Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA393738
`ESTTA Tracking number:
`02/16/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91192046
`Plaintiff
`Aventis Pharmaceuticals Inc
`G MATHEW LOMBARD
`LOMBARD & GELIEBTER LLP
`1115 BROADWAY12 FL
`NEW YORK, NY 10010
`UNITED STATES
`mlombard@lgtrademark.com
`Plaintiff's Notice of Reliance
`G. Mathew Lombard
`mlombard@lgtrademark.com
`/g mathew lombard/
`02/16/2011
`Reliance3_redact2.pdf ( 40 pages )(5565885 bytes )
`TholenAff_Exhibits_Part1_22.pdf ( 4 pages )(10270148 bytes )
`TholenAff_Exhibits_Part22.pdf ( 31 pages )(9954160 bytes )
`TholenAff_Exhibits_Part32.pdf ( 40 pages )(20036914 bytes )
`TholenAff_Exhibits_Part42.pdf ( 15 pages )(5763183 bytes )
`Ex26-28_2.pdf ( 25 pages )(3310900 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Atty. Ref.: 101.0906
`
`
`
`AVENTIS PHARMACEUTICALS INC.,
`
`
`Opposer,
`
`
`v.
`
`HEAL THE WORLD INC.,
`
`
`Applicant.
`
`
`
`
`
`
`
`
`Opposition No. 91192046
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`OPPOSER’S THIRD NOTICE OF RELIANCE ON PRINTED PUBLICATIONS AND
`OFFICIAL RECORDS & TESTIMONY UNDER 37 CFR §§ 2.122(e) & 2.122(j)(2)
`
`Opposer, Aventis Pharmaceuticals Inc., by and through its undersigned counsel, hereby
`
`gives notice that, pursuant to 37 CFR § 2.122(e) and 37 CFR § 2.122(j)(2), it will rely on the
`
`following materials, true and correct copies of which are attached hereto as Exhibits as numbered
`
`and identified below:
`
`
`
`1. The testimonial declaration of Timothy Tholen (attached hereto) as well as the documents
`
`referenced therein, namely, not otherwise previously admitted:
`
`a. Opposer’s Trial Exhibit 002: A printed marketing piece for NASACORT AQ that
`
`was used in 2006;
`b. Opposer’s Trial Exhibit 003: A printed cardboard marketing piece in the form of
`
`a computer monitor/keyboard calendar, bearing Opposer’s mark that was
`
`distributed in Q3 2006;
`
`c. Opposer’s Trial Exhibit 004: Photographs of shopping bags provided to
`
`customers and patients who purchase NASACORT, bearing the mark, used in Q3
`
`2006;
`
`d. Opposer’s Trial Exhibit 005: A printed marketing piece distributed to physicians
`
`and patients, bearing the mark, used in 2007;
`
`e. Opposer’s Trial Exhibit 006: A printed marketing piece distributed to physicians
`
`and patients, bearing the mark, used in 2007;
`
`

`

`f. Opposer’s Trial Exhibit 007: A printed marketing piece offering consumers and
`
`patients a rebate on prescriptions for NASACORT, used in 2007, including
`
`NASACORT’s full prescribing information (i.e., the package insert);
`
`g. Opposer’s Trial Exhibit 008: A printed marketing piece distributed to physicians
`
`and patients, bearing the mark, used in 2007;
`
`h. Opposer’s Trial Exhibit 009: A printed marketing piece offering consumers and
`
`patients a rebate on prescriptions for NASACORT, used in 2009, including
`
`NASACORT’s full prescribing information (i.e., the package insert);
`
`i. Opposer’s Trial Exhibit 010: A printed marketing piece distributed to physicians
`
`and patients, bearing the mark, used in 2008, including an image of the product
`
`and packaging for the same;
`
`j. Opposer’s Trial Exhibit 011: A printed marketing piece distributed to physicians
`
`and patients, bearing the mark, used in 2008, including an image of the product
`
`and packaging for the same;
`k. Opposer’s Trial Exhibit 012: Various screen shots from Opposer’s web site
`
`including information about rebates and ways for consumers to send information
`
`about Opposer’s NASACORT product to friends and family.
`
`l. Opposer’s Trial Exhibit 013: A screen shot from the ZICAM.COM home page;
`
`m. Opposer’s Trial Exhibit 014: A screen shot showing the ZICAM product line;
`
`n. Opposer’s Trial Exhibit 015: A screen shot showing the ZICAM Cold Remedy
`
`product;
`
`o. Opposer’s Trial Exhibit 016: A screen shot showing the ZICAM Cold Remedy
`
`Oral Mist product;
`
`p. Opposer’s Trial Exhibit 017: A screen shot showing the ZICAM Congestion
`
`Relief product;
`
`q. Opposer’s Trial Exhibit 018: A screen shot showing the ZICAM Allergy
`
`Remedy product;
`
`r. Opposer’s Trial Exhibit 019: A screen shot showing the ZICAM Sinus Relief
`
`product;
`
`s. Opposer’s Trial Exhibit 020: A screen shot showing the ZICAM Multi-Symptom
`
`Cold & Flu product;
`
`

`

`t. Opposer’s Trial Exhibit 021: Copies of the Watch Notices received by Opposer
`
`regarding Applicant’s marks;
`
`u. Opposer’s Trial Exhibit 022: The 2010 Annual Report of Opposer’s parent
`
`company, Sanofi-Aventis;
`
`v. Opposer’s Trial Exhibit 023: A copy of current or recent packaging for
`
`Opposer’s NASACORT product; and
`
`w. Opposer’s Trial Exhibit 025: Opposer’s specimen originally filed with its
`
`Statement of Use for NASACORT (App. Ser. No. 73689308).
`
`
`
`Opposer further gives notice of its intent to rely on the following materials:
`
`1. Opposer’s Trial Exhibit 026: A screen shot of Applicant’s web site for its product
`
`accessed and printed on February 16, 2011;
`
`2. Opposer’s Trial Exhibit 027: Applicant’s responses to Opposer’s Interrogatories; and
`
`3. Opposer’s Trial Exhibit 028: Applicant’s documents produced in response to Opposer’s
`
`
`
`Request for Production of Documents.
`
`
`
`Although some or all of this material may be properly admitted pursuant to the Parties’
`
`STIPULATION REGARDING TRIAL PERIOD, TRIAL TESTIMONY & TRIAL EVIDENCE, which was
`
`filed with the Board on February 7, 2011, Opposer submits this material through the instant
`
`Notice of Reliance to properly mark the material(s) with Opposer’s exhibits.
`
`
`
`While Opposer appreciates the Board’s preference that parties not submit the entirety of
`
`discovery materials through notices of reliance, in the instance case, Applicant’s responses
`
`
`
`
`
`
`
`
`
`

`

`are not particularly voluminous and are neither difficult for Opposer to prepare nor
`
`burdensome for the Board to review. Moreover, submission of complete materials avoids the
`
`need for Applicant to submit additional portions of its discovery responses in rebuttal.
`
`
`Date: February 16, 2011
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`LOMBARD & GELIEBTER LLP
`
`By:
`G. Mathew Lombard
`Darren M. Geliebter
`1115 Broadway
`12th Floor
`New York, New York 10010
`Attorneys for Opposer
`
`

`

`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that a true and correct copy of the OPPOSER’S THIRD NOTICE OF
`RELIANCE ON PRINTED PUBLICATIONS AND OFFICIAL RECORDS & TESTIMONY UNDER 37
`CFR §§ 2.122(E) & 2.122(J)(2) was served on counsel for Applicant by email, read receipt
`requested, (as agreed by the parties by email on December 24, 2009), this 16th day of
`February 2011:
`
`
`
`
`
`
`
`LAW@NYCTRADEMARKS.COM
`AVERNA@KRAVITZVERNA.COM
`
`Anthony M. Verna III
`KRAVITZ &VERNA LLC
`160 West End Avenue
`New York, NY 10023
`
`
`
`
`
`
`
`
`
`________________________
`G. Mathew Lombard
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Atty. Ref.: 101.0906
`
`AVENTIS PHARMACEUTICALS INC.,
`
`Opposer,
`
` Opposition No. 91192046
`
`v.
`
`HEAL THE WORLD INC.,
`
`Applicant.
`
`TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`
`
`Pursuant to the stipulation entered into between the parties, Opposer offers the
`
`testimonial declaration of Timothy Tholen herewith.
`
`I, Timothy Tholen, hereby declare:
`
`1.
`
`2.
`
`3.
`
`I am over the age of eighteen (18).
`
`I understand the meaning of an oath.
`
`I am authorized by Opposer herein, Aventis Pharmaceuticals, Inc., to make the
`
`statements contained herein and to sign this declaration.
`
`4. The statements and information provided herein are made from my personal
`
`knowledge and/or from Opposer’s corporate records.
`
`5. My educational background follows: B.A. in Finance and Marketing from University
`
`of Colorado, 1976.
`
`6.
`
`I have worked in the pharmaceutical industry for over 25 years in both the sales and
`
`marketing fields.
`
`7.
`
`I have been employed by Opposer since October 2002. In October 2002, I was
`
`responsible for medical education regarding PLAVIX; in July 2003 I assumed
`
`responsibility for all marketing materials regarding PLAVIX; in January 2005, I
`
`

`

`became responsible for the marketing of RIMONABANT; in July 2007, I re-
`
`assumed marketing responsibility for PLAVIX; in January 2010, I assumed
`
`responsibility for all Opposer’s U.S. cardiovascular and thrombosis product
`
`marketing, including PLAVIX, AVAPRO, LOVENOX, and new products; in
`
`January 2011, I assumed responsibility for General Therapeutics and Life Cycle
`
`Management, including Opposer’s NASACORT product.
`
`8.
`
`I am currently Vice President of General Therapeutics and Lifecycle Management of
`
`Aventis Pharmaceuticals, Inc.
`
`9. As of September 2008, Sanofi-Aventis, Opposer’s parent company, is the fourth
`
`largest pharmaceutical company in the world, as measured by sales of prescription
`
`products.
`
`10. For fiscal year 2010, Sanofi-Aventis’ global sales were € 30.38 billion
`
`(approximately $40.09 billion). See EXHIBIT F, Opposer’s TRIAL EXHIBIT 021,
`
`which I have reviewed and is an actual copy of Sanofi-Aventis’ annual report for
`
`fiscal year 2010; the information contained therein is true and accurate and is the
`
`information the company reported to relevant regulatory authorities and to the public.
`
`11. In my current position, I am responsible for marketing, development and sales of
`
`several of Opposer’s products, including NASACORT.
`
`12. In my current position, I am responsible for obtaining, maintaining and reviewing
`
`information about competitors’ products (“competitive intelligence”).
`
`13. The active ingredient in NASACORT is triamcinolone acetonide.
`
`14. Opposer conducted extensive clinical trials, as required by the U.S. Food & Drug
`
`Administration’s (“FDA”) approval process, prior to approval by the FDA.
`
`15. During those clinical trials, NASACORT was shown to be both efficacious and safe,
`
`as evidenced by the approval of NASACORT by the FDA.
`
`16. The U.S. Food & Drug Administration (“FDA”) approved NASACORT (as a
`
`metered aerosol nasal spray) on July 11, 1991.
`
`17. The FDA approved NASACORT AQ (as a metered nasal spray) on May 20, 1996.
`
`18. Opposer launched NASACORT AQ in the United States on June 1, 1996.
`
`19. Currently, Opposer offers for sale and sells its NASACORT product as
`
`NASACORT AQ in a .055mg/spray nasal spray.
`
`OPPOSITION NO. 91192046 TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`2
`
`

`

`20. Opposer has used its NASACORT mark in commerce, in its own name or through a
`
`predecessor-in-title or interest, in the United States since at least as early as August
`
`25, 1987. Use began in connection with clinical trials for the said product. See
`
`EXHIBIT H, Opposer’s TRIAL EXHIBIT 25.
`
`21. Since August 25, 1987, Opposer has continuously and exclusively used its
`
`NASACORT mark in commerce in the United States without any period of non-use.
`
`22. Opposer owns federal Registration No. 1538836 for NASACORT for a steroid
`
`preparation for the treatment of allergic rhinitis in Class 5, filed on October 13,
`
`1987, and a certificate of registration issued on May 16, 1989. See EXHIBIT A,
`
`Opposer’s TRIAL EXHIBIT 001. The information contained therein is accurate to the
`
`best of my knowledge.
`
`23. NASACORT is used for the “relief of seasonal and year-round nasal allergy
`
`symptoms”. It specifically alleviates stuffiness, sneezing, runny nose and itchy eyes.
`
`24. NASACORT AQ is supplied as an aqueous solution administered through a nasal
`
`spray.
`
`25. Although Opposer has discontinued certain formulations of NASACORT since 1987,
`
`Opposer has never discontinued its NASACORT product or its use of the
`
`NASACORT mark.
`
`26. I have reviewed the materials annexed hereto as EXHIBIT B; I recognize these
`
`materials.
`
`27. The materials annexed hereto as EXHIBIT B are advertising and marketing materials
`
`for NASACORT used by Opposer between the years of 2006 and 2010. Specifically,
`
`the materials attached hereto as EXHIBIT B comprise the following:
`
`Opposer’s Trial Exhibit 002: A printed marketing piece for NASACORT
`
`Opposer’s Trial Exhibit 003: A printed cardboard marketing piece in the
`
`AQ that was used in 2006;
`
`form of a computer monitor/keyboard
`
`calendar, bearing Opposer’s mark that was
`
`distributed in Q3 2006;
`
`Opposer’s Trial Exhibit 004: Photographs of shopping bags provided to
`
`customers and patients who purchase
`
`3
`
`OPPOSITION NO. 91192046 TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`

`

`NASACORT, bearing the mark, used in Q3
`
`2006;
`
`Opposer’s Trial Exhibit 005: A printed marketing piece distributed to
`
`physicians and patients, bearing the mark,
`
`used in 2007;
`
`Opposer’s Trial Exhibit 006: A printed marketing piece distributed to
`
`physicians and patients, bearing the mark,
`
`used in 2007;
`
`Opposer’s Trial Exhibit 007: A printed marketing piece offering
`
`consumers and patients a rebate on
`
`prescriptions for NASACORT, used in
`
`2007, including NASACORT’s full
`
`prescribing information (i.e., the package
`
`insert);
`
`Opposer’s Trial Exhibit 008: A printed marketing piece distributed to
`
`physicians and patients, bearing the mark,
`
`used in 2007;
`
`Opposer’s Trial Exhibit 009: A printed marketing piece offering
`
`consumers and patients a rebate on
`
`prescriptions for NASACORT, used in
`
`2009, including NASACORT’s full
`
`prescribing information (i.e., the package
`
`insert);
`
`Opposer’s Trial Exhibit 010: A printed marketing piece distributed to
`
`physicians and patients, bearing the mark,
`
`used in 2008, including an image of the
`
`product and packaging for the same;
`
`Opposer’s Trial Exhibit 011: A printed marketing piece distributed to
`
`physicians and patients, bearing the mark,
`
`used in 2008, including an image of the
`
`product and packaging for the same; and
`
`4
`
`OPPOSITION NO. 91192046 TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`

`

`Opposer’s Trial Exhibit 012: Various screen shots from Opposer’s web
`
`site including information about rebates and
`
`ways for consumers to send information
`
`about Opposer’s NASACORT product to
`
`friends and family.
`
`28. For the past eight (8) years, sales of Opposer’s NASACORT/NASACORT AQ
`
`products in the United States are shown below:
`
`FY 2003: US$ 228,939,323
`
`FY 2004: US$ 275,085,499
`
`FY 2005: US$ 266,494,020
`
`FY 2006: US$ 265,964,243
`
`FY 2007: US$ 300,654,551
`
`FY 2008: US$ 258,825,850
`
`FY 2009: US$ 217,940,235
`
`FY 2010: US$ 173,140,688
`
`29. According to IMS Health, Inc., an independent company that researches, compiles
`
`and sells information about the pharmaceutical industry, Opposer’s NASACORT
`product enjoyed the following market share in the field of “inhaled nasal steroids,”1
`
`as indicated below and as researched and reported by IMS Health, Inc.:
`
`January 2005: 14.1%
`
`January 2006: 13.0%
`
`January 2007: 11.8%
`
`January 2008: 10.4%
`
`30. According to IMS Health, Inc., an independent company that researches, compiles
`
`and sells information about the pharmaceutical industry, Opposer’s NASACORT
`product enjoyed the following market share in the field of “inhaled nasal steroids,”1
`
`as indicated below and as researched and reported by IMS Health, Inc.:
`
`Calendar Year 2005: 13.4%
`
`Calendar Year 2006: 12.1%
`
`1 For the sake of completeness, the other products in this category include: FLONASE®,
`fluticasone, NASONEX®, OMNARIS®, RHINOCORT®, RHINOCORT® AQUA and
`VERAMYST®.
`
`5
`
`OPPOSITION NO. 91192046 TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`

`

`Calendar Year 2007: 11.3%
`
`Calendar Year 2008: 9.5%
`
`31. For the past two (2) years, Opposer has spent the following amounts in connection
`
`with the marketing and advertising of Opposer’s NASACORT/NASACORT AQ
`
`products/mark in the United States:
`
`FY 2009: US$ REDACTED (representing REDACTED % of NASACORT sales)
`
`FY 2010: US$ REDACTED (representing REDACTED % of NASACORT sales)
`
`32. In a survey conducted by SDI, NASACORT/NASACORT AQ was identified
`
`by10.4% of respondents when asked what allergy medication first comes to mind.
`
`33. Opposer currently places advertising and marketing materials for its
`
`NASACORT/NASACORT AQ products/mark in the United States on the internet,
`
`printed hand-outs, other printed materials and the like.
`
`34. Opposer owns, maintains and operates a web site at HTTP://WWW.NASACORTAQ.COM
`
`to provide patients, consumers and physicians with information about its
`
`NASACORT and NASACORT AQ product. Current pages from Opposer’s web
`
`site are annexed hereto as EXHIBIT C, retrieved on February 9, 2011. I have
`
`reviewed these materials and recognize them as Opposer’s web site for NASACORT.
`
`These materials accurately reflect the pages shown on February 9, 2011. The
`
`information contained therein is accurate.
`
`35. Opposer first learned of Applicant’s LAZACOR and LAZACOR+ designations and
`
`products on or about July 9, 2009, when it received watch notices from a third party
`
`regarding Applicant’s marks. See EXHIBIT E, Opposer’s TRIAL EXHIBIT 021.
`
`36. I, personally, pronounce Opposer’s NASACORT mark as neɪz’ə’koʊrt (or naze-a-
`
`court) wherein the letter “S” is pronounced like the letter “Z”. In other words, the
`
`letter “S” in NASACORT is pronounced like the letter “S” in the word “nasal”.
`
`37. With Opposer’s U.S. organization, I have only heard my colleagues and other
`
`employees refer to Opposer’s NASACORT mark as neɪz’ə’koʊrt.
`
`38. When referring to Opposer’s NASACORT mark and product outside of the
`
`company, e.g., to customers, consumers, retailers, wholesalers, physicians, etc.,
`
`Opposer pronounces NASACORT as neɪz’ə’koʊrt.
`
`OPPOSITION NO. 91192046
`
`TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`6
`
`

`

`39. Based on the information recited in Paragraphs 35 – 37, inclusive, the letter “S” in
`
`NASACORT and the letter “Z” in LAZACOR and LAZACOR + are phonetically
`
`identical.
`
`40. On information and belief, LAZACOR is pronounced læz’ə’koʊr.
`
`41. I have reviewed the materials annexed hereto as EXHIBIT D; I recognize these
`
`materials.
`42. The materials annexed hereto as EXHIBIT D are the internet web pages for ZICAM®
`
`and packaging material(s) for various, non-exhaustive, ZICAM® products.
`
`43. Opposer considers ZICAM to be a product (or products) that competes with
`
`Opposer’s NASACORT product.
`
`44. Based on my research and knowledge of Opposer’s competitors’ products as well as
`
`my responsibility for competitive intelligence for Opposer, ZICAM is owned and
`
`marketed by Zicam LLC. The ZICAM mark is used in connection with, inter alia,
`
`the following products:
`
`ZICAM COLD REMEDY (in various formulations);
`
`ZICAM INTENSE SINUS RELIEF GEL (in a nasal spray only);
`
`ZICAM EXTREME CONGESTION RELIEF GEL (in a nasal spray
`
`only); and
`
`ZICAN ALLERGY RELIEF NASAL GEL (in nasal spray and swabs).
`
`45. ZICAM COLD REMEDY is a homeopathic product. ZICAM COLD REMEDY
`
`“reduces the severity of cold symptoms: ·sore throat ·stuffy nose ·sneezing ·coughing
`
`·congestion”. See Opposer’s TRIAL EXHIBIT 016.
`
`46. ZICAM INTENSE SINUS RELIEF GEL is not a homeopathic product. The
`
`product “temporarily relieves nasal congestion due to: ·common cols ·hay fever
`
`·upper respiratory allergies,” “helps clear nasal passages,” “shrinks swollen
`
`membranes” and “temporarily relieves sinus congestion and pressure”. See
`
`Opposer’s TRIAL EXHIBIT 019.
`
`47. ZICAM EXTREME CONGESTION RELIEF NASAL GEL is not a homeopathic
`
`product. The product “temporarily relieves nasal congestion due to: ·common cols
`
`·hay fever ·upper respiratory allergies,” “helps clear nasal passages,” “shrinks
`
`OPPOSITION NO. 91192046 TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`7
`
`

`

`swollen membranes” and “temporarily relieves sinus congestion and pressure”.
`
`Opposer’s TRIAL EXHIBIT 017.
`
`48. ZICAM ALLERGY RELIEF is a homeopathic product. The product “temporarily
`
`relieves symptoms of hay fever and other upper respiratory allergies such as: ·sinus
`
`pressure ·runny nose ·sneezing ·itchy eyes ·watery eyes ·nasal congestion”. See
`
`Opposer’s TRIAL EXHIBIT 0018.
`
`49. ZICAM MULTI-SYMPTOM COLD & FLU is not a homeopathic product. The
`
`product “temporarily relieves common cold and flu symptoms: ·cough due to minor
`
`throat and bronchial irritation ·minor aches and pains ·muscular aches ·fever ·watery
`
`eyes ·sore throat ·headache ·runny nose ·sneezing”. See Opposer’s TRIAL EXHIBIT
`
`020.
`
`50. ZICAM products include homeopathic products that compete with Opposer’s own
`
`NASACORT product(s).
`51. The owner of ZICAM® markets both homeopathic and non-homeopathic products
`under the same mark: ZICAM®.
`
`52. Applicants product(s) is/are homeopathic product(s).
`
`53. I have reviewed and am familiar with the material attached hereto as EXHIBIT G,
`
`marked as Opposer’s TRIAL EXHIBIT 023; it is a scan of recent and/or current
`
`packaging for Opposer’s NASACORT product. Additional images of Opposer’s
`
`product are also depicted in some of the materials submitted herewith as EXHIBIT B,
`
`specifically Opposer’s TRIAL EXHIBITS 002, 005, 006, 007, 008, 009, 010, 011 and
`
`012.
`
`54. In my opinion, Applicant’s LAZACOR and LAZACOR + designations are similar
`
`to Opposer’s NASACORT mark.
`
`OPPOSITION NO. 91192046 TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`8
`
`

`

`55. Based on the information above and the exhibits attached hereto, I believe that
`
`Opposer’s NASACORT mark is famous and well-known within the medical
`
`community and the community at large.
`
`Dated: February 16, 201 1
`
`
` Timothy TH 11
`Vice President, General Therapeutics
`
`& Lifecycle Management
`Aventis Pharmaceuticals, Inc.
`
`Timo
`
`Subscribed and swo
`
`
`>holen before me on the 16th day of February, 2011.
`
`
`Signatg \
`
`
`
`Printed
`"1’7--
`‘"‘
`{33,1 o}!
`
`
`Notary public, State of New Jersey, County of
`.Sbwou g ,2
`My commission expires
`IO /52 5’ {/Q
`
`9
`___—__———————
`OPPOSITION N0. 91 192046
`TESTJMONIAL DECLARATION OF TIMOTHY THOLEN
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing TESTIMONIAL
`
`AFFIDAVIT OF TIMOTHY THOLEN was served via electronic mail, return receipt requested, on this
`
`the 16th day of February 2011, upon counsel for Applicant, as agreed between the Parties:
`
`LAW@NYCTRADEMARKS.COM
`
`AVERNA@KRAVITZVERNA.COM.
`
`
`
`
`
`
`LOMBARD & GELIEBTER LLP
`
`By:
`G. Mathew Lombard
`Darren M. Geliebter
`230 Park Avenue
`10th Floor
`New York, New York 10169
`Attorneys for Opposer
`
`OPPOSITION NO. 91192046 TESTIMONIAL DECLARATION OF TIMOTHY THOLEN
`
`10
`
`

`

`"""
`
`""
`
`EXHIBIT A
`
`(To Opposer’s Testimonial Declaration of Timothy Tholen)
`
`Opposition No. 91192046
`
`

`

`UNITED STATES DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark Office
`
`January 10, 2011
`
`THE ATTACHED U.S. TRADEMARK REGISTRATION [538,836 IS
`
`CERTIFIED TO BE A TRUE COPY WHICH IS IN FULL FORCE AND
`
`EFFECT WITH NOTATIONS OF ALL STATUTORY ACTIONS TAKEN
`
`TH EREON AS DISCLOSED BY THE RECORDS OF THE UNITED STATES
`
`PATENT AND TRADEMARK OFFICE.
`
`
`
`
`“w; éjllflfl‘ififll t)3_l-"I_?ll;li.3§.!_f1.. Plum-rhino:- $.11;
`(amt-12::
`
`
`
`REGISTERED FOR A TERM OF 20 YEARS FROM May {6, [989
`
`Is! RENEWAL FOR A TERM OF 10 YEARS FROM Magi-I I6. 2009
`
`SECTION 8 8: IS
`
`SAID RECORDS SHOW TITLE TO BE IN:
`
`A VENTIS PHARMACEUTICALS INC.
`
`A DELAWARE CORPORATION
`
`
`
`By Authority of the
`
`Under Secretary of Commerce for Intellectual Property
`
`and Directorofthe Unirfitate ‘
`
`P. SW
`
`titand TrademarkOffice
`
`Certifying Officer
`
`001
`
`
`
`

`

`Int. CL: 5
`
`Prior U.S. CL: 18
`Reg. No. 1,538,836
`.
`Umted States Patent and Trademark Office Registered May 16,1989
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`NASACORT
`
`RORER PHARMACEUTICAL CORPORATION
`(DELAWARE CORPORATION)
`SCO VIRGINIA DRIVE
`FORT WASHINGTON. PA 19034
`
`FOR: STEROID PREPARATION FOR THE
`TREATMENT OF ALLERGIC RHINITIS,
`IN
`CLASS 5 (U.S. CL. 18).
`
`FIRST USE
`8—25—1987.
`
`8-19-1937;
`
`IN COMMERCE
`
`SER. NO. 689,308, FILED 10—13—1987.
`
`GARY L. SHAFFER, EXAMINING ATTORNEY
`
`

`

`
`
`EXHIBIT B
`
`
`
`(To Opposer’s Testimonial Declaration of Timothy Tholen)
`
`Opposition No. 91192046
`
`

`

`n
`
`Choose Nasacort AQ first for
`nasal symptoms of seasonal
`and perennial allergic rhinitis
`
`Powerful
`and
`Patient
`Pleasing1-5
`
`o w e r f u l nasalsympto
`P
`Alc
`
`m
`
`relief
`efficacyperformance
`escent-freeaqueo u s f o r m u l a ti o
`
`ohol-fre
`
` 002
`
`Powerful and Patient Pleasing
`
`

`

`Choose Nasacort® AQ first for nasal symptoms of seasonal and perennial allergic rhinitis
`
`Nasacort AQ—A powerful INS1-3
`
`Nasacort AQ demonstrates unsurpassed efficacy vs fluticasone propionate
`
`Nasacort AQ
`
`Fluticasone
`propionate INS
`
`*
`
`*
`
`*
`
`*P = NS
`
`*
`
`-1.6
`
`-1.2
`
`-0.8
`
`-0.4
`
`0
`
` (Improvement )
`nasal symptom scores
`
`
`
`
`
`
`
`
`
`
`Mean change from baseline in
`
`Congestion
`
`Nasal discharge
`
`Sneezing
`
`Nasal itching
`
`Investigator-blind, randomized, parallel-group, 3-week study to determine the comparable efficacy of Nasacort AQ
`(220 µg/day, n=148) vs fluticasone propionate INS (200 µg/day, n=147) in patients with seasonal allergic
`rhinitis. Neither treatment group was statistically significant vs other at any time interval during the entire
`treatment period. Chart adapted from Berger.1
`
`

`

`Important Safety Information
`
`The most commonly
`reported side effects with
`Nasacort AQ Nasal Spray
`were similar to vehicle
`placebo. In adults and
`children ages 12 and older,
`they were: pharyngitis
`5.1% vs 3.6%, epistaxis
`2.7% vs 0.8%, and increase
`in cough 2.1% vs 1.5%. In
`studies including children
`ages 6 to 11, they were:
`pharyngitis 7.4% vs 6.4%,
`increase in cough 7.0%
`vs 6.4%.
`
`Please see enclosed full
`prescribing information.
`
`Powerful and Patient Pleasing
`
` INS in 2 head-to-head SAR trials1-3
`
`Nasacort AQ
`
`Fluticasone
`propionate INS
`
`*
`
`*
`
`*P=NS
`
`*
`
`*
`
`-2.0
`
`-1.6
`
`-1.2
`
`-0.8
`
`-0.4
`
`0
`
` (Improvement )
`nasal symptom scores
`
`
`
`
`
`
`
`
`
`
`Mean change from baseline in
`
`Congestion
`
`Nasal discharge
`
`Sneezing
`
`Nasal itching
`
`Single-blind, parallel-group, active-controlled, 3-week study to determine the comparable efficacy of Nasacort AQ
`(220 µg/day, n=172) vs fluticasone propionate INS (200 µg/day, n=180) in patients with seasonal
`allergic rhinitis. Neither treatment group was statistically significant vs other at any time interval during
`the entire treatment period except Week 2 (fluticasone propionate provided greater reduction in sneezing
`[P=0.046]).2 Chart derived from clinical study report data.3
`
`

`

`Choose Nasacort® AQ first for nasal symptoms of seasonal and perennial allergic rhinitis
`
`Nasacort AQ—A patient-pleasing INS5
`
`Nasacort AQ is ranked significantly higher for
`overall liking than fluticasone propionate INS5
`
`Odor strength
`
`Strength of taste
`
`P=0.014
`
`Strength of aftertaste
`
`P=0.002
`
`Amount of irritation
`
`P=0.038
`
`administration
`
`Immediately after
`
`administration
`2 minutes after
`
`Double-blind, crossover clinical study. Ninety-five
`patients participated in the sensory comparison
`preference study of Nasacort AQ (220µg),
`fluticasone propionate INS (200µg), and
`mometasone furoate (200µg) (original
`formulation) given once as 2 sprays per
`nostril. Patients rated the 3 drugs on these
`parameters immediately after administration:
`overall comfort during administration, amount
`of medication running down throat and nose,
`amount of irritation, strength of urge to
`sneeze, odor strength, liking of odor, strength
`of taste, bitter taste, liking taste, and dry vs
`moist sensation; 2 minutes after administration:
`strength of aftertaste, amount of medication
`running down throat and nose, amount of
`irritation, and overall liking of product.
`Nasacort AQ showed a statistically significant
`difference over fluticasone propionate INS in 8
`of the 14 attributes, with the exception of
`0 10 20 30 40 50 60 70
`overall comfort, amount of irritation, strength
`No
`Extreme
`amount
`amount
`of urge to sneeze, bitter taste, liking of taste
`(immediately after administration), and amount
`of medication running down throat and nose
`(2 minutes after administration).5 Chart derived
`from clinical study report data.3
`
`P<0.001
`
`Nasacort AQ
`
`Fluticasone
`propionate INS
`
`Mean score
`
`

`

`Important Safety Information
`
`The most commonly
`reported side effects with
`Nasacort AQ Nasal Spray
`were similar to vehicle
`placebo. In adults and
`children ages 12 and older,
`they were: pharyngitis
`5.1% vs 3.6%, epistaxis
`2.7% vs 0.8%, and increase
`in cough 2.1% vs 1.5%. In
`studies including children
`ages 6 to 11, they were:
`pharyngitis 7.4% vs 6.4%,
`increase in cough 7.0%
`vs 6.4%.
`
`Please see enclosed full
`prescribing information.
`
`Powerful and Patient Pleasing
`
`In a clinical study, over 80% of patients taking
`Patients remaining on therapy at 6 months
`Nasacort AQ remained on therapy after 6 months6
`
`99.4
`
`97.1
`
`94.2
`
`83.6
`
`72.5
`
`62.0
`
`100
`
`80
`
`60
`
`40
`
`20
`
`0
`
`therapy(N=172)
`
`%ofpatientsremainingon
`
`0
`
`1
`
`2
`
`3
`
`6
`
`9
`
`12
`
`Length of therapy (months)
`
`A 12-month, multicenter, open-label extension of a 4-week, double-blind study in adolescents and adults
`with perennial allergic rhinitis. The primary endpoint was to determine long-term safety and efficacy of
`Nasacort AQ (N=172). Patients randomized to either Nasacort AQ or placebo in the blinded portion of
`the trial were given Nasacort AQ (220µg/day) throughout the open-label extension. The primary endpoint
`of the extension was long-term safety and tolerability of once-daily Nasacort AQ.6
`
`

`

`Nasacort AQ — Powerful and patient pleasing1-5
`
`Nasacort AQ
`220 g/day*
`2 sprays/nostril
`
`Refill
`
`3
`
`times
`
`*Adult starting dose.
`
`Choose Nasacort AQ first for nasal
`symptoms of seasonal and perennial
`allergic rhinitis
`
`Demonstrates unsurpassed efficacy vs
`fluticasone propionate INS in 2 head-to-
`head SAR trials1-3
`
`Ranked significantly higher for overall
`liking vs fluticasone propionate INS5
`
`Over 80% of patients in a clinical trial
`remained on therapy after 6 months6
`
`References: 1. Berger WE, Kaiser H, Gawchik SM, et al. Triamcinolone acetonide aqueous nasal spray and fluticasone propionate
`are equally effective for relief of nasal symptoms in patients with seasonal allergic rhinitis. Otolaryngol Head Neck Surg. 2003;129(1):
`16-23. 2. Gross G, Jacobs RL, Woodworth TH, et al. Comparative efficacy, safety, and effect on quality of life of triamcinolone acetonide
`and fluticasone propionate aqueous nasal sprays in patients with fall seasonal allergic rhinitis. Ann Allergy Asthma
`Immunol. 2002;89:56-62. 3. Data on file. Sanofi-aventis U.S. 4. Kaiser HB, Liao Y, Diener P, et al. Triamcinolone acetonide and fluticasone
`propionate nasal sprays provide comparable relief of seasonal allergic rhinitis symptoms regardless of disease severity. Allergy Asthma
`Proc. 2004;25:423-428. 5. Bachert C, El-Akkad T. Patient preferences and sensory comparisons of three intranasal corticosteroids for
`the treatment of allergic rhinitis. Ann Allergy Asthma Immunol. 2002;89:292-297. 6. Koepke JW, Beaucher WN, Kobayashi RH, et al.
`Long-term safety and efficacy of triamcinolone acetonide aqueous nasal spray for the treatment of perennial allergic rhinitis. Allergy
`Asthma Proc. 1997;18:33-37.
`
`Important Safety Information
`
`The most commonly
`reported side effects with
`Nasacort AQ Nasal Spray
`were similar to vehicle
`placebo. In adults and
`children ages 12 and older,
`they were: pharyngitis
`5.1% vs 3.6%, epistaxis
`2.7% vs 0.8%, and increase
`in cough 2.1% vs 1.5%. In
`studies including children
`ages 6 to 11, they were:
`pharyngitis 7.4% vs 6.4%,
`increase in cough 7.0%
`vs 6.4%.
`
`Please see enclosed full
`prescribing information.
`
`US.TMA.06.09.002 Printed in U.S.A.
`© 2006 sanofi-aventis U.S. LLC
`
`Powerful and Patient Pleasing
`
`

`

`
`
`-\
`
`Nasacorf‘
`
`January 2007
`S
`F
`S M T W T
`6
`5
`1
`2
`3
`4
`8
`9 1011 1213
`7
`1415 16 17 18 19 20
`21 22 23 24 25 26 27
`28 29 30 31
`
`February 2007
`S
`F
`S M T W T
`3
`2
`1
`10
`9
`8
`7
`6