throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA407018
`ESTTA Tracking number:
`05/04/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91194697
`Defendant
`Sulzer Mixpac AG
`MICHAEL T. MURPHY
`K&L GATES LLP
`1601 K STREET NW
`WASHINGTON, DC 20006-1600
`UNITED STATES
`chicago.trademarks@klgates.com
`Other Motions/Papers
`Christopher S. Adkins
`chicago.trademarks@klgates.com, michael.murphy@klgates.com,
`christopher.adkins@klgates.com
`/Christopher S. Adkins/
`05/04/2011
`Sulzer App 77848315.PDF ( 6 pages )(156832 bytes )
`Sulzer App 77848320.PDF ( 6 pages )(158891 bytes )
`Sulzer App 77848338.PDF ( 6 pages )(155497 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`In the Matter of Application No. 77848315
`Filed: October 14, 2009
`For the Mark: Pink Mixing Tip Configuration in International Class 10
`Published in the Official Gazette: April 20, 2010
`
`Pac-Dent International, Inc.,
`
`Opposer,
`
`V.
`
`Sulzer Mixpac AG,
`
`Applicant.
`
`\_/g/\_/\/\/\/\y\./\./\J
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`4
`
`Alexandria, VA 223 13- 145 1
`
`Opposition No. 91 194697
`
`OPPOSER’S WITHDRAWAL OF OPPOSITION
`
`Registrant Sulzer Mixpac AG (“Sulzer” or “Applicant”), by its undersigned counsel,
`
`K&L Gates LLP, respectfully submits Opposer’s Withdrawal of Opposition of Applicant’s mark.
`
`INTRoDIt1cTIoN
`
`Sulzer filed suit against Opposer based upon trademark and patent infringement in the
`
`United States District Court Southern District of Neva York (“District Court”) in Sulzer Mixpac
`
`USA, Inc. and Sulzer Mixpac AG vs. Pac-Dent International Inc., Pac-Dent, Inc., Pac—Dent
`
`International (Suzhou), Ltd. and Daniel Y. Wang, No. O9—CiV 10430—(DAB) on March 18, 2010
`
`(the “Civil Action”).
`
`In response, Opposer
`
`filed an Opposition against Applicant’s Pink Mixing Tip,
`
`Application No. 77848315, with the Trademark Trial and Appeal Board (“Board”). Because the
`
`DC-9206452 V1
`
`

`
`outcome of the Civil Action had a bearing on the Opposition, Applicant filed a Motion to Stay
`
`the Opposition and the Board granted Applicant’s motion.
`
`WITHDRAWAL OF OPPOSITION
`
`II.
`
`Opposer now Withdraws its Opposition. Applicant hereby submits Opp_oser’s
`
`Withdrawal of the Opposition which is attached as Exhibit A.
`
`III.
`
`CONCLUSION
`
`WHEREFORE, Applicant
`
`respectfully requests
`
`that
`
`the Board enter Opposer’s
`
`Withdrawal of its Opposition and dismiss the proceeding in Applicant’s favor.
`
`Dated: May 3, 2011.
`
`SULZER MIXPAC AG
`
`Applicant
`
`
`
`Michael T. Murphy, Esq.
`Christopher S. Adkins, Esq.
`K&L GATES LLP
`1601 K Street NW
`
`Washington, DC 20006-1600
`(312) 807-4272
`
`

`
`CERTIFICATE OF SERVICE
`
`Servedvia Trademark Trial and Appeal Boa1'd’s electronic system (ESTTA) to the following.
`
`Philip H. Gottfried
`Amster, Rothstein & Ebenstein, LLP
`Attorneys for Opposer
`90 Park Avenue, 21“ Floor
`New York, New York 10016
`(212) 336-8000
`
`Applicant by first-class mail sending the same to the following:
`
`Arnold I. Kalman, Esq.
`Law Offices of Arnold I. Kalman
`
`Attorneys for Opposer
`245 South Hutchinson Street
`
`Philadelphia, PA 19107-5723
`(215) 829-9613
`
`Respectfully submitted,
`
`Michael T. Murphy, Esq.
`Christopher S. Adkins, Esq.
`Attorneys for Applicant
`K&L GATES LLP
`1601 K Street NW
`
`Washington, DC 20006~ 1600
`(312) 807-4272
`
`
`
` Michael T. urphy
`michael.mu§phy@klgates.com
`
`Dated: Washington, DC
`
` ,2011
`
`

`
`
`
`EXHIBIT AEXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_ . _ _ _ _ _ _ _ _ _ . — _ _ _ — . —. .x
`
`PAC~DENT INTERNATIONAL, INC.,
`
`OPPOSGIE
`
`Opposition No. 91194697
`
`V-
`
`WITHDRAWAL or OPPOSITION
`
`SULZER MIXPAC AG,
`
`’
`
`_
`Applicant.
`_ _ _ . . . _ _ _ — — _ — — — — ~ — — -X
`
`Honorable Commissioner for Trademarks
`
`Washington, DC. 20231
`
`Sir:
`
`The above-identified Opposer hereby withdraws the above—identified Opposition, which has
`
`currently been suspended in View of the existence of an Action which had been pending in the
`
`United States District Court for the Southern District of New York entitled Sulzer Mixpac USA,
`
`Inc. and Sulzer Mbcpac AG v. Pac-Dent International, Inc., Pac—Dent, Inc., Pac-Dent
`
`International (Suzhou), Ltd. and Daniel Y. Wang, in View of such Action itself having been
`
`terminated.
`
`Dated:
`
`New York, New York
`March 17, 201 1‘
`
`479079.!
`
`.
`Respectfully submitted,
`
`AMSTER, ROTHSTEIN & EBENSTEIN, LLP
`Attomeys for Opposer
`90 Park Avenue, 21“ Floor
`New York, New York 10016
`
`(212) 336-8000
`
`By: 6?;,,Mzg
`
`Philip H. Gottfried
`
`

`
`CERTIFICATE OF SERVICE
`
`It is herebycertified that theundersignedhas this 2
`
`dayof
`
`served a true and correct copy of the foregoing WITHDRAWAL OF OPPOSIT N on
`
`, 2011
`
`Applicant by e—mail and first—class mail by sending the same to the following:
`
`‘ Michael T. Murphy, Esq.
`K&L Gates LLP
`
`1601 K Street, N.W.,
`Washington, D.C. 20006
`(202) 778-9176
`Michael.murphy@lclgates.corn
`Attorneys for Applicant
`
`Respectfully submitted,
`
`Arnold I. Kalman, Esq.
`Law Offices of Arnold I. Kalman
`
`Attorneys for Petitioner
`245 South Hutchinson Street
`
`
`
`Philadelphia, PA 1
`(215) 829-9 1
`
`-5
`
`Dated: P ' delphia, PA
`.2»
`
`, 2011
`
`Arnold I. Kalman
`
`arn0ldl<almar1@arnoldkalmanlawsom
`
`4790791
`
`

`
`In the Matter of Application No. 77848320
`Filed: October 14, 2009
`For the Mark: Purple Mixing Tip Configuration in International Class 10
`Published in the Official Gazette: April 20, 2010
`
`Pac—Dent International, Inc.,
`
`Opposer,
`
`V.
`
`Sulzer Mixpac AG,
`
`Applicant.
`
`&/k/§/g/Q/g/9/L/\_/2
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Opposition No. 91 194697
`
`OPPOSER’S WITHDRAWAL OF OPPOSITION
`
`Registrant Sulzer Mixpac AG (“Sulzer” or “Applicant”), by its undersigned counsel,
`
`K&L Gates LLP, respectfully submits Opposer’s Withdrawal of Opposition of Applicant’s mark.
`
`I.
`
`INTRODUCTION
`
`Sulzer filed suit against Opposer based upon trademark and patent infringement in the
`
`United States District Court Southern District of New York (“District Court”) in Sulzer Mixpac
`
`USA, Inc. and Sulzer Mixpac AG vs. Pac—Dent International Inc., Pac—Dent, Inc., Pac—Denz‘
`
`International (Suzhou), Ltd. and Daniel Y. Wang, No. 09—Civ 10430—(DAB) on March 18, 2010
`
`(the “Civil Action”).
`
`In response, Opposer filed an Opposition against Applicant’s Purple Mixing Tip,
`
`Application No. 77848320, with the Trademark Trial and Appeal Board (“Board”). Because the
`
`DC-9206424 v1
`
`

`
`outcome of the Civil Action had a bearing on the Opposition, Applicant filed a Motion to Stay
`
`the Opposition and the Board granted Applicant’s motion.
`
`WITHDRAWAL OF OPPOSITION
`
`II.
`
`Opposer now withdraws its Opposition. Applicant hereby submits Opposer’s
`
`Withdrawal of the Opposition which is attached as Exhibit A.
`
`III.
`
`CONCLUSION
`
`WHEREFORE, Applicant
`
`respectfully requests
`
`that
`
`the Board enter Opposer’s
`
`Withdrawal of its Opposition and dismiss the proceeding in App1icant’s favor.
`
`Dated: May 3, 2011.
`
`SULZER MIXPAC AG
`Applicant
`
`
`
`Michael T. Murphy, Esq.
`Christopher S. Adkins, Esq.
`K&L GATES LLP,
`1601 K Street NW 7
`
`Washington, DC 20006-1600
`(312) 807-4272
`
`

`
`Served Via Trademark Trial and Appeal Board’s electronic system (ESTTA) to the following.
`
`CERTIFICATE OF SERVICE
`
`Philip H. Gottfried
`Arnster, Rothstein & Ebenstein, LLP
`Attorneys for Opposer
`90 Park Avenue, 21“ Floor
`New York, New York 10016
`(212) 336-8000
`
`Applicant by first—class mail sending the same to the following:
`
`Arnold I. Kalman, Esq.
`Law Offices of Arnold I. Kalman
`
`Attorneys for Opposer
`245 South Hutchinson Street
`
`Philadelphia, PA 19107-5723
`(215) 829-9613
`
`Respectfully submitted,
`
`Michael T. Murphy, Esq.
`Christopher S. Adkins, Esq.
`Attorneys for Applicant
`K&L GATES LLP
`1601 K Street NW
`
`Washington, DC 20006-1600
`(312) 807-4272
`
`
`Michael T. rp 0
`
`michael.murphy@klgates.com
`
`
`
`By
`
`Dated: Washington, DC
` ,20ll
`
`

`
`
`
`EXHIBIT AEXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_ _ . _ _ _ _ _ _ . _ _ . _ _ _ _ — —.
`
`.X
`
`PAC-DENT INTERNATIONAL, INC.,
`
`OPPOSCY,
`
`Opposition No. 91 194697
`
`WITHDRAWAL OF OPPOSITION
`
`V-
`
`SULZER MIXPAC AG,
`
`Applicant
`_ _ _ _ _ _ _ _ _ _ _ . _ _ _ _ _ _ —.
`
`.x
`
`Honorable Commissioner for Trademarks
`
`Washington, D.C. 20231
`
`Sir:
`
`The above—identif1ed Opposer hereby withdraws the above—identified Opposition, which has
`
`currently been suspended in view of the existence of an Action which had been pending in the
`
`United States District Court for the Southern District of New York entitled Sulzer Mixpac USA,
`
`Inc. and Sulzer Mixpac AG v. Pac-Dent International, Inc., Pac—Dent, Inc., Pac—Dent
`
`International (Suzhou), Ltd. and Daniel Y. Wang, in View of such Action itself having been
`
`terminated.
`
`Dated:
`
`New York, New York
`
`March 17, 2011
`
`Respectfully submitted,
`
`AMSTER, ROTHSTEIN & EBENSTEIN, LLP
`Attorneys for Opposer
`90 Park Avenue, 21“ Floor
`New York, New York 10016
`
`(212) 336-8000
`
`69132414
`
`Philip H. Gottfried
`
`479079J
`
`

`
`CERTIFICATE OF SERVICE
`
`It is herebycertifiedthat theundersignedhas this
`
`gg
`
`served a true and correct copy of the foregoing WITHDRAWAL OF OPPOSI
`
`dayof
`
`, 201l
`
`N on
`
`Applicant by e—mail and first-class mail by sending the same to the following:
`
`Michael T. Murphy, Esq.
`K&L Gates LLP
`
`1601 K Street, N.W.,
`
`Washington, D.C. 20006
`(202) 778-9176
`Michael.murphy@klgates.com
`Attorneys for Applicant
`
`Respectfully submitted,
`
`Arnold I. Kalman, Esq.
`Law Offices of Arnold I. Kalrnan
`
`Attorneys for Petitioner
`245 South Hutchinson Street
`
`Philadelphia, PA
`
`Arnold I. Kalman
`
`amoldkalman@arnoldkalmanlaw.com
`
`Dated: P ' delphia, PA
`L-
`
`, 201 l
`
`479079.l
`
`

`
`In the Matter of Application No. 77848338
`I
`Filed: October 14, 2009
`For the Mark: Brown Mixing Tip Configuration in International Class 10
`Published in the Official Gazette: April 20, 2010
`
`Pac—Dent International, Inc.,
`
`Opposer,
`
`V.
`
`Sulzer Mixpac AG,
`
`Applicant.
`
`\/\2\_/\/\_/\/\J\2\/\J
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Opposition No. 91 194697
`
`OPPOSER’S WITHDRAWAL OF OPPOSITION
`
`Registrant Sulzer Mixpac AG (“Sulzer” or “Applicant”), by its undersigned counsel,
`
`K&L Gates LLP, respectfully submits Opposer’s Withdrawal of Opposition of App1icant’s mark.
`
`I.
`
`INTRODUCTION
`
`Sulzer filed suit against Opposer based upon trademark and patent infringement in the
`
`United States District Court Southern District of New York (“District Court”) in Sulzer Mixpac
`
`USA, Inc. and Sulzer Mixpac AG vs. Pac—Dent International Inc., Pac—Dent, Inc., Pac—Dent
`
`Intemational (Suzhou), Ltd. and Daniel Y. Wang, No. 09-Civ 10430—(DAB) on March 18, 2010
`
`(the “Civil Action”).
`
`In response, Opposer filed an Opposition against Applicant’s Brown Mixing Tip,
`
`Application No. 77848338, with the Trademark Trial and Appeal Board (“Board”). Because the
`
`DC-9206445 v1
`
`

`
`outcome of the Civil Action had a bearing on the Opposition, Applicant filed a Motion to Stay
`
`the Opposition and the Board granted Applicant’s motion.
`
`WITHDRAWAL OF OPPOSITION
`
`II.
`
`Opposer now withdraws its Opposition. Applicant hereby submits Opposer’s
`
`Withdrawal of the Opposition which is attached as Exhibit A.
`
`III.
`
`CONCLUSION
`
`WHEREFORE, Applicant
`
`respectfully requests
`
`that
`
`the Board enter Opposer’s
`
`Withdrawal of its Opposition and dismiss the proceeding in Applicant’s favor.
`
`Dated: May 3, 2011.
`
`SULZER MIXPAC AG
`
`Applicant
`
`One of Its Attorneys
`
`Michael T. Murphy, Esq.
`Christopher S. Adkins, Esq.
`K&L GATES LLP
`1601 K Street NW
`
`Washington, DC 20006-1600
`(312) 8074272
`
`

`
`CERTIFICATE OF SERVICE
`
`Served via Trademark Trial and Appeal Board’s electronic system (ESTTA) to the following.
`
`Philip H. Gottfried
`Amster, Rothstein & Ebenstein, LLP
`Attorneys for Opposer
`90 Park Avenue, 21“ Floor
`New York, New York 10016
`(212) 336-8000
`
`Applicant by first—class mail sending the same to the following:
`
`Arnold I. Kalman, Esq.
`Law Offices of Arnold I. Kalman
`
`Attorneys for Opposer
`245 South Hutchinson Street
`
`Philadelphia, PA 19107-5723
`(215) 829-9613
`
`Respectfully submitted,
`
`Michael T. Murphy, Esq.
`Christopher S. Adkins, Esq.
`Attorneys for Applicant
`K&L GATES LLP
`1601 K Street NW
`
`Washington, DC 20006-1600
`(312) 807-4272
`
`
`
`
`
`Michael T.
`hy
`michaelmurphy@klgates.com
`
`Dated: Washington, DC
`
`, 2011
`77
`
`

`
`
`
`EXHIBIT AEXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91194697
`
`WITHDRAWAL on OPPOSITION
`
`— _ — * — — — — — — — — — — — — — — — -X
`
`PAC-DENT INTERNATIONAL, INC.,
`
`V-
`SULZER MIXPAC AG,
`
`Opposer.
`
`f
`
`'
`
`_
`Applicant.
`¢ _ — — — _ — — — — — — — — — — — — —- -X
`
`Honorable Commissioner for Trademarks
`
`Washington, D.C. 20231
`
`Sir:
`
`The above-identified Opposer hereby withdraws the above-identified Opposition, which has
`
`currently been suspended in View of the existence of an Action which had been pending in the
`
`United States District Court for the Southern District of New York entitled Sulzer Mixpac USA,
`
`Inc. and Sulzer Mixpac AG v. Pac—Dent International, Inc., Pac—Dent, Inc., Pac—Dent
`
`International (Suzhou), Ltd. and Daniel Y. Wang, in View of such Action itself having been
`
`terminated.
`
`Dated:
`
`New York, New York
`March 17, 2011‘
`
`479079.!
`
`_
`Respectfully submitted,
`
`AMSTBR, ROTHSTEIN & EBENSTEIN, LLP
`
`Attorneys for Opposer
`90 Park Avenue, 21“ Floor
`New York, New York 10016
`
`(212) 336-8000
`
`By=
`Philip H. Gottfried
`
`

`
`CERTIFICATE OF SERVICE
`
`It is herebycertified thattheundersignedhas this A
`
`dayof
`
`served a true and correct copy of the foregoing WITHDRAWAL OF OPPOSIT N on
`
`, 2011
`
`Applicant by e-mail and first-class mail by sending the same to the following:
`
`' Michael T, Murphy, Esq.
`K&L Gates LLP
`
`1601 K Street, N.W.,
`Washington, D.C. 20006
`(202) 778-9176
`Michae1.murphy@klgates.com
`Attorneys for Applicant
`
`Respectfully submitted,
`
`Arnold I. Kahnan, Esq.
`Law Offices of Arnold I. Kalman
`
`Attorneys for Petitioner
`245 South Hutchinson Street
`
`
`
`Arnold I. Kalman
`
`arnoldkalman@arnoldlcalmanlaw.com
`
`Dated: P ' delphia, PA
`
`479079.l

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