Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA336732
`ESTTA Tracking number:
`03/11/2010
`
`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
`
`Actelion Pharmaceuticals, Ltd.
`Corporation
`Gewerbestrasse 16
`Allschwill, 4123
`SWITZERLAND
`
`Citizenship
`
`Switzerland
`
`Attorney
`information
`
`Scott D. Woldow
`Smith, Gambrell & Russell, LLP
`1130 Connecticut Avenue, NW Suite 1130
`Washington, DC 20036
`UNITED STATES
`sdwoldow@sgrlaw.com Phone:202-263-4300
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77732991
`03/11/2010
`
`Publication date
`Opposition
`Period Ends
`
`02/09/2010
`03/11/2010
`
`Acetylon Pharmaceuticals, Inc.
`C/O Marc Cohen (OPNET) 7255 Woodmont Avene
`Bethesda, MD 20814
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Pharmaceutical products for the prevention
`and treatment of cancer
`Class 042.
`All goods and services in the class are opposed, namely: Pharmaceutical drug development services
`
`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
`
`3148269
`
`09/26/2006
`
`Word Mark
`
`ACTELION
`
`Application Date
`
`09/12/2005
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA336732
`ESTTA Tracking number:
`03/11/2010
`
`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
`
`Actelion Pharmaceuticals, Ltd.
`Corporation
`Gewerbestrasse 16
`Allschwill, 4123
`SWITZERLAND
`
`Citizenship
`
`Switzerland
`
`Attorney
`information
`
`Scott D. Woldow
`Smith, Gambrell & Russell, LLP
`1130 Connecticut Avenue, NW Suite 1130
`Washington, DC 20036
`UNITED STATES
`sdwoldow@sgrlaw.com Phone:202-263-4300
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`77732991
`03/11/2010
`
`Publication date
`Opposition
`Period Ends
`
`02/09/2010
`03/11/2010
`
`Acetylon Pharmaceuticals, Inc.
`C/O Marc Cohen (OPNET) 7255 Woodmont Avene
`Bethesda, MD 20814
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Pharmaceutical products for the prevention
`and treatment of cancer
`Class 042.
`All goods and services in the class are opposed, namely: Pharmaceutical drug development services
`
`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
`
`3148269
`
`09/26/2006
`
`Word Mark
`
`ACTELION
`
`Application Date
`
`09/12/2005
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2001/01/15 First Use In Commerce: 2001/01/15
`PHARMACEUTICAL PREPARATIONS FOR HUMAN AND VETERINARIAN
`USE, NAMELY, MEDICINES ACTING ON THE CARDIOVASCULAR SYSTEM,
`CHEMOTHERAPEUTICS, MEDICINES ACTING ON THE CENTRAL
`NERVOUS AND PERIPHERAL SYSTEM, MEDICINES ACTING ON THE
`RESPIRATORY SYSTEM, MEDICINES ACTING ON THE DIGESTIVE
`SYSTEM AND RELATED GLANDS, MEDICINES ACTING ON THE URINARY
`SYSTEM, IMMUNISUPPRESANTS, ANTI INFLAMMATORY, ANTI-ALLERGIC,
`HYPOSENSITIZING AND ANTI-TOXINS MEDICINES ACTING ON BLOOD
`AND HEMATOPOEITIC ORGANS
`
`Attachments
`
`78710970#TMSN.jpeg ( 1 page )( bytes )
`TM Document.PDF ( 12 pages )(498037 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
`
`/SW/
`Scott D. Woldow
`03/11/2010
`
`
`
`Attome Docket No.
`034406.013OPP
`
`TRADEMARK
`
`In the Matter of Application Serial No. 77/732,991
`Published: February 9, 2010
`
`Actelion Pharmaceuticals, Ltd.
`
`Opposer,
`
`V.
`
`Acetylon Pharmaceuticals, Inc.
`
`Applicant.
`
`Commissioner for Trademarks
`Box TTAB FEE
`P.O. Box 1451
`
`Alexandria, Virginia 223 13-145 1
`
`Madam:
`
`\/%\/J/\J\)\)£
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`In the matter of the application of Acetylon Pharmaceuticals, Inc., for registration of the
`
`mark ACETYLON, filed on May 8, 2009, identified by application Serial No. 77/732,991, and
`
`published in the Official Gazette on February 9, 2010, Actelion Pharmaceuticals, Ltd. believes
`
`that it will be damaged by registration of the mark shown in Serial No. 77/732,991, and hereby
`
`opposes registration.
`
`Page -1-
`
`.
`
`
`
`
`
`
`
`szeawc-.\‘_‘.aa;:m~\
`
`Actelion Pharmaceuticals, Ltd. (hereinafter “Opposer”), a Corporation of Switzerland,
`having offices located at Gewerbestrasse 16, Allschwill, Switzerland, 4123, believes that it will
`
`be damaged by registration of the mark ACETYLON, Application Serial No. 77/732,991 and
`hereby opposes the same.
`
`The grounds for opposition are as follows.
`
`1.
`
`2.
`
`Opposer is now and has been engaged in the pharmaceutical business.
`
`Opposer manufactures pharmaceuticals and is in the business of pharmaceutical
`
`research and development, clinical trials, and provision ofpharmaceutical information.
`
`3.
`
`Opposer is the owner of United States Registration No. 3,148,269 for the mark
`
`ACTELION which
`
`registered
`
`on
`
`September
`
`26,
`
`2006,
`
`in
`
`association with
`
`“PHARMACEUTICAL PREPARATIONS FOR HUMAN AND VETERINARIAN USE,
`
`NAMELY, MEDICINES
`
`ACTING
`
`ON
`
`THE
`
`CARDIOVASCULAR
`
`SYSTEM,
`
`CHEMOTHERAPEUTICS, MEDICINES ACTING ON THE CENTRAL NERVOUS AND
`
`PERIPHERAL SYSTEM, MEDICINES ACTING ON THE RESPIRATORY SYSTEM,
`
`MEDICINES ACTING ON THE DIGESTIVE SYSTEM AND RELATED GLANDS,
`
`MEDICINES ACTING ON THE URINARY SYSTEM,
`
`IMMUNISUPPRESANTS, ANTI
`
`INFLAMMATORY, ANTI-ALLERGIC, HYPOSENSITIZING AND ANTI-TOXINS
`
`MEDICINES ACTING ON BLOOD AND HEMATOPOEITIC ORGANS.”
`
`4.
`
`Opposer is now and has been using the ACTELION mark in United States
`
`commerce in association with pharmaceutical preparations.
`
`5.
`
`Opposer’s ownership of United States Trademark Reg. No. 3,148,269 has been
`
`valid and continuous and has not been abandoned.
`
`Page - 2 -
`
`
`
`6.
`
`Opposer’s mark is symbolic of extensive goodwill and consumer recognition built
`
`up by Opposer through substantial amounts oftime and effort in advertising, promotion and sales
`
`of products thereunder.
`
`7.
`
`Notwithstanding Opposer’s rights in and to its trademark, Applicant on May 8,
`
`2009, filed an application for registration of the mark ACETYLON.
`
`8.
`
`The ACETYLON mark was approved for publication in association with
`
`“pharmaceutical products developed for the prevention and treatment of cancer,” in Class 5 and
`
`“pharmaceutical drug development services,” in Class 42.
`
`9.
`
`The application was assigned Serial No. 77/732,991 and was published for
`
`opposition in the Official Gazette on February 9, 2010.
`
`10.
`
`Applicant’s mark, ACETYLON, when used in connection with the goods and
`
`services set forth in its application, is confusingly similar to Opposer’s ACTELION mark, as set
`
`forth and protected by Opposer’s above-identified trademark registration.
`
`11.
`
`Purchasers of Applicant’s goods and/or services and Opposer’s goods are likely to
`
`be confused, mistaken or deceived as to the source ofthe goods or services. Applicant’s mark, in
`
`association with the products and services identified in its trademark application, is likely to
`
`cause confusion, mistake or deception when compared to Opposer’s mark.
`
`12.
`
`Applicant’s mark and Opposer’s mark are similar in sound and appearance such
`
`that when used on highly similar goods and/or services there would be a likelihood of confusion,
`
`mistake or deception.
`
`13.
`
`Applicant’s mark and Opposer’s mark have a similar connotation and commercial
`
`impression due to the nearly identical appearance and sound of the marks. The similarity of the
`
`marks in connotation and commercial impression is compounded when the nearly identical
`
`Page - 3 -
`
`
`
`likelihood ofconfusion as to sponsorship or affiliation.
`
`15.
`
`Applicant and Opposer use
`
`their
`
`respective marks
`
`in association with
`
`pharmaceuticals.
`
`16.
`
`Applicant uses the mark ACETYLON as part of a company name as well as a
`
`trademark to identify pharmaceutical products.
`
`17.
`
`Applicant uses the mark ACETYLON on a variety ofpharmaceuticals products as
`
`a house mark.
`
`18.
`
`Applicant and Opposer use their respective marks as part of a company name
`
`followed by the word pharmaceuticals and an entity designation, ie., Acetylon Pharmaceuticals,
`
`Inc. and Actelion Pharmaceuticals, Ltd.
`
`19.
`
`20.
`
`Applicant and Opposer develop pharmaceutical products.
`
`If Applicant is permitted to use and register its mark, ACETYLON, for the goods
`
`and services specified in its trademark application, confusion in the trade resulting in damage
`
`and injury to Opposer would be caused and would result by reason of the similarity between
`
`Applicant’s mark and Opposer’s mark.
`
`21.
`
`Persons familiar with Opposer’s mark would be likely to confuse Applicant’s
`
`goods and services as a product or service made, sold, or sponsored by Opposer. Any such
`
`confusion in the trade would inevitably result in loss of sales to Opposer.
`
`Page - 4 -
`
`
`
`,7,-.«>1..»—.{.-;...\».‘......«.‘.v_~.«..\.«..~:.:.«...\.~....-;r—.-«..a-ma»-;=»=a:=m;.a-«-ca-v-«v.-v~‘-
`
`
`
`
`
`
`
`
`
`mark would necessarily reflect badly upon and significantly injure the reputation which Opposer
`has established for its products.
`
`23.
`
`Members of the healthcare profession, patient community and general public
`
`familiar with Opposer’s ACTELION products, upon encountering applicant’s products under the
`
`mark ACETYLON, are likely to be confused or mistaken as to whether Applicant’s products
`
`emanate from Actelion Pharmaceuticals, Ltd. or from a source connected with Actelion
`
`Pharmaceuticals, Ltd., potentially resulting in serious injury or possibly death.
`
`24.
`
`A printout of information from the electronic database records of the United
`
`States Patent and Trademark Office showing the current status and title of Trademark
`
`Registration No. 3,148,269 is attached hereto as Exhibit A and is made part of the record.
`
`WHEREFORE, Opposer believes that it will be damaged by registration of Applicant’s
`
`mark, and prays that registration be denied.
`
`Please charge Deposit Account No. 02-4300 for any additional fees that may be required.
`
`Respectfully submitted,
`
`SMIT , AMBRELL & RUSSELL, LLP
`
`
`
`A rney for Opposer
`1130 Connecticut Avenue, N.W., Suite 1130
`Washington, DC 20036
`Telephone: (202) 263-4300
`Facsimile: (202) 263-4329
`Email: sdwoldow@sgrlaw.com
`
`Page - 5 -
`
` mm«a:5&mne:mwawm%mvm\w
`
`
`
`
`AHBHXE
`
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`
`
`
`
`Trademark Electronic Search System (TESS)
`
`Page 1 of2
`
`United States Patent and Trademark Office
`
`
`
`Please logout when you are done to release system resources allocated for you. I
`
`
`
`'
`A.SSlG¥Z status
`
`Browser to return to TESS)
`
`WAB states
`
`( Use the "Back" button of the Internet
`
`ACTELIN
`
`Word Mark
`Goods and
`Services
`
`ACTELION
`IC 005. US 006 018 O44 O46 051 052. G & S: PHARMACEUTICAL PREPARATIONS FOR HUMAN
`AND VETERINARIAN USE, NAMELY, MEDICINES ACTING ON THE CARDIOVASCULAR
`
`Standard
`Characters
`Claimed
`
`Mark Drawin
`Code
`
`Serial
`Number
`
`Filing Date
`Current Filing
`Basis
`
`Original
`Filing Basis
`Published for
`Opposition
`
`Registration
`
`9 (4) STANDARD CHARACTER MARK
`
`78710970
`
`September 12, 2005
`
`IA
`
`IA
`
`July 4, 2006
`
`http://tess2.uspto.gov/bin/gate.exe?f=doc&state=4004:epign0.2. 1
`
`3/9/2010
`
`
`
`Trademark Electronic Search System (TESS)
`
`Page 2 of 2
`
`Number
`3148269
`§§f’e'S"a"°" September 26, 2006
`Owner
`(REGISTRANT) Actelion Pharmaceuticals, Ltd CORPORATION SWITZERLAND Gewerbestrasse 16
`Allschwil SWITZERLAND 4123
`Attorney of
`Record
`
`Scott D. Woldow
`
`<_,:ur.,
`
`W.mwM.mMw.mwMW
`
`W
`
`
`
`Type of Mark TRADEMARK
`
`PRINCIPAL
`
`Register
`LivelDead
`LIVE
`Indicator
`
`
`
`USER
`
`
`
`
`
`"“- Lrz
`
`TEES B-mm-:
`
`3%..
`
`¢.:.5'T
`
`
`
`
`
`»»-w'~a-'\*"-*"‘~'5‘“'*=-*“"*’*
`
`
`
`http://tess2.uspto.gov/bin/gate.exe?%doc&state=4004:epign0.2. 1
`
`3/9/2010
`
`
`
`Latest Status Info
`
`page 1 of3
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2010-03-09 16:56:34 ET
`
`Serial Number: 78710970 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: 3 148269 _
`
`Mark
`
` TELION
`
`(words only): ACTELION
`
`Standard Character claim: Yes
`
`Current Status: Registered.
`
`Date of Status: 2006-09-26
`
`Filing Date: 2005-09-12
`
`Transformed into a National Application: No
`
`Registration Date: 2006-09-26
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 102
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact
`the Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 650 -Publication And Issue Section
`
`Date In Location: 2006-09-26
`
`
`
`LAST APPLICANT(S)/OWNER(S) or RECORD
`
`1. Actelion Pharmaceuticals, Ltd
`
`Address:
`
`http://tarr.uspto.goV/tarr?regse1=registration&entry=3 148269
`
`3/9/2010
`
`
`
`Latest Status Info
`
`page 2 of3
`
`Actelion Pharmaceuticals, Ltd
`Gewerbestrasse 16
`Allschwil 4123
`Switzerland
`Legal Entity Type: Corporation
`State or Country of Incorporation: Switzerland
`Phone Number: 41-1-262-41-11
`Fax Number: 41-1-262-21-01
`
`.,.....................¢..........».".....,..,....W........«,...,.................¢........,....m,.,~......W4.4u........«................m...,..m.m...W.,.WN...mm.W..................,.,........¢.«............m«...«............m.....¢..............WWW.....,w...................,.1W......m.....,,..........m.w..mm.wmmmWmmm«m«m.wm...Wm~.m.m~mwmm.«...mmw~.
`GOODS AND/OR SERVICES
`
`International Class: 005
`Class Status: Active
`
`HEMATOPOEITIC ORGANS
`Basis: 1(a)
`First Use Date: 2001-01-15
`First Use in Commerce Date: 2001-01-15
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`(NOT AVAILABLE)
`
`(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.
`
`2009-09-21 - Attorney Revoked And/Or Appointed
`
`2009-09-21 - TEAS Revoke/Appoint Attorney Received
`2006-09-26 - Registered - Principal Register
`
`2006-07-04 - Published for opposition
`
`2006-06-14 - Notice of publication
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=3 148269
`
`3/9/2010
`
`
`
`Latest Status Info
`
`Page 3 of3
`
`2006-05-13 - Law Office Publication Review Completed
`
`2006-05-08 - Assigned To LIE
`
`2006-05-03 - Approved for Pub - Principal Register (Initial exam)
`
`2006-05-03 — Amendment From Applicant Entered
`
`2006-04-21 - Communication received from applicant
`
`2006-04-21 - PAPER RECEIVED
`
`2006-03-22 - Non-final action e-mailed
`
`2006-03'-22 - Non-Final Action Written
`
`2006-03-22‘ - Assigned To Examiner
`
`2005-09-20 - New Application Entered In Tram
`
`
`ATTORNEY/CORRESPONDENT INFORMATION
`
`Attorney of Record
`Scott D. Woldow
`
`Correspondent
`Scott D. Woldow
`Smith, Gambrell & Russell, LLP
`Suite 1130
`
`1130 Connecticut Avenue, NW
`Washington DC 20036
`
`Domestic Representative
`Scott D. Woldow
`
`http://tarr.uspto.gov/tarr?regser=registration&entry=3 148269
`
`3/9/2010
`
`
`
`Attorne Docket No.
`034406.0130pp
`
`TRADEMARK
`
`Opposition No.
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`)
`
`In the Matter of Application Serial No. 77/732,991
`Published: February 9, 2010
`
`Actelion Pharmaceuticals, Ltd.
`
`Opposer,
`
`v.
`
`Acetylon Pharmaceuticals, Inc.
`
`Applicant.
`
`Commissioner for Trademarks
`Box TTAB FEE
`P.O. Box 1451
`Alexandria, Virginia 223 13-1451
`
`CERTIFICATE OF SERVICE
`
`I, Scott D. Woldow, counsel for Actelion Pharmaceuticals Ltd., do hereby certify that the
`
`NOTICE OF OPPOSITION was served upon applicant by placing a copy of same in the U.S.
`
`mail, postage prepaid, addressed as follows:
`
`PATRICK J. CONCANNON
`EDWARDS ANGELL PALMER & DODGE LLP
`F.D.R. STATION, P.O. BOX 130
`NEW YORK, NY 10150
`
`This 1i_T“ day of March, 2010
`
`#366855
`
`Scott D. Wold W
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