Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA272277
`ESTTA Tracking number:
`03/16/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91188664
`Defendant
`NutraMarks, Inc.
`ALISON PITT
`1400 KEARNS BLVD FL 2
`PARK CITY, UT 84060-7228
`
`legal@nutracorp.com
`Answer
`Timothy P. Getzoff
`tgetzoff@hollandhart.com,docket@hollandhart.com, jguy@hollandhart.com
`/Timothy P. Getzoff/
`03/16/2009
`Answer.pdf ( 8 pages )(21802 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA272277
`ESTTA Tracking number:
`03/16/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91188664
`Defendant
`NutraMarks, Inc.
`ALISON PITT
`1400 KEARNS BLVD FL 2
`PARK CITY, UT 84060-7228
`
`legal@nutracorp.com
`Answer
`Timothy P. Getzoff
`tgetzoff@hollandhart.com,docket@hollandhart.com, jguy@hollandhart.com
`/Timothy P. Getzoff/
`03/16/2009
`Answer.pdf ( 8 pages )(21802 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No.: 91188664
`
`
`
`
`
`)))))))))
`
`
`
`
`Bayer HealthCare LLC,
`
`Opposer,
`
`
`
`
`v.
`
`NutraMarks, Inc.,
`
`Applicant.
`
`
`
`
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Applicant, NutraMarks, Inc., by and through its attorneys, answers Opposer
`
`Bayer HealthCare LLC’s Notice of Opposition as follows:
`
`1.
`
`Applicant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 1 of Opposer’s Notice of Opposition and
`
`therefore, denies those allegations.
`
`2.
`
`Applicant admits the allegations of Paragraph 2 of Opposer’s Notice of
`
`Opposition.
`
`3.
`
`Applicant admits the allegations of Paragraph 3 of Opposer’s Notice of
`
`Opposition.
`
`4.
`
`Applicant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 4 of Opposer’s Notice of Opposition and
`
`therefore, denies those allegations.
`
`
`
`5.
`
`Applicant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 5 of Opposer’s Notice of Opposition and
`
`therefore, denies those allegations.
`
`6.
`
`Applicant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 6 of Opposer’s Notice of Opposition and
`
`therefore, denies those allegations.
`
`7.
`
`Applicant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 7 of Opposer’s Notice of Opposition and
`
`therefore, denies those allegations.
`
`8.
`
`Applicant denies the allegations of Paragraph 8 of Opposer’s Notice of
`
`Opposition.
`
`9.
`
`Applicant denies the allegations of Paragraph 9 of Opposer’s Notice of
`
`Opposition.
`
`10. Applicant denies the allegations of Paragraph 10 of Opposer’s Notice of
`
`Opposition.
`
`11. Applicant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 11 of Opposer’s Notice of Opposition and
`
`therefore, denies those allegations.
`
`12. Applicant denies the allegations of Paragraph 12 of Opposer’s Notice of
`
`Opposition.
`
`13. Applicant denies the allegations of Paragraph 13 of Opposer’s Notice of
`
`2
`
`Opposition.
`
`
`
`
`
`All allegations in Opposer’s Opposition that are not explicitly admitted herein
`
`are denied.
`
`FIRST DEFENSE
`
`Opposer’s stated ground for opposition fails to state a claim upon which relief
`
`can be granted.
`
`SECOND DEFENSE
`
`Opposer is barred from challenging Applicant’s mark by the doctrines of
`
`acquiescence, waiver, laches and/or estoppel.
`
`THIRD DEFENSE
`
`Opposer’s asserted mark has been rendered weak and/or is not likely to be
`
`confused with Applicant’s mark due to the presence of numerous third-party marks used
`
`in commerce, all of which are in International Class 003 and/or 005, including:
`
`DATE OF
`FIRST USE
`11/1/2002
`
`5/1/2001
`
`1993
`
`MARK
`
`GOODS/SERVICES DESCRIPTION
`
`RELEEV
`Reg. No. 3,350,105
`ALUWE
`Reg. No. 2,694,132
`ATREV
`Reg. No. 2,901,099
`
`Class 5 - Medicinal herbal extracts and
`medicinal herbal infusions
`Class 5 – Nutritional supplements
`
`Class 3 - Cosmetics, namely, deep
`cleansing creams, exfoliation creams,
`body firming creams, toning and
`moisturizing lotions, moisturizing day
`cream, protector moisturizing cream,
`nourishing night creams with Collagen,
`night moisturizing creams, exfoliation
`creams, stretch mark softening cream,
`muscle relaxant creams, facial gel, body
`firming lotions, oil control gelly lotions,
`astringent and refreshing lotions, flash
`cleansing gels, night repairing gel, lip and
`eye contour gels, body contour gels, eye
`makeup remover gels, lip moisturizing
`
`3
`
`
`
`
`
`gels, oil-control gelly lotion, mascara,
`rouge, eye shadow, compact powder
`Class 5 - Allergen neutralizing sprays for
`neutralizing irritants created by dust
`mites, cats and dogs
`Class 3 - Hair lotions; dentifrices,
`aromatics, essential oils for personal use;
`sachets for perfuming linen; scented
`water, scented wood; flavourings for
`beverages, namely, essential oils; cake
`flavourings, namely, essential oils; breath-
`freshening sprays; air freshening
`aromatics; soaps, perfumery, cosmetics;
`eaux de toilette; eau-de-Cologne; plant
`extracts for use as aromatics in cosmetics,
`fragrant potpourris, disposable tissues
`impregnated with cosmetic lotions, oils for
`perfumes and scents, fabric conditioners
`
`Class 5 - Disinfectants, oxygen baths, salts
`for mineral water baths, therapeutic
`preparations for the bath, smelling salts,
`smelling salts, disinfectants for hygiene
`purposes, disinfectants for chemical
`toilets, fumigating pastilles, deodorants,
`other than for personal use, air freshening
`preparations, air purifying preparations,
`antiseptics, antiparasitic products and
`preparations for animal hygiene, air-
`freshening and deodorizing products for
`medical or sanitary use
`Class 5 - Herbal and vitamin supplements
`
`Class 5 – dietary supplement
`
`DATE OF
`FIRST USE
`
`7/27/2001
`
`
`
`5/1/2002
`
`3/19/2004
`
`Class 5 - nutritional supplements
`
`12/2/2004
`
`Class 5 - Nutritional supplements; dietary
`supplements
`Class 5 - Pharmaceuticals, namely, anti
`
`8/25/2005
`
`11/22/2002
`
`4
`
`MARK
`
`GOODS/SERVICES DESCRIPTION
`
`ALEZE
`Reg. No. 2,841,450
`
`BALEV & Design
`Reg. No. 3,158,864
`(Madrid)
`
`ALLER 24
`Reg. No. 3,398,362
`ALLITRU
`Reg. No. 2,981,005
`
`ALOEVIDA
`Reg. No. 3,042,866
`ALVITUM
`Reg. No. 3,308,771
`ALINIA
`
`
`
`
`
`MARK
`
`GOODS/SERVICES DESCRIPTION
`
`infective
`Class 5 - Prescription oral dosage
`pharmaceuticals for the treatment of
`dyslipidemia or central nervous system
`disorders
`Class 3 – Cosmetic line
`
`Class 5 - homeopathic allergy relief
`medication
`Class 5 - Pharmaceutical preparations;
`namely, weight loss preparations
`Class 5 - Dietary herbal supplements
`
`DATE OF
`FIRST USE
`
`6/00/2004
`
`11/4/2002
`
`5/15/2000
`
`4/13/2007
`
`3/8/2004
`
`Class 5 - Reagents for clinical medical
`laboratory and diagnostic use
`Class 5 - Dietary supplements, namely
`nutritional drinks
`Class 5 - Herb teas for medicinal purposes 1922
`
`9/8/2000
`
`8/15/2001
`
`First use date not
`available – based
`on Japanese
`registration
`
`No first use date
`available
`
`Class 5 - Pharmaceutical preparations for
`the treatment of cardiovascular system
`diseases, namely, heart diseases and blood
`diseases; pharmaceutical preparations for
`the treatment of central nervous system
`disorders, namely, stroke and dementia;
`pharmaceutical preparations for the
`treatment of ophthalmological disorders,
`namely, glaucoma; pharmaceutical
`preparations for the treatment of
`respiratory system diseases, namely,
`pulmonary diseases; pharmaceutical
`preparations for the treatment of renal
`diseases; pharmaceutical preparations for
`use in surgical procedures and organ
`transplantation to prevent reperfusion
`injury
`Class 5 - Medicated preparations for the
`treatment of arthritis, namely, balms,
`ointments, creams, gels and patches;
`transdermal therapeutic preparations for
`
`5
`
`Reg. No. 2,812,956
`ALTOPREV
`Reg. No. 2,911,749
`
`ALOVÉ
`Reg. No. 2,735,692
`ALLER-EZE
`Reg. No. 2,707,044
`ALLI
`Reg. No. 3,270,351
`ALTOVIS
`Reg. No. 3,121,524
`
`ALLVIVO
`Reg. No. 2,645,170
`ALVEO
`Reg. No. 2,595,066
`ALVITA
`Reg. No. 1,759,398
`ATECTEV
`Reg. No. 2,920,334
`
`ACTEEV & Design
`Ser. No. 79/056,353
`(Madrid - will be
`published 4/14/09
`
`
`
`
`
`MARK
`
`GOODS/SERVICES DESCRIPTION
`
`DATE OF
`FIRST USE
`
`ALLERVENE
`Ser. No. 78/437,576
`Allowed
`ALUVIA
`Ser. No. 78/940,173
`Allowed
`ALLI
`Ser. No. 77/231,570
`Allowed
`
`ATHEREV
`Ser. No. 78/906,641
`Allowed
`
`
`
`
`
`
`
`
`
`the treatment of arthritis, namely, balms,
`ointments, creams, gels and patches; anti-
`inflammatory preparations; anti-rheumatic
`preparations; pharmaceutical preparations
`for use in the treatment of arthritis
`Class 5 - Pharmaceutical preparations and
`substances for the treatment of respiratory
`diseases and disorders
`Class 5 - Prescription-only anti-viral
`pharmaceutical preparations for the
`treatment of HIV and AIDS
`Class 5 - Nutritional shakes for use as a
`meal substitute, nutritional energy bars for
`use as a meal replacement, nutritional
`drinks for use as a meal replacement; food
`for medically restricted diets
`Class 5 - Pharmaceutical preparations and
`substances for the prevention and
`treatment of diseases and disorders of the
`respiratory system, central nervous
`system, peripheral nervous system,
`cardiovascular system, gastro-intestinal
`system; pharmaceutical preparations and
`substances for use in pain control,
`arthritis, anesthesia, oncology, infection,
`inflammation, urology, gynecology;
`pharmaceutical preparations and
`substances for the treatment and
`prevention of diabetes
`
`
`
`WHEREFORE, Applicant prays that this Opposition be dismissed with prejudice
`
`and that the application be allowed to issue to registration.
`
`6
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/s/ Timothy P. Getzoff ____________________
`Timothy P. Getzoff
`HOLLAND & HART LLP
`One Boulder Plaza
`1800 Broadway, Suite 300
`Boulder, Colorado 80302
`(303) 473-2700
`
`ATTORNEYS FOR APPLICANT
`NUTRAMARKS, INC.
`
`
`
`Dated: March 16, 2009
`
`7
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that on March 16, 2009, I served a copy of the foregoing ANSWER TO
`
`NOTICE OF OPPOSITION to the following by:
`
`
`
`
`
`
`
`
`
`
`
`U.S. Mail, postage prepaid
`Hand Delivery
`Fax
`
`Beth M. Goldman
`Chelseaa E.L. Bush
`Orrick Herrington & Sutcliffe LLP
`405 Howard Street
`San Francisco, CA 94105
`
`
`
`
`
`
`
`
`
`/s/ Timothy P. Getzoff ____________________
`
`
`
`
`
`
`
`
`
`4469375_1.DOC
`
`8
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