Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA276882
`ESTTA Tracking number:
`04/08/2009
`
`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
`Entity
`Address
`
`NYCOMED GMBH
`Corporation
`Byk-Gulden-Strasse, 2
`Konstanz, 78467
`GERMANY
`
`Citizenship
`
`Germany
`
`Attorney
`information
`
`Darren W. Saunders
`Hisock & Barclay LLP
`7 Times Square
`New York, NY 10036
`UNITED STATES
`trademarks@hblaw.com, dsaunders@hblaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79054915
`04/08/2009
`
`0967372
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`03/10/2009
`04/09/2009
`
`04/25/2008
`
`Laboratorios Almirall, S.A.
`Ronda del General Mitre, 151
`E-08022 Barcelona,
`SPAIN
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Pharmaceutical products for treatment of
`respiratory diseases
`Class 010.
`All goods and services in the class are opposed, namely: Inhalers for medical purposes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3574160
`
`02/10/2009
`
`Word Mark
`
`OMNARIS
`
`Application Date
`
`08/10/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA276882
`ESTTA Tracking number:
`04/08/2009
`
`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
`Entity
`Address
`
`NYCOMED GMBH
`Corporation
`Byk-Gulden-Strasse, 2
`Konstanz, 78467
`GERMANY
`
`Citizenship
`
`Germany
`
`Attorney
`information
`
`Darren W. Saunders
`Hisock & Barclay LLP
`7 Times Square
`New York, NY 10036
`UNITED STATES
`trademarks@hblaw.com, dsaunders@hblaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79054915
`04/08/2009
`
`0967372
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`03/10/2009
`04/09/2009
`
`04/25/2008
`
`Laboratorios Almirall, S.A.
`Ronda del General Mitre, 151
`E-08022 Barcelona,
`SPAIN
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Pharmaceutical products for treatment of
`respiratory diseases
`Class 010.
`All goods and services in the class are opposed, namely: Inhalers for medical purposes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`3574160
`
`02/10/2009
`
`Word Mark
`
`OMNARIS
`
`Application Date
`
`08/10/2006
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2008/04/18 First Use In Commerce: 2008/04/18
`Pharmaceuticals, namely anti-allergic preparations, anti-inflammatory
`preparations
`
`Attachments
`
`78949782#TMSN.jpeg ( 1 page )( bytes )
`Nycomed - ONARI opposition.pdf ( 5 pages )(116792 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
`
`/darren.saunders/
`Darren W. Saunders
`04/08/2009
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of/{pplicaIr'on Serial No. 79/054915
`Pzrblislqed in the ()}ficiaI Gazette ofMarch I0, 2009
`
`Atty. Ref.: 303944]
`
`Nycomed Gmbli,
`
`Opposei,
`
`Opposition No.:
`
`-against-
`
`Laboratorios Almirail, S.A._,
`
`Applicant.
`
`
`
`Commissioner for Tradernarics
`
`PO. Box 1451
`
`Alexandria, VA 22313 -1451
`
`NOTICE OF OPPOSITION
`
`Nycomed. GmbH, 21 German corporation, with a place of business located at Byl<—Gulden~
`
`Strasse 2, Konstanz, Germany 78467 (hereinafter “Opposer”), believes that it will be damaged
`
`by registration of the proposed trademark “ONARI”, as shown in Application Serial Number
`
`79/054,915, filed April 25, 2008, and hereby opposes same.
`
`As grounds for opposition, Opposer alleges that:
`
`i.
`
`Laboratories Ahnirali, S.A., a Spanish corporation (hereinafter “Applieant") has
`
`filed an application in the United States Patent and Tr:-3.demarl< Office on April 25, 2008 under
`
`Appi. Ser. No. 79/0549} 5, claiming priority to Spanish Trademark Registration No. 2802407,
`
`which was filed on November 29, 2007, for registration of the alleged trademark “ONARI” on
`
`the Principal Register identifying “pharrnaceuticai products for treatment of respiratory diseases”
`
`SYi,.IB0l\635892\l
`
`
`
`Atty. Ref;
`Ser. No.:
`Mark:
`
`3039441
`79/0549? 5
`ONARI
`
`(Int’1. Cl. 5), and “inhalers for medicai purposes” (lr1t’l. Cl. 10), with an allegation of an
`
`intention to use the mark, under section 66(a) of the Trademark Act, on the aforementioned
`
`goods in cornrnercc.
`
`2.
`
`Upon information and belief, Applicant did not use its alleged tradernark on its
`
`identified goods or otherwise, anywhere in the United States of America or in commerce, prior to
`
`the U.S. filing date or the noted priority date of the aforementioned application.
`
`3.
`
`Opposer is the owner of U.S. Registration No. 3,574,160 for the tradernark
`
`“OMNARIS” registered on February 10, 2009 on the Principal Register of the United States
`
`Patent and Trademark Office, identifying “pharmaceuticals, namely anti—allergic preparations,
`
`anti~inf_lainniatory preparations” (lnt’i. Cl. 5).
`
`4.
`
`There is no issue ofpriority since the filing date of Applicant’s “ONARI”
`
`tradernark application is subsequent to the filing date of Opposer’s “OMNARIS” trademark
`
`registration and to the date of first use of Opposer’s trademark.
`
`5.
`
`Opposer has used the trademark “Ol\/ENARIS” in interstate commerce since as
`
`early as Aprii 18, 2008 on pharrnaceuticals, namely anti-allergic preparations and antin
`
`inflarnrnatory preparations.
`
`6.
`
`Opposer’s pleaded tradeinark “OMNARIS” is inherently distinctive and
`
`represents an extremely valuable asset and symbol of the goodwill of its business by identifying
`
`goods which have their source of origin exclusively with Opposer, and by distinguishing such
`
`goods from those of others.
`
`7.
`
`Applicant’s alleged trademark “ONARI” is so similar to Opp0ser’s pleaded
`
`tradernark in sound, appearance, and cornmerciai impression, as to be iikely to cause confusion
`
`as to the source of goods bearing the respective marks.
`
`SYLIBO I\685892\l
`
`
`
`Atty. Rel‘;
`No:
`Mark:
`
`303944!
`79/054,915
`ONARI
`
`8.
`
`The respective goods of Opposer and Applicant are identical and/or related, and
`
`are likely to travel through the same channels of trade for sale to or use by the same general class
`
`of purchasers and/or users.
`
`9.
`
`Applicanfs alleged trademark is iikely to cause irreparable loss, injury and
`
`damage to Opposer’s business, to the expansion thereof, and to any goodwill attributable thereto,
`
`as symbolized and recognized by its aforementioned trademark.
`
`I0.
`
`Appiicant’s aileged trademark is a colorable imitation and misappropriation of
`
`Opposer’s pleaded tradeinark, and will enable Applicant to trade on the goodwill of 0pposer’s
`
`business, as symbolized and recognized by its aforementioned tradeinark.
`
`ll.
`
`Applicants alleged trademark consists of or comprises a mark which so
`
`resembles the mark previously used in the United States by another and not abandoned, as to be
`
`likely, when used on or in connection with the goods of the Appiicant, to cause confusion, or to
`
`cause mistake, or to deceive.
`
`IN CONCLUSION, Opposer, by its undersigned attorneys, prays that its opposition to
`
`Application Seriai No. 79/054,915 be sustained and that the Trademark Trial and Appeal Board
`
`grant any and all further relief to Opposer that the Board finds to be necessary and just in the
`
`circurnstances.
`
`The opposition filing fee of $600 is being paid by credit card, and the Commissioner is
`
`hereby authorized to charge Deposit Account No. 50-3010 in the event that it is not possible to
`
`process the credit card payment, or in the event that any other fees are required to be paid in
`
`connection with this proceeding.
`
`SYLll3{) l‘\685892\§
`
`
`
`Atty. Ref:
`Ser. Na:
`Mark:
`
`3039441
`79/054,915
`ONARI
`
`Respeetfuliy submiited,
`Nycomed GmbH
`
`Dated: Aprii 8, 2069
`
`HISCOCK & BARCLAY, LLP
`Seven Times Square
`New York, NY 10036
`Tel. No.: (212) 7846800
`Fax No.: (212) 7846757
`E-Mail: dsaunders@h.blaw.com
`
`Alromcysfor Opposer
`
`SYLIl30i\685892\]
`
`
`
`Atty. Rafi:
`Scr. No:
`Mark:
`
`79/054,915
`ONARI
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this the 8”‘ day ofApri1, 2009, I served a two and correct copy of
`
`the foregoing NOTICE OF OPPOSITION, via First Class US. Maii, postage prepaid, upon the
`
`Appiicanfs attorney of record:
`
`Susan Upton Douglass, Esq.
`Fross Zelnick Lehrman & Zissu, PC.
`866 United Nations Plaza
`
`New York NY 10017
`
`
`
`SYL1.B0l\()85892\1
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