Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA281852
`ESTTA Tracking number:
`05/04/2009
`
`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
`
`Medinol Ltd.
`05/03/2009
`
`P.O. Box 58165 Kiryat Atidim Bldg. 3
`Tel Aviv, 61581
`ISRAEL
`
`Attorney
`information
`
`Anna Erenburg
`Cadwalader, Wickersham & Taft LLP
`One World Financial Center
`New York, NY 10281
`UNITED STATES
`anna.erenburg@cwt.com, docketing@cwt.com, dawn.signoretta@cwt.com
`Phone:212-504-6526
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79028077
`05/04/2009
`
`0896419
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`11/04/2008
`05/03/2009
`
`05/11/2006
`
`Paion Deutschland GmbH
`Martinstr. 10-12
`52062 Aachen,
`GERMANY
`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
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`
`77233796
`
`Application Date
`
`07/19/2007
`
`

`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`PIONIR
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use:
`Medical devices, namely stents
`
`Attachments
`
`77233796#TMSN.jpeg ( 1 page )( bytes )
`Notice of Oppostion & Cert of Service.pdf ( 8 pages )(762160 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
`
`/Anna Erenburg/
`Anna Erenburg
`05/04/2009
`
`

`
`[N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MEDINOL LTD.,
`
`Opposer,
`
`Serial No. 79fO28077
`
`v_
`
`:
`
`Opposition No.
`
`PAION DEUTSCHLAND GMBH,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`In the matter of pending U.S. Trademark Application Serial No. 79i’028077 for
`
`the trademark “PAIONEERING” published for opposition on November 4, 2008 on the Principal
`
`Register for a large Variety of goods and services, including medical devices and related services,
`
`under Section 66 of the Lanham Act, owned by Paion Deutschland GmbH, a Fed. Rep. Germany
`
`Gmbl-I; of Martinsrr. 10-12, 52062 Aachen, Fed. Rep. Germany (“Applicant”).
`
`Medinol Ltd., an Israel corporation having a place of business at P.O. Box 58165,
`
`Kiryat Atidim Bldg. 3, Tel Aviv 61581, Israel (“Opposer") believes that it will be damaged if
`
`said application Serial No. 79102307? is registered on the Principal Register, and hence gives
`
`notice of its intention to oppose Serial No. 79fO280?'7.
`
`The grounds for the Notice of Opposition are as follows:
`
`1.
`
`Opposer is the owner of U.S. Trademark Application No. 77033796 filed
`
`July 19, 2007 for the mark PIONIR for “medical devices, namely stents" in International Class
`
`10. A TARR copy of Application No. 77f233'?96 is annexed as Exhibit A.
`
`2.
`
`In examining Opposer’s PIONIR application, Trademark Examining
`
`Attorney Amy Hella issued an advisory opinion concerning Applicant’s PAIONEERING
`
`

`
`application, stating that
`
`there may be a likelihood of confusion between Opposer‘s and
`
`Applicant's marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d), if Applicant's
`
`PAIONEERING mark proceeds to registration.
`
`3.
`
`Examining Attorney Hella has currently suspended Opposer’s PIONTR
`
`application pending final disposition before the Ll.S. Trademark Office of the PAIONEERING
`
`mark.
`
`4.
`
`Opposer’s PIONIR mark is a fanciful mark and is inherently distinctive in
`
`connection with Opposer’s goods. Even assuming arguenclo that Opposer’s mark is arbitrary,
`
`rather than fanciful, as it neither suggests nor describes any quality or characteristic of Opposer’s
`
`goods, it is inherently distinctive and does not require any proof of secondary meaning.
`
`5.
`
`Applicant’s mark, PAIONEERING, is visually and phonetically similar to
`
`Opposer‘s PIONTR mark.
`
`6.
`
`The goods and services
`
`identified in Applicant’s PAIONEERING
`
`application are similar to the goods identified in Opposer PIONIR application, i.e., Applicant’s
`
`goodslservices include medical devicesfapparatus and related educational and research services
`
`that are similar to Opposer’s medical stents. Hence, Applicant’s goodsfservices and Opposer’s
`
`goods are directly competitive, and could be distributed andfor are likely to be distributed
`
`through the same or cornmercially related channels of trade to the same or overlapping classes of
`
`consumers.
`
`7.
`
`The simultaneous use of Opposer’s and App]icant’s respective marks for
`
`the closely related goodsfservices will
`
`lead to a likelihood of confusion.
`
`Thus, upon
`
`encountering Applicant’s mark on its goods or in connection with its services, customers and
`
`potential customers of Opposer’s goods would be likely to believe that the goods and services
`
`identified in Applicant’s application emanate from the Opposer.
`
`Such customers would be
`
`-2-
`
`

`
`justified in believing that Applicant’s goods and services originated from Opposer, or were
`
`offered in association or in affiliation with, or under authorization of, or licensed from Opposer.
`
`8.
`
`Opposer has no control over the quality of the goods and services offered
`
`by the Applicant in connection with its mark.
`
`9.
`
`The registration of Applicant's mark with the U.S. Trademark Office will
`
`be damaging to Opposer and also inimical
`
`to the goodwill and reputation associated with
`
`Opposer’s mark for Opposer’s goods.
`
`10.
`
`For
`
`the above~stated reasons, Opposer believes that if Applicant
`
`is
`
`permitted to register its PAIONEERTNG mark for the goodsfservices specified in its application,
`
`it would thereby retain at
`
`least a prima facie exclusive right
`
`to use its mark for such
`
`goodsfservices. Such registration would continue to be a source of harm, damage and injury to
`
`Opposer and to Opposer’s customers.
`
`11.
`
`For
`
`the above-stated reasons, Opposer believes that
`
`if Applicant
`
`is
`
`permitted to register its PAIONEERING mark, confusion of the trade and public resulting in
`
`damage and injury to Opposer would be caused or would result by reason of the similarity
`
`between Applicant’s PAIONEERING mark and Opposer‘s PIONIR mark. Any defect,
`
`objection, fault or adverse publicity in connection with Applicant’s goodsfservices marketed
`
`under a mark that is confusingly similar to the Opposer’s PIONIR mark will necessarily reflect
`
`on and seriously injure the reputation of the Opposer and its goods.
`
`12.
`
`For the reasons set forth above, Applica.nt’s mark Serial No. ';'9;"028077 is
`
`and will continue to be a source of damage and injury to Opposer.
`
`

`
`WHEREFORE, Opposer prays that its opposition in Serial No. ?'9z’O2807’? be
`
`sustained and that said application he refused registration.
`
`The statutory filing fee for this Notice of Opposition is submitted together with
`
`the electronic filing herewith.
`
`Respectfully submitted,
`
`MEDINOL LTD.
`
`/"'
`
`.
`ANNA ERENBURG, ESQ.
`CADWALADER, WTCKERSHAM & TAFT LLP
`One World Financial Center
`
`New York, NY 10281
`Tel: 215-564-1223
`
`Fax: 215-568-3439
`
`Email: anna.erenburg@,cwt.com
`Attorneys for Opposer
`Medinol Ltd.
`
`

`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true and correct copy of the foregoing document was
`
`mailed on May 4, 2008 via First Class Mail, postage prepaid to the attorney for Applicant, Paion
`
`Deutschland GmbH:
`
`Gary D. Krugman
`SUGHRUE MION, PLL-C
`
`2100 PENNSYLVANIA AVENUE, NW
`WASHINGTON, DC 2003 7-3213
`Phone Number: 202-293-7060
`
`Fax Number: 202.293.7860
`
`Email: gkrug1r1an@sugh1'ue.com
`
`And by electronic submission to:
`
`Trademark Trial and Appeal Board
`P. O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Anna Erenburg
`
`

`
`l1ttp:fftarr.usptogovfservIetftarr'?regser=seria|&entrr77233?96
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2009-05-04 21:12:54 ET
`
`Serial Number: 27233796 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`PioNIR
`
`(words only): PIONIR
`
`Standard Character claim: Yes
`
`Current Status: Further action on the application has been suspended.
`
`Date of Status: 2008-12-01
`
`Filing Date: 2007-07-19
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 1 10
`
`Attorney Assigned:
`l1I~‘.LI_/-\ AMY E
`
`Current Location: M10 -TMO Law Office 1 10
`
`Date In Location: 2008-12-01
`
`LAST APPLICANT(S)J'OWNER(S) OF RECORD
`
`1. Meclinol Ltd.
`
`Address:
`
`1 of}
`
`534.-’2009 9:15 PM
`
`

`
`http:fftarr.L:spto.gow’sewIet;’tarr?regser=serial&entry=772337%
`
`Medinol Ltd.
`
`P.O. Box 58165. Kiryat Atidim Bldg. 3
`Tel Aviv 61581
`Israel
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Israel
`
`GOODS ANDFOR SERVICES
`
`international Class: 010
`Class Status: Active
`
`Medical devices. namely stems
`Basis: 1(h_}
`First Use Date: (DATE NOT AVAILABLE")
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`ADDITIONAL INFORMATION
`
`Prior Registration Number(s):
`2 I 7" l 632
`
`2468087
`2559059
`
`MADRID PROTOCOL INFORMATION
`
`(NOT AVAILABLE)
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2008-12-01 - Report Completed Suspension Check Case Still Suspended
`
`2008»-05-29 - Repott Completed Suspension Check Case Still Suspended
`
`2008-05-29 - Assigned To LIE
`
`2007-] I-28 - Attorney Revoked And:’Or Appointed
`
`2{J07~l l-28 - TEAS Revoke:’Appoint Attorney Received
`
`200?-1 1-28 - TEAS Change Of Correspondence Received
`
`2001] 1-29 - Notification Of Letter Of Suspension E-Mailed
`
`I-J
`
`La)
`
`5!-'-H2009 9: I5 PM
`
`

`
`htipn’/tarr.uspto.govf5ervleI3’tarr?rcgser=seri al&ent1'y=i’7233 7'96
`
`2007-] 1-29 - LETTER OF SUSPENSION E-MAJLED
`
`200?-i I-29 - Suspension Letter Written
`
`200?-11-23 - TeasfEmail Correspondence Entered
`
`200?-1 L28 - Communication received from applicant
`
`2007-l l-28 - TEAS Response to Office Action Received
`
`2002-08-24 - Notification Of Non-Final Action E-Mailed
`
`2007-08-24 - Non-final action e-mailed
`
`200?-08-24 ~ Non-Final Action Written
`
`2007-08-24 - Assigned To Examiner
`
`2007-U7-25 - New Application Entered In Tram
`
`ATTORNEYICORRESPONDENT INFORMATION
`
`Attorney of Record
`Anna Erenburg
`
`Correspondent
`Anna Erenburg
`(Tadwalader. Wickersham & Taft LLP
`
`One World Financial Center. 19th floor
`New York NY 10281
`
`Phone Number: 212-504-6526
`
`Domestic Representative
`Anna Erenburg
`Phone Number: 212-504-6525
`
`3 of3
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`5//4.2009 9:15 PM