Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA407004
`ESTTA Tracking number:
`05/04/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91195378
`Defendant
`Sulzer Mixpac AG
`CHRISTOPHER S. ADKINS
`K&L GATES LLP
`1601 K STREET NW
`WASHINGTON, DC 20006-1600
`UNITED STATES
`chicago.trademarks@klgates.com, christopher.adkins@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 77848301.PDF ( 6 pages )(157470 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`
`ESTTA407004
`ESTTA Tracking number:
`05/04/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91195378
`Defendant
`Sulzer Mixpac AG
`CHRISTOPHER S. ADKINS
`K&L GATES LLP
`1601 K STREET NW
`WASHINGTON, DC 20006-1600
`UNITED STATES
`chicago.trademarks@klgates.com, christopher.adkins@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 77848301.PDF ( 6 pages )(157470 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`
`
`In the Matter of Application No. 77848301
`Filed: October 14, 2009
`For the Mark: Blue Mixing Tip Configuration in International Class 10
`Published in the Official Gazette: June 1, 2010
`
`Pac-Dent International, Inc.,
`
`Opposer,
`
`v.
`
`Sulzer Mixpac AG,
`
`1
`
`Applicant.
`
`g/\./\./\./\/\/\/\./\_/\/
`
`United States Patent and Trademark Office
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Opposition No. 91195378
`
`OPPOSER’S WITHDRAWAL OF OPPOSITION I
`
`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—Dent'
`
`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 Blue Mixing Tip,
`
`Application No. 77848301, with the Trademark Trial and Appeal Board (“Board”). Because the
`
`DC~9206457 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
`
`
`
`
`
`One of Its '3 torneys
`
`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
`
`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
`
` Michl T. M ; hy
`
`naichaelrnumy @klgates.corn
`
`Dated: Washington, DC
`
` ,2011
`
`
`
`EXHIBIT A
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_ _ _ _ _ _ _ _ . _ . _ _ _ _ . . . _ .x
`
`PAC-DENT INTERNATIONAL, INC,
`
`OPPOSSY»
`
`V-
`SULZER MIXPAC AG,
`
`'
`
`_
`Applicant.
`_ . . _ _ _ _ _ _ . . _ _ _ _ _ _ _ _ -X
`
`Honorable Commissioner for Trademarks
`
`Washington, D.C. 20231
`
`Sir:
`
`Opposition No. 91 195378
`WITHDRAWAL OF OPPOSITION
`
`‘ The above—identified Opposer hereby withdraws the above—identif1ed Opposition, which has I
`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, Ina, 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
`
`
` Philip H. Gottfri d
`
`47908 1 .1
`
`
`
`CERTIFICATE OF SERVICE
`
`day of
`It is hereby certified that the undersigned has this 4
`served a true and correct copy ofthe foregoing WITHDRAWAL OF OPPO ITION on
`Applicant by e-mail and first—c1ass mail by sending the same to the following:
`
`, 2011
`
`Michael T. Murphy, Esq.
`K&L Gates LLP
`
`1601 K Street, N.W.,
`Washington, D.C. 20006
`(202) 778-9176
`Michae1.rnurphy@k1gates.com
`Attorneys for Applicant
`
`Respectfully submitted,
`
`Arnold I. Kahnan, Esq.
`Law Offices of Arnold I. Kalman
`
`Attorneys for Petitioner
`245 South
`
`
`
`amo1dkalman@arno1dka1man1aw.com
`
`Dated: Ph' adelphia, PA
`'2.
`____, 2011
`
`47908 I .1
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