Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA345457
`ESTTA Tracking number:
`05/03/2010
`
`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
`Granted to Date
`of previous
`extension
`Address
`
`BN Immunotherapeutics, Inc.
`05/02/2010
`
`2425 Garcia Ave
`Mountain View, CA 94043
`UNITED STATES
`
`Attorney
`information
`
`Edward A. Pennington
`HANIFY & KING, Professional Corporation
`1055 Thomas Jefferson Street NW Suite 400
`Washington, DC 20007
`UNITED STATES
`eap@hanify.com, stp@hanify.com, ip-docketing@hanify.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79048489
`05/03/2010
`
`0949517
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`11/03/2009
`05/02/2010
`
`11/26/2007
`
`AmVac AG
`MetallstraÃ#e 4
`CH-6300 Zug,
`SWITZERLAND
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Pharmaceutical and veterinary
`preparations, namely, chemical, biochemical, molecular biological and biological preparations for the
`treatment of medical and hygienic diseases and conditions, namely, vaccines for the treatment of
`benign prostatic hyperplasia, prostatitis and inflammation related disorders; medicines for the
`treatment of benign prostatic hyperplasia, prostatitis and inflammation related disorders; vaccines,
`disinfectants for sanitary purposes; medical plasters, gauze and bandages for use as medical
`dressings; sanitary preparations for medical purposes; dietetic substances, namely, foods and sugars
`adapted for medical use
`Class 010.
`All goods and services in the class are opposed, namely: Surgical apparatus and instruments for
`medical, dental and veterinary use
`Class 042.
`All goods and services in the class are opposed, namely: Scientific and technological research
`services in the fields of chemical, biochemical, molecular biological and biological preparations for
`
`

`
`medical and hygienic purposes, medicines and vaccinations
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(d)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`77577729
`
`NONE
`
`Word Mark
`Design Mark
`
`PROSTVAC
`
`Application Date
`
`09/24/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use:
`Vaccines and recombinant vectors of pox used to prepare vaccines and
`biological immunogens for use in humans
`
`U.S. Registration
`No.
`Registration Date
`
`2690689
`
`02/25/2003
`
`Word Mark
`Design Mark
`
`PROSTVAC
`
`Application Date
`
`05/06/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1993/03/24 First Use In Commerce: 1993/09/08
`Vaccines and recombinant vectors of pox used to prepare vaccines and
`biological immunogens for use in humans
`
`U.S. Application/
`
`NONE
`
`Application Date
`
`NONE
`
`

`
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`PROSTVAC
`Vaccines and recombinant vectors of pox used to prepare vaccines
`and biological immunogens for use in humans
`
`Attachments
`
`77577729#TMSN.jpeg ( 1 page )( bytes )
`76408665#TMSN.gif ( 1 page )( bytes )
`Notice of Opposition - PROSTAVAC.pdf ( 59 pages )(2072532 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
`
`/Edward A. Pennington/
`Edward A. Pennington
`05/03/2010
`
`

`
`Opposition No. (__________)
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`__________________________________________
`
`
`)
`
`BN IMMUNOTHERAPEUTICS,
`)
`
`INC.
`
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`
`
`)
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`
`
`)
`
`
`Opposer,
`
`
`)
`
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`
`)
`
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`v.
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`)
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`AMVAC AG CORPORATION
`)
`
`
`
`
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`
`)
`
`
`Applicant.
`
`
`)
`__________________________________________)
`
`
`Mark:
`Int’l Class:
`Serial No.:
`Filed:
`
`PROSTAVAC
`005, 010, 042
`79/048,489
`November 26, 2007
`
`NOTICE OF OPPOSITION
`
`Opposer, BN Immunotherapeutics, Inc. (“BNIT”) is a corporation organized and existing
`
`
`
`under the laws of the State of Delaware, with its principal place of business at 2425 Garcia Ave.,
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`Mountain View, CA 94043. BNIT believes that it will be damaged by the application to register
`
`the PROSTAVAC designation that AmVac AG Corporation (“AmVac” or “Applicant”) seeks to
`
`protect with its application, Serial No. 79/048,489, and hereby opposes the application.
`
`
`
`
`
`As grounds for the opposition, BNIT alleges as follows:
`
`FACTUAL BACKGROUND.
`
`A.
`
`The PROSTVAC Mark
`
`1.
`
`Since at least 1993, the PROSTVAC mark has been in continuous and exclusive
`
`use, first by the National Cancer Institute (“NCI”) in an exclusive partnership with Therion
`
`Biologics Corporation (“Therion”), and then by NCI and BNIT through a subsequent exclusive
`
`partnership, in connection with a therapeutic cancer vaccine under so called Cooperative
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`

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`Research and Development Agreements (“CRADAs”). The PROSTVAC product, currently in
`
`late-stage clinical development, has the potential to significantly extend the lives of men with
`
`advanced prostate cancer where limited treatment options are available without affecting quality
`
`of life. NCI first used the PROSTVAC mark in commerce in 1993 for a specific therapeutic
`
`prostate cancer vaccine product it had developed. In September 1994, NCI entered into a
`
`CRADA with Therion to further develop the PROSTVAC product through clinical trials with the
`
`goal of eventually bringing the vaccine to market. Therion’s and NCI’s continuous and
`
`exclusive use of the PROSTVAC distinguished said product from the cancer vaccine products of
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`others, thus providing common law trademark rights to the PROSTVAC mark. Through this
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`continuous and exclusive use, the PROSTVAC mark became exclusively identified first with
`
`NCI and Therion then, beginning in August 2008, with NCI and BNIT for the prostate cancer
`
`vaccine.
`
`2.
`
`On May 6, 2002, Therion filed application Serial No. 76/408,665 to register the
`
`mark PROSTVAC for “Vaccines and recombinant vectors of pox used to prepare vaccines and
`
`biological immunogens for use in humans” in International Class 005. Application Serial No.
`
`76/408,665 issued as U.S. Reg. No. 2,690,689 on February 25, 2003. The date of first use in
`
`interstate commerce for U.S. Reg. No. 2,690,689 was September 8, 1993. Documents
`
`evidencing such actual use of the PROSTVAC mark in interstate commerce for the vaccine
`
`product described supra were timely filed with the United States Patent and Trademark Office
`
`(“USPTO”).
`
`3.
`
`During the collaboration with Therion, NCI continued to use the PROSTVAC
`
`mark in connection with clinical trials and in scientific publications describing the advancement
`
`of the PROSTVAC product development. In late 2006, Therion filed for bankruptcy and
`
`
`
`2
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`

`
`announced its intent to dissolve. During the dissolution, Therion assigned all rights in and
`
`associated with the PROSTVAC product to back to NCI. The settlement agreement between
`
`Therion and NCI covering the transfer of rights associated with the PROSTVAC product did not
`
`explicitly assign U.S. Reg. No. 2,690,689 to NCI. However, because NCI assumed all of the
`
`rights and privileges Therion had accrued in the PROSTVAC product, the goodwill and common
`
`law trademark rights associated with the PROSTVAC product that Therion had accrued during
`
`the collaboration passed to NCI as well. NCI reassumed sole ownership all rights and
`
`responsibilities associated with development of the PROSTVAC cancer vaccine and there was
`
`no break in its continuous use of the PROSTVAC mark. In August of 2008, NCI entered into a
`
`collaboration agreement with BNIT wherein BNIT was assigned the exclusive right to further
`
`develop and commercialize the PROSTVAC product. Just as the common law trademark rights
`
`had been shared by Therion and NCI, so are they now shared by NCI and BNIT. As such, BNIT
`
`continued to market, promote, and advertise the PROSTVAC vaccine in the way Therion duly
`
`had before its dissolution.
`
`4.
`
`On September 24, 2008, BNIT filed application Serial No. 77/577,729 to register
`
`the mark PROSTVAC for “[v]accines and recombinant vectors of pox used to prepare vaccines
`
`and biological immunogens for use in humans” in International Class 005. Since before its
`
`application was filed, BNIT has expended considerable time, effort, and money in marketing and
`
`promoting BNIT’s goods and services under the PROSTVAC mark. In this way, BNIT, through
`
`its exclusive partnership with NCI, has continued to exercise and maintain the common law
`
`trademark rights first accrued by NCI starting in 1993.
`
`B.
`
`Applicant’s PROSTAVAC Mark
`
`
`
`3
`
`

`
`5.
`
`On November 26, 2007, Applicant filed application Serial No. 79/048,489
`
`seeking to register the PROSTAVAC designation for “[p]harmaceutical and veterinary
`
`preparations, namely, chemical, biochemical, molecular biological and biological preparations
`
`for the treatment of medical and hygienic diseases and conditions, namely, vaccines for the
`
`treatment of benign prostatic hyperplasia, prostatitis and inflammation related disorders;
`
`medicines for the treatment of benign prostatic hyperplasia, prostatitis and inflammation related
`
`disorders; vaccines, disinfectants for sanitary purposes; medical plasters, gauze and bandages for
`
`use as medical dressings; sanitary preparations for medical purposes; dietetic substances,
`
`namely, foods and sugars adapted for medical use” International Class 005; for “[s]urgical
`
`apparatus and instruments for medical, dental and veterinary use” n International Class 010; and
`
`for “[s]cientific and technological research services in the fields of chemical, biochemical,
`
`molecular biological and biological preparations for medical and hygienic purposes, medicines
`
`and vaccinations” in International Class 042.
`
`6.
`
`On March 13, 2008, an Office Action (attached hereto as Exhibit A) issued
`
`rejecting Applicant’s PROSTAVAC application on the grounds that it was confusingly similar to
`
`Therion’s above-referenced U.S. Reg. No. 2,690,689 for PROSTVAC in violation of Section
`
`2(d) of the Trademark Act. Specifically, the examining attorney “refus[ed] registration under
`
`Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or
`
`in connection with the identified goods/services, so resembles the marks in U.S. Registration No.
`
`as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq.”
`
`Ex. A at 2.
`
`7.
`
`On September 12, 2008, Applicant responded to the March 13, 2008 Office
`
`Action. (A copy of the response is attached hereto as Exhibit B). In its response, Applicant
`
`
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`4
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`

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`inaccurately argued that the “goods travel in different channels of trade.” Ex. B at 4.
`
`Additionally, Applicant incorrectly stated that the diseases PROSTVAC is intended to treat
`
`“have a dedicated treatment scenario and are typically handled by infectious disease specialists,
`
`public health officials administering vaccines to children, or pediatricians.” Id. Applicant also
`
`made other material misrepresentations to the USPTO discussed in ¶ 12-17, infra. Id.
`
`8.
`
`The trademark Examining Attorney issued a final rejection of Applicant’s
`
`application on December 11, 2008. (A copy of the December 11, 2008 final rejection is attached
`
`hereto as Exhibit C, exhibits omitted). Again relying on Therion’s U.S. Reg. No. 2,690,689, the
`
`Examining Attorney rejected Applicant’s application because it was likely to cause confusion
`
`with Therion’s existing registration. As the Examining Attorney reminded Applicant:
`
`The Trademark Trial and Appeal Board and its appeals court have applied a higher
`standard to likelihood of confusion cases involving medicinal and pharmaceutical
`products. Although physicians and pharmacists are no doubt carefully trained to
`recognize differences in the characteristics of pharmaceutical products, they are not
`trained to recognize the difference between similar trademarks used on such products.
`Any confusion involving such goods could give rise to serious and harmful consequences
`such as mistakenly choosing wrong medication. See Glenwood Labs., Inc. v. Am. Home
`Prods. Corp., 455 F.2d 1384, 1386, 173 USPQ 19, 21 (C.C.P.A. 1972); Alfacell Corp. v.
`Anticancer Inc., 71 USPQ2d 1301, 1305-06 (TTAB 2004); Blansett Pharmacal Co. v.
`Camrick Labs., Inc., 25 USPQ2d 1473, 1477 (TTAB 1992). Thus, a lower threshold of
`proof is applied in assessing confusing similarity with respect to drugs and medicinal
`products.
`
`Ex. C at 3.
`
`On February 26, 2009, after receiving the above-referenced final rejection from
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`9.
`
`the USPTO, AmVac filed Cancellation Proceeding No. 92050599, alleging that because of its
`
`corporate dissolution, Therion had abandoned U.S. Reg. No. 2,690,689. Because it was in fact a
`
`dissolved corporation, Therion could not and did not file a response or answer and AmVac. As
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`stated by the Trademark Trial and Appeal Board on July 4, 2009: “No appearance having been
`
`entered in response to service effected by publication in the Official Gazette, the petition to
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`5
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`

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`cancel is granted, and the above-identified registration will be cancelled in due course.”
`
`Pursuant to the Board’s July 4, 2009 Order, the Commissioner for Trademarks cancelled
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`Therion’s U.S. Reg. No. 2,690,689.
`
`C.
`
`
`10.
`
`Applicant Was Aware of the PROSTVAC Mark and Aware its Use Predated
`Applicant’s Use of the PROSTAVAC Mark
`
`On information and belief, Applicant uses the mark PROSTAVAC for its
`
`immune-therapeutic vaccine for the treatment of Benign Prostatic Hyperplasia (“BHP”) and
`
`acute/chronic Prostatitis. Accordingly, Applicant mark conducts business in the same basic field
`
`of research and development as NCI and its collaborators; that is, the field of research and
`
`development in which NCI and BNIT have used the mark PROSTVAC to distinguish their
`
`therapeutic vaccine for the treatment of prostate cancer. In addition, Applicant was put on notice
`
`of the existence and of the use of the PROSTVAC mark by the USPTO. See Ex. A and C. The
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`continuous use of the PROSTVAC mark for the therapeutic prostate cancer product NCI
`
`invented and collaboratively developed, first with Therion and later with BNIT, can be quickly
`
`verified by anyone who encounters a rejection in view of that mark, for example, through a
`
`simple internet search. A prudent search in PubMed reveals numerous publications spanning
`
`over a decade regarding the use of PROSTVAC by NCI and its collaborators for the specific
`
`cancer vaccine in question (attached hereto as Exhibit D). The publications evidence that there is
`
`no lapse in the use of the PROSTVAC mark as the vaccine product was undergoing clinical
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`development in various clinical trials. A simple search for “Prostvac” at
`
`<www.clinicaltrials.gov> reveals no less than ten (10) completed, active and recruiting clinical
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`trials for PROSTVAC. See Exhibit E.
`
`11. Moreover, the assignment of all PROSTVAC-related rights from Therion to back
`
`to NCI was highly publicized and cited in numerous news and financial publications, as was the
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`
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`6
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`

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`subsequent exclusive partnership between NCI and BNIT. In 2007 the Federal Register
`
`published the intent by the NCI to seek a new collaborator for the further development of the
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`PROSTVAC product (attached hereto as Exhibit F). In August 2008 Bavarian Nordic issued a
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`press release (attached hereto as Exhibit G) that NCI had chosen BNIT as its exclusive
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`collaboration partner; in October 2008 Bavarian Nordic issued a press release (attached hereto as
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`Exhibit H) announcing positive results for its Phase II clinical trials for the PROSTAVAC
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`product. BNIT’s success in taking over the PROSTVAC product has been highly publicized in
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`press releases, scientific publications as well as presented at numerous global conferences such
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`as those sponsored by the American Society of Clinical Oncology and the Biotechnology
`
`Industry Organization, leading to PROSTVAC being granted fast track designation in April of
`
`2010.
`
`
`
`FIRST CAUSE OF ACTION
`Fraud on the United States Patent and Trademark Office
`
`BNIT incorporates by reference as if fully set forth herein the allegations of
`
`12.
`
`paragraphs 1 through 10 of this Notice of Opposition.
`
`13.
`
`On information and belief, Applicant’s sworn representations regarding the lack
`
`of overlapping channels of trade and customers, among other allegedly factual statements made
`
`under penalty of perjury, constitute false representations to the USPTO which are material
`
`misrepresentations, since the opposed application would not have been approved for publication
`
`if the USPTO had known of these misrepresentations.
`
`14.
`
`On information and belief, Applicant knowingly made these misrepresentations as
`
`to the exclusivity of its use of the applied-for designation as a mark and otherwise
`
`
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`7
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`

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`misrepresented its knowledge of Therion, BNIT, their products and services, and the overlap of
`
`Applicant’s products and services with those offered by Therion and BNIT.
`
`15.
`
`Specifically, Applicant, in its September 12, 2008 response to the March 13, 2008
`
`Office Action, repeated the description of goods and services from Therion’s registration (U.S.
`
`Reg. No. 2,690,689): “vaccines and recombinant vectors of pox used to prepare vaccines and
`
`biological immunogens for use in humans.” Ex. B at 3. Applicant continued: “Diseases caused
`
`by pox viruses include smallpox, monkeypox, camelpox, cowpox, pseudocowpox, molluscum
`
`contagiosum, contagious pustular dermatitis, buffalopox, rabbitpox, mousepox, bovine popular
`
`otomatitis, fowlpox, turkeypox, sheeppox, goatpox, harepox, squirrelpox, and the like (U.S.
`
`Patent No. 7,165,451).” Id. Applicant then fraudulently and intentionally represented to the
`
`USPTO: “Where applicable to humans, such diseases have a dedicated treatment scenario and
`
`are typically handled by infectious disease specialists, public health officials administering
`
`vaccines to children, or pediatricians.” Id. This statement is fraudulent because the PROSTVAC
`
`product is a therapeutic cancer vaccine used in the treatment of prostate cancer which can be an
`
`incurable condition that typically affects elderly men. Applicant’s representation is false and
`
`intentionally deceptive because prostate cancer is not an infectious disease and administration of
`
`therapeutic cancer vaccines to treat prostate cancer is not handled by infectious disease
`
`specialists to public health officials administering vaccines to children, or pediatricians.
`
`16.
`
`Also in its September 12, 2008 response, Applicant attempted to mislead the
`
`USPTO by stating that “the two types of conditions [pox diseases and prostate diseases] will
`
`affect different patients, as the pox diseases are typically treated in childhood, while prostate
`
`diseases are exclusively a male disease, predominantly found in middle-aged and older men.”
`
`Id. This statement is deceptive because it misrepresents the good PROSTVAC mark is being
`
`
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`8
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`used for. The PROSTVAC vaccine product is a therapeutic cancer vaccine for treatment of
`
`prostate cancer, i.e., the same kind of diseases Applicant’s mark is used, which they correctly
`
`describe as being “exclusively a male disease, predominantly found in middle-aged and older
`
`men.” Applicant is fully aware that the diseases the PROSTVAC product and the PROSTAVAC
`
`product are designed to treat occur in the same patients: namely, elderly men. Yet, Applicant
`
`intentionally and fraudulently represented to the USPTO that the diseases for which the
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`PROSTVAC and PROSTAVAC products are made “affect different patients.”
`
`17.
`
`Applicant continued to attempt to deceive the USPTO by stating that “not only
`
`are the goods different, they travel in different channels of trade. While Applicant’s treatments
`
`may be available by prescription or over time, Registrant’s vaccines are strictly controlled and
`
`available through physicians and workers administering public health immunizations. “ Id.
`
`Applicant again attempted to deceive the USPTO by inaccurately implying that the PROSTVAC
`
`vaccine and PROSTAVAC vaccine are completely different types of product. Despite the
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`intentionally misleading statements made by Applicant, the PROSTVAC vaccine is not
`
`administered through physicians and workers administering public health immunizations, such as
`
`vaccines against infectious diseases may be. Rather, the PROSTVAC product is a therapeutic
`
`cancer vaccine that, as Applicant denotes its good to be, a treatment that may be available by
`
`prescription or over time. Because prostate cancer is not an infectious disease, it is not
`
`administered in the manner treatments for infectious diseases are administered. Applicant, also
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`being in the business of treating prostate disease, knew that the PROSTVAC vaccine was not
`
`administered in the style of an infectious disease treatment yet asserted this alleged fact to the
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`USPTO anyway. Id.
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`
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`9
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`18.
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`Finally, Applicant fraudulently concluded argument on this topic by summarizing
`
`its aforementioned fraudulent statements: “Applicant’s goods and services are used by different
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`medical practitioners, to treat different conditions, on different patients, often in different
`
`facilities and are distributed differently from those of Registrant. As such, the two marks travel
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`in different channels of trade, making confusion quite unlikely.” Id at 4.
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`19. Moreover, on information and belief, Applicant sought and obtained the
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`cancellation of U.S. Reg. No. 2,690,689. Therion’s registration of PROSTVAC had been cited
`
`in a final rejection against Applicant’s application; having no way round U.S. Reg. No.
`
`2,690,689, Applicant instituted Cancellation No. 92050599.
`
`20.
`
`The PROSTVAC mark that was cited against Applicant’s application was in fact
`
`in use by NCI and BNIT at the time Applicant signed the declaration attached to its response to
`
`the Examiner’s rejection March 12, 2008.
`
`21.
`
`The PROSTVAC mark has continuously been in use by NCI and its collaborators
`
`from 1993 to present day for distinguishing their therapeutic vaccine product against prostate
`
`cancer from vaccine products of others such as Applicant and, as such, establishes legal rights
`
`superior to Applicant’s.
`
`22.
`
`On information and belief, Applicant knew that NCI/BNIT had rights in the
`
`PROSTVAC mark that was cited against Applicant’s; Applicant also knew that NCI/BNIT’s
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`claim to rights in the mark rights were superior to Applicant’s claim to rights in the
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`PROSTAVAC mark.
`
`23.
`
`On information and belief, despite the cancellation of U.S. Reg. No. 2,690,689,
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`failing to disclose these facts regarding the use continuous of the PROSTVAC mark by NCI and
`
`its collaborators for their prostate cancer vaccine product, Applicant intended to fraudulently
`
`
`
`10
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`

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`procure a registration to which it was not entitled. In other words, despite the fact that Applicant
`
`knew the PROSTVAC mark was still, and had continuously been, in use, it nevertheless made
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`fraudulent representations to the USPTO in violation of the declaration it signed when
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`submitting its response to the Examining Attorney’s Office Actions.
`
`24.
`
`For the above reasons alone, the opposed application should be rejected in its
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`entirety.
`
`SECOND CAUSE OF ACTION
`Likelihood of Confusion
`15 U.S.C. 1052(d)
`
`BNIT incorporates by reference as if fully set forth herein the allegations of
`
`25.
`
`paragraphs 1 through 24 of this Notice of Opposition.
`
`26.
`
`BNIT has priority of use in the PROSTVAC mark. The PROSTVAC mark has
`
`been used continuously and exclusively, first by NCI and Therion and subsequently by NCI and
`
`BNIT, in interstate commerce since 1993 – 15 years prior to the filing date of Applicant’s
`
`PROSTAVAC application.
`
`27.
`
`PROSTAVAC is similar to PROSTVAC in sound, appearance, connotation, and
`
`commercial impression.
`
`28.
`
`The goods for which Applicant seeks registration of the PROSTAVAC
`
`designation appear to be competitive, directly related and/or complementary to the goods first
`
`promoted by NCI and Therion and subsequently by NCI and BNIT under the PROSTVAC mark.
`
`29.
`
`30.
`
`PROSTAVAC is confusingly similar to PROSTVAC.
`
`Unless Applicant’s application is denied, Applicant will be able to reap the
`
`benefits of the goodwill attached to the PROSTVAC mark and BNIT will suffer irreparable
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`
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`11
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`damages and injury as a result of the confusion that is likely to arise from the registration of
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`Applicant’s applied-for designation.
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`WHEREFORE, BNIT prays that Application Serial No. 79/048,489 be rejected, that no
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`registration be issued thereon to Applicant, and that this opposition be sustained in favor of
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`Respectfully submitted,
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`By:
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`/s/ Edward A. Pennington
`Edward A. Pennington
`Attorney for BN Immunotherapeutics, Inc.
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`Edward A. Pennington
`Sean T.C. Phelan
`Hanify & King, P.C.
`1055 Thomas Jefferson St., N.W.
`Suite 400
`Washington, D.C. 20007
`Tel: (202) 403-2100
`Fax: (202) 429-4380
`eap@hanify.com
`stp@hanify.com
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`12
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`BNIT.
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`Dated: May 3, 2010
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`CERTIFICATE OF SERVICE
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`I hereby certify that on the 3rd day of May, 2010, I electronically filed the foregoing
`Notice of Opposition with the United States Patent and Trademark Office Trademark Trial and
`Appeal Board. A copy of the foregoing was sent via email and international mail to the
`following:
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`WALLINGER RICKER SCHLOTTER & FOERSTL
`PATENT-UND RECHTSANWALTE
`Zweibruckenstr, 2
`80331 Munchen
`GERMANY
`post@wallinger.de
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`/s/ Edward A. Pennington
`Edward A. Pennington
`Attorney for BN Immunotherapeutics, Inc.
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`Edward A. Pennington
`Sean T.C. Phelan
`Hanify & King, P.C.
`1055 Thomas Jefferson St., N.W.
`Suite 400
`Washington, D.C. 20007
`Tel: (202) 403-2100
`Fax: (202) 429-4380
`eap@hanify.com
`stp@hanify.com
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`By:
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`EXHIBIT A
`EXHIBIT A
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`*79048489*
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`RESPOND TO THIS ACTION:
`http://www.uspto.gov/teas/eTEASpageD.htm
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`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
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` SERIAL NO: 79/048489
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` MARK: PROSTAVAC
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` CORRESPONDENT ADDRESS:
` WALLINGER RICKER SCHLOTTER
`FOERSTL
` PATENT- UND RECHTSANWÄLTE
` Zweibrückenstr. 2
` 80331 München
` FED REP GERMANY
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` APPLICANT: Melinda-Kinga Karpati
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` CORRESPONDENT’S REFERENCE/DOCKET
`NO:
` N/A
` CORRESPONDENT E-MAIL ADDRESS:
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`OFFICE ACTION
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`TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS
`OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
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`ISSUE/MAILING DATE:
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`INTERNATIONAL REGISTRATION NO. 0949517.
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`This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-
`referenced U.S. application. See 15 U.S.C. §1141h(c).
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`WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
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`Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may
`respond on applicant’s behalf. However, the only attorneys who can practice before the United States
`Patent and Trademark Office (USPTO) in trademark matters are as follows:
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`(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District
`of Columbia, Puerto Rico, and other federal territories and possessions of the U.S.; and
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`(2) Canadian attorneys who represent applicants residing in Canada and who have applied
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`

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`for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
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`37 C.F.R. §10.14; TMEP §602.
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`Other than duly authorized Canadian attorneys, foreign attorneys cannot sign responses or otherwise
`represent applicants before the USPTO. See TMEP §602.06(b). Preparing a paper, authorizing an
`amendment to an application, or submitting legal arguments in response to a requirement or refusal
`constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign
`attorney is considered an incomplete response. TMEP §§602, 602.03, 603.04, 605.05(a).
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`THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
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`The assigned examining attorney has reviewed the referenced application and determined the following.
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`Refusal – Section 2(d), Likelihood of Confusion
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`The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d),
`because the applicant’s mark, when used on or in connection with the identified goods/services, so
`resembles the marks in U.S. Registration No. 2690689 as to be likely to cause confusion, or to cause
`mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
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`The examining attorney must analyze each case in two steps to determine whether there is a likelihood of
`confusion. First, the examining attorney must look at the marks themselves for similarities in appearance,
`sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357,
`177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods or services to
`determine whether they are similar or related or whether the activities surrounding their marketing are
`such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638
`(TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197
`USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP
`§§1207.01 et seq.
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`Applicant has applied to register the mark PROSTAVAC for “Pharmaceutical and veterinary preparations,
`in particular chemical, biochemical, molecular biological and biological products for medical and hygienic
`purposes; medicines; vaccines; disinfectants; plasters, materials for dressings; sanitary preparations for
`medical purposes; and dietetic substances adapted for medical use,” and “Scientific and technological
`services and research, in particular in the field of chemical, biochemical, molecular biological and
`biological products for medical and hygienic purposes, medicines and vaccines.”
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`The registrant owns the mark PROSTVAC for “Vaccines and recombinant vectors of pox used to prepare
`vaccines and biological immunogens for use in humans.”
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`With respect to the first step in the likelihood of confusion analysis, the marks are highly similar – both
`beginning with the identical term PROST and ending with the identical term VAC. The only difference
`between the marks is that applicant added a single letter, the vowel “a” between the otherwise identical
`terms PROST and VAC. Marks may be confusingly similar in appearance where there are similar terms
`or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See
`e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1
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`USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp.,
`228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229
`USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ
`174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp.,
`221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424
`(TTAB 1975) (LUTEXAL and LUTEX); TMEP §§1207.01(b)(ii) and (b)(iii). Moreover, regarding the
`issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether
`the marks will confuse people into believing that the goods they identify come from the sam