Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA294472
`ESTTA Tracking number:
`07/09/2009
`
`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
`
`Johnson & Johnson
`Corporation
`One Johnson & Johnson Plaza
`New Brunswick, NJ 08933-7001
`UNITED STATES
`
`Citizenship
`
`New Jersey
`
`Attorney
`information
`
`Norm D. St Landau
`Drinker Biddle & Reath LLP
`1500 K Street, N.W., Ste. 1100
`Washington, DC 20005-1209
`UNITED STATES
`dctrademarks@dbr.com, jaye.campbell@dbr.com Phone:202-842-8800
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77622662
`07/09/2009
`
`Publication date
`Opposition
`Period Ends
`
`06/09/2009
`07/09/2009
`
`Olnatura, Inc.
`Suite 4C 494 W. Boughton Rd.
`Bolingbrook, IL 60440
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 2007/06/01 First Use In Commerce: 2007/06/01
`All goods and services in the class are opposed, namely: Homeopathic pharmaceuticals for use in
`the treatment of colds, influenza, viral infections, gastrointestinal infections, appetite loss, allergies,
`and immune system deficiencies; Pharmaceutical preparations and substances for the treatment of
`gastro-intestinal diseases; Pharmaceutical preparations for the prevention of colds, influenza, viral
`infections, gastrointestinal infections, appetite loss, allergies, and immune system deficiencies;
`Pharmaceutical preparations for the treatment of colds, influenza, viral infections, gastrointestinal
`infections, appetite loss, allergies, and immune system deficiencies; Pharmaceutical products for the
`treatment of viral and infectious diseases, for the treatment of cancer
`
`Grounds for Opposition
`
`Deceptiveness
`False suggestion of a connection
`Priority and likelihood of confusion
`Dilution
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(a)
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`

`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`904181
`
`12/15/1970
`
`Application Date
`
`06/24/1970
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`MOTRIN
`
`NONE
`
`Class U018 (International Class 005). First use: First Use: 1970/04/13 First Use
`In Commerce: 1970/04/13
`ANTIINFLAMMATORY AGENT
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2371519
`
`07/25/2000
`
`MOTRIN IB
`
`Application Date
`
`02/13/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1998/12/23 First Use In Commerce: 1998/12/23
`PHARMACEUTICAL PREPARATIONS- NAMELY, ANALGESICS
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2390239
`
`09/26/2000
`
`MOTRIN IB
`
`Application Date
`
`02/13/1998
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1998/09/25 First Use In Commerce: 1998/09/25
`PHARMACEUTICAL PREPARATIONS- NAMELY, ANALGESICS
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2371520
`
`07/25/2000
`
`MOTRIN IB
`
`Application Date
`
`02/13/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 005. First use: First Use: 1998/10/15 First Use In Commerce: 1998/10/15
`PHARMACEUTICAL PREPARATION, NAMELY, ANALGESICS
`
`75433860#TMSN.gif ( 1 page )( bytes )
`75433872#TMSN.gif ( 1 page )( bytes )
`75433948#TMSN.gif ( 1 page )( bytes )
`MODIN opposition.pdf ( 11 pages )(509421 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
`
`/Jaye S. Campbell/
`Jaye S. Campbell
`07/09/2009
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Ser. No. 77/622,662 — MODIN
`
`Published: June 9, 2009
`
`JOHNSON & JOHNSON,
`
`Opposer,
`
`V.
`OLNATURA, INC.,
`
`V
`
`:
`
`Opposition No. 91-
`
`_._mz_4
`
`NOTICE OF OPPOSITION
`
`JOHNSON & JOHNSON, a New Jersey corporation, having a principal place of business
`
`at One Johnson & Johnson Plaza, New Brunswick, New Jersey 08933-7001 (“Opposer”),
`
`believes that it will be damaged by the registration of Ser. No. 477/622,662 — MODIN for
`
`“homeopathic pharmaceuticals for use in the treatment of colds, influenza, viral infections,
`
`gastrointestinal infections, appetite loss, allergies, and immune system deficiencies;
`
`pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases;
`
`pharmaceutical preparations for the prevention of colds, influenza, Viral infections,
`
`gastrointestinal infections, appetite loss, allergies, and immune system deficiencies;
`
`pharmaceutical preparations for the treatment of colds, influenza, Viral infections, gastrointestinal
`
`infections, appetite loss, allergies, and immune system deficiencies; pharmaceutical products for
`the treatment of Viral and infectious diseases, for the treatment of cancer” in Class 5; filed on
`
`November 26, 2008 by Olnatura, Inc., an Illinois corporation, having an address at 494 W.
`
`DC0l/ 22483432
`
`

`
`Boughton Rd., Suite 4C, Bolingbrook, Illinois 60440 (“Applicant”), and hereby opposes the
`
`same pursuant to Section 13 of the Trademark Act of 1946 (15 U.S.C. § 1063).
`
`As grounds for its opposition, Opposer states:
`
`1.
`
`Opposer, through its wholly-owned subsidiary, has adopted and is using the
`
`MOTRIN, MOTRIN IB, CHILDREN’S MOTRIN, and CHILDREN’S MOTRIN COLD marks,
`
`and Variations thereof (herein the “MOTRIN Marks”) for a range of pain-relief products,
`
`including products for treating cold and flu symptoms.
`2.
`Opposer, through its wholly-owned subsidiary, has been continuously using the
`
`MOTRIN Marks for pain-relief and cold-relief products since as early as 1970.
`
`3.
`
`To protect its rights in the MOTRIN Marks, Opposer owns:
`
`a. Reg. No. 904,181 — MOTRIN for “antinflammatory agent” in Class 5;
`registered December 15, 1970, with a claim of use since April 13, 1970.
`
`b. Reg. No. 2,371,519 — MOTRIN IB & Design for “pharmaceutical
`preparations, namely, analgesics” in Class 5; registered July 25, 2000, with a
`claim of use since December 23, 1998.
`
`c. Reg. No. 2,390,239 — MOTRIN IB & Design for “pharmaceutical
`preparations- namely, analgesics” in Class 5; registered September 26, 2000,
`with a claim of use since September 25, 1998.
`
`d. Reg. No. 2,371,520 ~ MOTRIN IB & Design for “pharmaceutical
`preparations- namely, analgesics” in Class 5; registered July 25, 2000, with a
`claim of use since October 15, 1998.
`
`Copies of the foregoing registrations are attached hereto as Exhibits A-D.
`
`Count I: Likelihood of Confusion
`
`4.
`
`Since before the November 26, 2008 filing date of Ser. No. 77/622,662 —
`
`MODIN, Opposer, through its wholly-owned subsidiary, has sold millions of dollars of pain-
`
`relief and cold-relief products identified by the MOTRIN Marks.
`
`

`
`5.
`
`Opposer, through its wholly-owned subsidiary, has extensively advertised
`
`products identified by the MOTRIN Marks to the trade and to the general public in various
`
`media, including national print publications, television and the intemet.
`
`6.
`
`By Virtue of its extensive sales and promotion, Opposer’s MOTRIN Marks have
`
`become well-known in the trade and to the general public, and have acquired a high degree of
`
`distinctiveness indicating source in the Opposer.
`
`.7.
`
`Applicant’s MODIN mark is substantially similar to Opposer’s MOTRIN Marks
`
`in appearance, sound and commercial impression.
`
`8.
`
`The goods for which Applicant seeks to register the MODIN mark and the goods
`
`on which Opposer, through its wholly-owned subsidiary, has used and registered the MOTRIN
`
`Marks are identical or otherwise closely related.
`
`9.
`
`The goods for which Applicant seeks to register the MODIN mark can be used in
`
`connection with treating cold and flu symptom.
`
`10.
`
`The goods on which Opposer, through its wholly-owned subsidiary, has used and
`
`registered the MOTRIN Marks can be used in connection with treating cold and flu symptoms.
`
`11.
`
`The goods on which Opposer, through its wholly-owned subsidiary, has used and
`
`registered the MOTRIN Marks and the goods for which Applicant seeks to register the MODIN
`
`mark are likely to be sold through identical channels of trade.
`
`12.
`
`The goods on which Opposer, through its wholly-owned subsidiary, has used and
`
`registered the MOTRIN Marks and the goods for which Applicant seeks to register the MODIN
`
`mark are likely to be sold to identical classes of consumers.
`
`13.
`
`The proposed use and registration by Applicant of the MODIN mark for the
`
`goods identified in Ser. No. 77/622,662 is likely to cause CO1’lfL1SlOl’l, mistake or deception by
`
`

`
`having the public erroneously assume or believe that such goods emanate from Opposer, or are in
`
`some other way associated or connected with Opposer’s prior use of the MOTRIN Marks, all to
`
`Opposer’s irreparable damage.
`
`Count II: Likelihood of Dilution
`
`14.
`
`Opposer’s MOTRIN Marks are famous among the general consuming public of
`
`the United States within the meaning of 15 U.S.C. § 1l25(c).
`
`15.
`
`The proposed use and registration by Applicant of the MODIN mark for the goods
`
`identified in Ser. No. 77/622,662 is likely to cause dilution of the distinctive quality of Opposer’s
`
`famous MOTRIN Marks in violation of 15 U.S.C. §§ '1063(a) and 1125(0).
`
`Count III: Fraud on the Trademark Office
`
`16.
`
`Application Ser. No. 77/662,622 claims June 1, 2007 as the date of first use in
`
`commerce for all of the following goods: “homeopathic pharmaceuticals for use in the treatment
`of colds, influenza, viral infections, gastrointestinal infections, appetite loss, allergies, and
`
`immune system deficiencies; pharmaceutical preparations and substances for the treatment of
`
`gastro-intestinal diseases; pharmaceutical preparations for the prevention of colds, influenza,
`
`viral infections, gastrointestinal infections, appetite loss, allergies, and immune system
`
`deficiencies; pharmaceutical preparations for the treatment of colds, influenza, viral infections,
`
`gastrointestinal infections, appetite loss, allergies, and immune system deficiencies;
`
`pharmaceutical products for the treatment of viral and infectious diseases, for the treatment of
`
`cancer.”
`
`17.
`
`On information and belief, Applicant has not sold in interstate commerce some of
`
`the goods identified in Ser. No. 77/622,662 — MODIN as of the filing date of such application.
`
`

`
`18.
`
`On information and belief, Applicant has not shipped in interstate commerce
`
`some of the goods identified in Ser. No. 77/622,662 — MODIN as of the filing date of such
`
`application.
`
`19.
`
`On information and belief, Applicant has not used the MODIN mark in interstate
`
`commerce in connection with some of the goods identified in Ser. No. 77/622,662 as of the filing
`
`date of such application.
`
`20.
`
`On information and belief, Applicant has not sold in interstate commerce some of
`
`the goods identified in Ser. No. 77/622,662 — MODIN as of the filing date of this Notice of
`
`Opposition.
`
`21.
`
`On information and belief, Applicant has not shipped in interstate commerce
`
`some of the goods identified by the MODIN mark identified Ser. No. 77/622,662 as of the filing
`
`‘ date ofthis Notice of Opposition.
`
`22.
`
`On information and belief, Applicant has not used the MODIN mark in interstate
`
`commerce in connection with some ofthe goods identified in Ser. No. 77/622,662 as ofthe filing
`
`date of this Notice of Opposition.
`
`23.
`
`In connection with application Ser. No. 77/622,662 — MODIN, Applicant’s
`
`attorney, Kenneth S. McLaughlin, Jr. (“Applicant’s Signatory’_’) declared under oath, being
`
`warned that willful false statements may jeopardize the Validity of the application, that all
`
`statements made of his own knowledge are true.
`
`24.
`
`On information and belief, Applicant’s Signatory knew or should have known that
`
`Applicant was not using the MODIN mark in connection with -all of the goods identified in Ser.
`
`No. 77/622,662 when such application was filed.
`
`

`
`25.
`
`On information and belief, Applicant’s Signatory’s declaration that the MODIN
`
`mark is in use with all the goods recited in Ser. No. 77/622,662 contains a materially false
`
`statement, made in bad faith and in an attempt to perpetrate a fraud upon the Trademark Office.
`
`26.
`
`On information and belief, the conduct of Applicant’s Signatory constitutes fraud
`
`on the Trademark Office, and application Ser. No. 77/622,662 should be denied registration.
`
`For the reasons set forth above, Opposer believes and believing asserts that it will be
`
`damaged by the registration of Ser. No. 77/622,662 — MODIN, Accordingly, Opposer prays that
`
`this opposition be sustained, and that Applicant be refused registration of the MODIN mark for
`the goods set forth in application Ser.iNo. 77/622,662.
`
`The $300.00 filing fee has been submitted electronically. Should additional fees be
`
`required please charge them to the deposit account of Opposer.’s counsel, No. 50-0573.
`
`Respectfully submitted,
`
`JOHNSON & JOHNSON
`
`By: 5. cmw
`
`or1n D. St. Landau
`
`Brian A. Coleman
`
`Jaye S. Campbell
`Drinker Biddle & Reath LLP
`
`1500 K Street, N.W., Suite 1100
`Washington, D._C. 20005
`Tel: (202) 842-8800
`Fax: (202) 842-8465
`Attorneysfor Opposer
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing NOTICE OF OPPOSITION was served on
`
`Applicant’s counsel of record at the following address, by first class mail, postage prepaid, this 9th
`
`day ofJuly 2009:
`
`.
`
`Kenneth S. Mclaughlin, Jr.
`Esp, Kreuzer, Cores & Mclaughlin, LLP
`400 S. County Farm Road
`Suite 200
`
`Wheaton, L 60187
`
`

`
`7 Int. CL: 5
`
`Prior U.S. CL: 18
`Reg.No.904,181
`-
`_
`-
`T_
`W
`Umted States Patent and Trademark Office
`Registmd Dec_15,197o
`
`10 Year Renewal}
`_
`V
`L
`L
`T
`_
`M
`.
`_
`Renewal Apptfoyed Nov. 13,1990
`
`O
`
`PRINCIPAL REGISTERL
`
`MOTRIN V
`
`UPJOHN COMPANY, THE-(DELAWARE
`CORPORATION)
`'
`7oo'o PORTAGE ROAD
`7 KALAMAZO0, MI 49001, ASSIGNEE BY
`MESNE ASSIGNMENT UPJOI-IN COM-
`PANY. ‘THE (DELAWARE convex»..-
`* T10“) KAT-AMAZ00» M1
`L
`
`OWNER OF ‘U._s. REG. NO. 713,798.
`FOR: ANTIINFLAMMATORY AGENT,
`INV CLASS 18 (INT. CL. 5).
`'
`FIRST‘ USE 4-13-1970;‘ IN COMMERCE
`4-1,3-1970."
`‘
`‘
`’
`SER; NO. 72—363,500, FILED 6-24-l9M70.
`
`‘
`
`.w
`
`In testimony whereof I have hereufito set nfy leand A
`and caused the seal of The Patent and Trademark
`Office to be affixed on Dec. 25, 1990.
`
`EXHIBIT
`
`. COMMISSIONER OF PATENTS AND TRADEMAR KS. A
`
`‘
`
`

`
`1
`V
`S
`j
`A Int. CL: 5
`V
`I
`0
`Prior U.S.ACls.: 6, 18, 44, 46, 51, and~52
`United States, ‘Pat;e_nta1f1d T:r,a“démSar’k Offic§e5
`. Registered July 25, 2000
`
`
`
`Reg. No. 2,371,519
`
`PRINCIPAL REGISTER
`
`
`
`JOHNSON &7 JOHNSON (NEW JERSEY CORPORA—
`TION)
`A
`ONE JOHNSON & JOHNSON PLAZA
`NEW BRUNSWICK, NJ 089337001
`
`PREPARATIONS-
`PHARMACEUTICAL
`FOR:
`NAMELY, ANALGESICS, IN CLASS 5 (us. CLS. 5,
`13, 44, 46, 51 AND 52).
`—
`COMMERCE
`FIRST
`USE
`12—23—199s;
`12_23—199s.
`A
`_
`_
`OWNER OF U.S. REG.NO. 904,131.
`
`IN
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT
`TO USE THE REPRESENTATION OF THE PILL DE-
`SIGN AND THE RECTANGULAR BOX CONFIGURA-
`TION, APART FROM THE MARK AS SHOWN.
`
`THE DRAWING IS LINED FOR THE COLORS
`GOLD, ORANGE AND GREEN.
`
`SN 75—433,860, FILED 2-13-I998.
`
`‘ BARNEY CHARLON,
`
`ATTORNEY ’
`
`EXHIBIT B
`
`

`
`Int. Cl.: 5
`
`Prior U.S. CIs.: 6, 18, 44, 46,‘5l§ and 52
`.
`
`2
`Umted States ,P‘at'_e'nt and Trademark Office ‘-
`A Regi_st‘ered Sep. 25, 2000
`
`
`‘Reg. No. 2,390,239
`
`
`
`
`
`TRADEMARK
`PRINCIPAL -REGISTER _
`
`
`
`JERSEY CORPORA-
`
`JOHNSON & JOHNSON
`>
`TION)
`ONE JOHNSON & JOHNSON PLAZA
`NEW BRUNSWICK, NJ 089337001
`'
`PREPARATIONS-
`PHARMACEUTICAL
`FOR:
`NAMELY, ANALGESICS, IN CLASS 5 (US. CLS. 6,
`I8, 44, 46, 51 AND 52).
`-
`FIRST USE 9-25-1998; IN COMMERCE 9-25-1998.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT
`TO USE THE OVAL CONFIGURATION OF_ THE CAP-
`SULE AND THE RETANGULAR BOX CONFIGURA-
`TION, APART FROM THE MARK AS SHOWN.’
`THE DRAWING IS LINED FOR THE COLORS
`GOLD’ ORANGE AND BLUE‘
`SN 75-433,872, FILED 2-13-1998.
`
`BARNEY CIIARLON, EXAMINING ATTORNEY
`
`EXHIBIT C
`
`

`
`I
`Int-. Cl.: 5
` A
`4 ‘
`,4
`P" U..1.:,
`. Reg.N0.2_’371’520
`V
`\
`‘r1or4 S Cs 6 18 4 ,46 51 and '52‘
`Registered Ju1y.25,_2000
`United States Patent -and Trademarkwoffice
`
`
`
`
`
`,
`
`V
`
`
`
`
`
`JOHNSON & JOHNSON (NEW JERSEY CORPORA-
`TION) ‘
`_
`‘
`ONE JOHNSON & JOHNSON PLAZA
`NEW BRUNSWICK, NJ089337001
`A
`I 1=oR- PHARMACEUTICAL PREPARATION NAME
`-
`..
`.
`-
`-»
`'
`LY,»ANALGES1CS,
`IN CLASS 5 (U.S. CLS. 6, 18,
`44, 45, 51 AND 52).
`FIRST
`USE
`l0—15—l998;
`IN
`COMMERCE
`10-15-1998.
`OWNER or US. REG. No. 904,181.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT
`TO USE THE REPRESENTATION OF THE PILL DE-
`SIGN AND A RECTANGULAR BOX’ CONFIGURA-
`TION, APART FROM THE MARK AS SHOWN.
`THE DRAWING ISELINED FOR
`COLORS
`V
`RAN EANDYE
`W.
`GOLD’ O
`G
`LL0. .
`_
`‘
`SN 75'433=943’ FILED 2-13-.1998»
`BARNEY CHARLON, EXAMINING ATTORNEY
`
`EXHIBIT D