1994/03/31 First Use In Commerce: 1994/03/31
`
`

`
`Implantable orthopedic devices, namely, surgical implants and bone implants
`composed of artificial materials; spinal fixation and stabilization devices; surgical
`instruments for use in orthopedic and spinal surgery
`
`Attachments
`
`78891855#TMSN.jpeg ( 1 page )( bytes )
`Pioneer v. Paion Notice of Opposition.pdf ( 20 pages )(2535180 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
`
`/John E. Lyhus/
`John E. Lyhus
`01/12/2009
`
`

`
`IN THE UNITED STATES PATENT AND TRAEMARK OFFICE
`BEFORE THE TRAEMARK TRIAL AND APPEAL BOAR
`
`OPPOSITION No.
`
`) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )
`
`Pioneer Surgical Technology, Inc.
`Opposer,
`
`v.
`
`Paion Deutschland GmbH
`Applicant.
`
`Application No.
`Filed:
`Mark:
`Published:
`
`78/506,558
`October 27,2004
`PAIONEER
`July 15, 2008
`
`Application No.
`Filed:
`Mark:
`Published:
`
`79/028,077
`May 11, 2006
`PAIONEERING
`November 4, 2008
`
`NOTICE OF OPPOSITION
`
`Pioneer Surgical Technology, Inc., (hereinafter "Pioneer"), a Michigan Corporation,
`
`having a principal place of
`
`business at 375 River Park Circle, Marquette, Michigan 49855,
`
`believes it wil be damaged by the registration on the Principal Register of the marks
`
`PAIONEER, Application No. 78/506,558, and PAIONEERING, Application No. 79/028,077,
`
`both filed by Paion Deutschland GmbH, identified as a corporation ofthe Federal Republic of
`
`Germany with an address of
`
`Martinstr. 10-12,52062 Aachen, Gennany, (hereinafter "Paion").
`
`Pioneer hereby opposes these P AIONEER and P AIONEERING marks upon the following
`
`grounds:
`
`COUNT 1- LIKELIHOOD OF CONFUSION
`
`1. Pioneer is a leading company in the medical field and in the field of spinal and
`
`orthopedic devices and implants, and surgical instruments and goods in the United
`
`States.
`
`

`
`2. Pioneer began using the PIONEER mark in commerce as its trade name and
`
`source identifier for implantable orthopaedic devices, spinal implants and devices, and surgical
`
`instruments at least as early as March 31, 1994, and over the course of time, and long before the
`
`filing date of Application Nos. 78/506558 and 79/028077, Pioneer has extensively used its
`
`PIONEER mark as a trade name and source identifier within the medical field throughout the
`
`United States and has continually expanded use and bridged its PIONEER mark into new and
`
`related medical fields.
`
`3. Based on its extensive use of the PIONEER mark in commerce since at least
`
`March 31,1994, Pioneer applied for registration of
`
`the mark PIONEER on May 27,1998 with
`
`the U.S. Patent and Trademark Offce (USPTO) and on July 27, 1999, the USPTO issued
`
`Registration No. 2,264,842 for "surgical cables, tensioners, crimpers, crimps, and other
`
`implantable orthopedic devices" in international class 10, which incontestable Registration is
`
`presently valid and subsisting and is prima facie evidence of Pioneer's exclusive right to use the
`
`PIONEER mark in commerce in connection with the specified goods. A current printout of
`
`information from the USPTO .electronic database records showing the current status and title of
`
`Registration No. 2,264,842 appears in Exhibit A.
`
`4. On May 24, 2006, Pioneer applied for registration of the mark PIONEER and on
`
`October 23, 2007 the USPTO issued Registration No. 3,321,663 for "Implantable orthopedic
`
`devices, namely, surgical implants and bone implants composed of living or natural materials;
`
`spinal fixation and stabilization materials composed of living or natural materials; Bone filers
`
`consisting of living or natural materials; Bone cement for medical purposes" in International
`
`Class 5 and "Implantable orthopedic devices, namely, surgical implants and bone implants
`
`composed of artificial materials; spinal fixation and stabilization deviges; surgical instruments
`
`for use in orthopedic and spinal surgery in International class 1 0." Said Registration is presently
`
`2 oEll
`
`

`
`valid and subsisting on the Principal Register and is prima facie evidence of Pioneer's exclusive
`
`right to use the PIONEER mark in commerce in connection with the specified goods. A current
`
`printout of information from the USPTO electronic database records showing the current status
`
`and title of
`
`Registration No. 3,321,663 appears in Exhibit B.
`
`5. Further to its filing in the United States, Pioneer fied an application for extension
`
`of protection of its PIONEER mark in the European Union, Community Trademark Application
`
`No. 912239, based on
`
`Registration No. 3,321,663.
`
`6. On or about November 27,2007, Paion filed a presently pending opposition in the
`
`European Union against Pioneer's Community Trademark Application No. 912239, in which
`
`Paion alleges confusing similarity between the PIONEER mark and a certain P AIONEER mark,
`
`Community Trademark Registration No. 4048302.
`
`7. Through Application No. 78/506558, filed October 27, 2004 and published July
`
`15, 2008, Paion seeks registration of the mark PAIONEER based on Community Trademark
`
`Registration No. 4048302 under Section 44(e) for goods and services specified as follows:
`
`Reagents for scientific or medical research use; diagnostic reagents for scientific
`or research use, biochemical reagents for scientific or medical research use;
`reagents for scientific or research use, none of the foregoing goods for use in the
`agricultural industry, including biopharming in International Class 1;
`
`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, dennatological 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 clotting test kits comprised of medical diagnostic reagents;
`laboratory use,
`
`clinical diagnostic reagents for clinical or medical
`
`---medical and
`
`30fll
`
`

`
`none of the foregoing goods for use in the agrcultural industry, including
`biopharming in International Class 5;
`
`Computerized database management, namely, editing, evaluating and processing
`data for third paries in International Class 35;
`
`Educational services, namely, providing informational events in the nature of
`seminars and workshops in the fields of pharmacology, medical procedures,
`product research and development of medical devices and pharmaceutical
`preparations, none of the foregoing services offered to the agrcultural industry,
`including biophanning in International Class 41; and
`
`licensing
`
`Database development for others; computer programming for others; performing
`chemical analyses for others; technical consultation in the field of biotechnology;
`of intellectual property; services ofa biotechnological laboratory,
`namely, conducting lab research for others in the field of drug research and
`development; pharmaceutical consulting, namely, providing pharmaceutical
`advice to others regarding governmental regulatory laws and practices,
`performing pre-clinical studies, quality control; preparation of expert opinions in
`the field biology, molecular biology, pharmacology, chemistry, bio-technology,
`bio-chemistry, product research and development of medical devices and
`pharmaceutical preparations, and molecular diagnostic services of a bio-chemist,
`namely, product research and development services for others in the area of gene
`expression analysis, namely, proteogenomic profiling, DNA-sequencing, drug
`target development and identifying, designing and analyzing therapeutic proteins;
`diagnostic services in the field of molecular science, comparative genome
`analysis, DNA-arrays including DNA-microarrays, creation of nucleic acid
`libraries, screening of nucleic acid libraries; performance of pre-clinical studies,
`namely, conducting and managing pre-clinical trials and studies of
`pharmaceutical, bio-technology and health care products; bio-chemical and
`biotechnological research and development for others, namely, bio-technological
`research and development regarding medical disease diagnosis and
`hereditary factors
`leading to diseases, identification of genes involved in the formation of cancer,
`identification of target molecules for cancer treatment. scientific research on and
`development of medical diagnostic equipment and pharmaceutical preparations
`and products for the treatment 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; scientific and technical consulting for others in the field of medical
`science and drug research, namely, identifying, designing, and developing drugs,
`specifically, therapeutic proteins, gene expression analysis, namely,
`proteogenomic profiling, DNA":sequencing, drug target development,
`identification and design; medical science research services for others, namely,
`prenatal diagnostics, molecular diagnostics, comparative genome analysis, DNA-
`arrays including DNA microarrays, creating and screening of nucleic acid
`libraries, identifying hereditary factors leading to diseases, identifying genes
`40fll
`
`pharmacology, namely, prenatal diagnostic and identification of
`
`

`
`involved in the formation of cancer, identification of target molecules for cancer
`treatment, none of the foregoing services offered to the agrcultural industry,
`including biophanning in International Class 42.
`
`8. Upon information and belief, Paion cannot claim any priority in its PAIONEER
`
`mark earlier than the October 27, 2004 filing date of its Application.
`
`9. Upon information and belief, Paion has not made bona fide use in commerce of
`
`the P AIONEER mark in connection 'with any of the goods or services specified in its
`
`Application.
`
`10. Through Application No. 79/028,077, fied May 11, 2006
`
`with a priority claim of
`
`November 14, 2005 and published November 4, 2008, Paion seeks registration of the mark
`
`P AIONEERING based on Section 66(a) for goods and services specified as follows:
`
`Research reagents; biochemical preparations for scientific purposes in
`Internationài Class 1;
`
`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; pharnaceutical nutraceutical 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 clotting 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 and 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
`blood clotting disorders in International Class 5;
`
`diagnosis of
`
`Laboratory devices for medical and pharmaceutical investigations, namely,
`portable medical devices for conducting blood specimen analysis of the human
`blood clotting system and for conducting medical diagnostic tests in the nature of
`medical apparatus for diagnosing suspected heart attacks, strokes, thrombosis,
`50fll
`
`

`
`circulations and vascular disorders, embolisms, kidney failures, liver damages,
`infections, viral infections, sepsis, inflammatory and neuronal disorders in
`International Class 10;
`
`Educational services, namely, providing seminars, educational exhibitions,
`correspondence courses, colloquiums, conferences, congresses, and workshops in
`the field of biotechnology, pharmacology, biochemistry, molecular biology,
`medical procedures, product research and development of medical devices and
`pharmaceutical preparations, research procedures, protein design diagnostics,
`molecular diagnostics, proteogenomic profiling, gendiagnostics in International
`Class 41; and
`
`disorders, gene expression analysis, namely, proto
`
`Database development for others; computer programming for others; performing
`chemical analyses for others; technical consultation in the field of biotechnology;
`services of a biotechnological laboratory, namely, conducting lab research for
`others in the field of drug research and development; pharmaceutical consultng,
`namely, performing pre-clinical studies, quality control; preparation of technical
`expert opinions in the field of chemical engineering, biology, molecular biology,
`pharmacology, chemistry, bio-technology, bio-chemistry, product research and
`development of medical devices and pharmaceutical preparations; and molecular
`diagnostic services of a bio-chemist, namely, product research and development
`services for others in the areas the treatment and diagnosis of stroke, neuron
`damage, thrombotic diseases, heart diseases including heart failure, circulation
`genomic profiling, DNA-
`sequencing, drug target development and identifying, designing and analyzing
`therapeutic proteins, diagnostic services in the field of molecular science,
`comparative genome analysis, DNA-arays including DNA-microarrays, creation
`of nucleic acid libraries, screening of nucleic acid libraries; performance of pre-
`clinical studies, namely, conducting and managing pre-clinical trials and studies
`of pharmaceutical, bio-technology and health care products. bio-chemical and
`biotechnological research and development for others, namely, bio-technical
`research and development regarding medical disease diagnosis and
`hereditary factors
`formation of cancer,
`identification of target molecules for cancer treatment, scientific research on and
`and pharmaceutical preparations
`and products for the treatment 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; scientific and technical consulting for others in the field of medical
`science and drug research, namely, identifying, designing, and developing drugs,
`specifically, therapeutic proteins, gene expression analysis, namely,
`proteogenomic profiling, DNA-sequencing, drug target development,
`identification and design; medical. science research services for others in the fields
`of prenatal diagnostics, molecular diagnostics, comparative genome analysis,
`DNA-arrays including DNA-microarrays, creating and screening of nucleic acid
`libraries, identifying hereditary factors leading to diseases, identifying genes
`60fll
`
`phannacology, namely, prenatal diagnostic and identification of
`
`leading to diseases, identification of genes involved in the
`
`development of medical diagnostic equipment
`
`

`
`involved in the formation of
`
`cancer, identification of target molecules for cancer
`treatment in International Class 42.
`
`11. Upon information and belief, Paion canot claim any priority in its
`
`PAIONEERING mark earlier than the November 14, 2005 priority claim alleged in its
`
`Application.
`
`12. Upon information and belief, Paion has not made bona fide use in commerce of
`
`the PAIONEERING mark in connection with any of the goods or services specified in its
`
`Application.
`
`13. Pioneer has expended substantial monies and effort in marketing, advertising, and
`
`promoting the PIONEER mark and building the goodwil of the PIONEER mark in connection
`
`with its medical and surgical goods in interstate commerce throughout the United States, and as a
`
`result of such efforts and expenditures,
`
`as well as the quality of its goods, Pioneer has developed
`
`an excellent reputation for quality and substantial revenue from the sale of goods associated with
`
`the PIONEER mark.
`
`14. By reason of long use, extensive marketing, advertising and promotion, the
`
`PIONEER mark is uniquely associated with Pioneer within the medical field and among
`
`consumers and throughout the channels of trade for medical and surgical goods and services, and
`
`has become well-known, famous and distinctive, and represents valuable goodwil belonging to
`
`Pioneer.
`
`15. Paion's intended adoption and use of
`
`the PAIONEER and PAIONEERING marks
`
`has been without the consent or permission of Pioneer.
`
`16. On information and belief, Paion's intended adoption and use of its PAIONEER
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`and PAIONEERING marks has been with actual or constructive knowledge of Pioneer's prior
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`use of the PIONEER mark and trade name, and application for and registration of its PIONEER
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`mark in connection with its goods.
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`70fll
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`17. On information and belief, the goods and servces for which Paion seeks
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`registration of the P AIONEER and PAIONEERING marks are identical, similar, and closely
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`related to the goods Pioneer provides in connection with its PIONEER marks and trade name.
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`18. On information and belief, the goods and services for which the Paion seeks
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`registration of its P AIONEER and PAIONEERING marks are likely to be
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`sold to the same
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`customers or channels of
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`trade in which Pioneer provides its goods with its PIONEER marks.
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`19. The PAIONEER and PAIONEERING marks for which Paion seeks registration
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`are virtually identical to and indistinguishable from the PIONEER mark in sound, appearance
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`and meaning, and confusingly similar to the PIONEER mark and PIONEER trade name.
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`20. If Paion is granted registration of its P AIONEER and P AIONEERING marks as
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`shown in Application Nos. 78/506,558 and 79/028,077, Paion wil thereby obtain the prima
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`facie
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`exclusive right to use such mark, and such registration wil damage Pioneer's goodwil and rights
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`in its PIONEER marks and trade name causing irreparable injury to Pioneer.
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`21. Paion's PAIONEER and PAIONEERING marks are. confusingly similar to
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`Pioneer's PIONEER marks and trade name, and Paion's use thereof on the goods and services
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`speci