Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA369493
`ESTTA Tracking number:
`09/22/2010
`
`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
`
`ConvaTec Inc.
`09/22/2010
`
`200 Headquarters Park Drive
`Skillman, NJ 08558
`UNITED STATES
`
`Attorney
`information
`
`Thomas L. Holt
`Steptoe & Johnson LLP
`115 South LaSalle
`Chicago, IL 60603
`UNITED STATES
`tholt@steptoe.com, ipdocket@steptoe.com Phone:312-577-1300
`Applicant Information
`
`77439318
`09/22/2010
`
`NONE
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`Advanced Medical Solutions Limited
`Road Three, Winsford Industrial Estate
`Winsford, CW73PD
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`05/25/2010
`09/22/2010
`
`NONE
`
`Class 005.
`All goods and services in the class are opposed, namely: Dressings for wounds; self-adhesive
`dressings; medical and surgical dressings; materials for wound dressings in the nature of gauze;
`surgical bandages, tissues and waddings; adhesive tapes for medical purposes; liquid medical
`adhesives for binding skin wounds; skin coatings, namely, liquid medical adhesives for binding and
`protecting skin wounds; pharmaceutical preparations for wound closure; medical adhesive for binding
`wounds, absorbent dressing for wounds; anti-inflammatory clear gels for wound healing, sold
`exclusively to hospitals, medical and surgical offices and clinics
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`2048097
`
`Application Date
`
`07/15/1994
`
`
`ESTTA369493
`ESTTA Tracking number:
`09/22/2010
`
`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
`
`ConvaTec Inc.
`09/22/2010
`
`200 Headquarters Park Drive
`Skillman, NJ 08558
`UNITED STATES
`
`Attorney
`information
`
`Thomas L. Holt
`Steptoe & Johnson LLP
`115 South LaSalle
`Chicago, IL 60603
`UNITED STATES
`tholt@steptoe.com, ipdocket@steptoe.com Phone:312-577-1300
`Applicant Information
`
`77439318
`09/22/2010
`
`NONE
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`Advanced Medical Solutions Limited
`Road Three, Winsford Industrial Estate
`Winsford, CW73PD
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`05/25/2010
`09/22/2010
`
`NONE
`
`Class 005.
`All goods and services in the class are opposed, namely: Dressings for wounds; self-adhesive
`dressings; medical and surgical dressings; materials for wound dressings in the nature of gauze;
`surgical bandages, tissues and waddings; adhesive tapes for medical purposes; liquid medical
`adhesives for binding skin wounds; skin coatings, namely, liquid medical adhesives for binding and
`protecting skin wounds; pharmaceutical preparations for wound closure; medical adhesive for binding
`wounds, absorbent dressing for wounds; anti-inflammatory clear gels for wound healing, sold
`exclusively to hospitals, medical and surgical offices and clinics
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`2048097
`
`Application Date
`
`07/15/1994
`
`
`
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`03/25/1997
`
`AQUACEL
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Class 005. First use: First Use: 1996/02/00 First Use In Commerce: 1996/02/00
`wound dressings and wound fillers taking the form of powder, granules, sheets
`or packing material
`
`U.S. Registration
`No.
`Registration Date
`
`2837287
`
`04/27/2004
`
`Word Mark
`Design Mark
`
`AQUACEL AG
`
`Application Date
`
`07/12/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2002/06/01 First Use In Commerce: 2002/08/01
`Wound care products, namely, wound, burn and surgical dressings; surgical
`bandages; bandages for skin wounds; impregnated bandages for skin wounds;
`impregnated surgical bandages; impregnated wound dressings; wound fillers
`
`U.S. Registration
`No.
`Registration Date
`
`2034182
`
`01/28/1997
`
`Application Date
`
`09/15/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`
`HYDROFIBER
`
`NONE
`
`Class 005. First use: First Use: 1996/02/29 First Use In Commerce: 1996/02/29
`wound dressings and fillers
`
`3665200
`
`Application Date
`
`08/28/2006
`
`08/04/2009
`
`Foreign Priority
`Date
`HYDROFIBER CONVATEC TECHNOLOGY
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of Miscellaneous triangular designs with one or more curved
`sides and the words "Hydrofiber ConvaTec Technology".
`Class 005. First use: First Use: 2009/03/31 First Use In Commerce: 2009/03/31
`Wound dressings and fillers
`
`Attachments
`
`78143324#TMSN.gif ( 1 page )( bytes )
`78961802#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition - AQUAFIBER FINAL.pdf ( 5 pages )(30523 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
`
`/Thomas L. Holt/
`Thomas L. Holt
`09/22/2010
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`CONVATEC INC.,
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`Opposer,
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`v.
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`ADVANCED MEDICAL SOLUTIONS LTD.,
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`Applicant.
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`Opposition No. __________
`
`Serial No. 77/439,318
`
`Mark: AQUAFIBER
`
`Filing Date: April 3, 2008
`
`NOTICE OF OPPOSITION
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`ConvaTec Inc., a Delaware corporation with its place of business at 200 Headquarters
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`Park Drive, Skillman, New Jersey 08558 (“ConvaTec”), believes that it will be damaged by
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`registration of the mark AQUAFIBER, Serial No. 77/439,318, filed on April 3, 2008 by
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`Advanced Medical Solutions Limited, a United Kingdom corporation with a place of business at
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`Road Three, Winsford Industrial Estate, Winsford, United Kingdom, CW73PD (“AMS”).
`
`ConvaTec hereby opposes registration of the AQUAFIBER mark on the following grounds:
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`1.
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`ConvaTec is a world leader in the development and marketing of medical
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`technologies for community and hospital care, specializing in innovative wound therapeutics,
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`ostomy care, continence and critical care, and infusion devices, all of which are marketed and
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`sold in interstate commerce.
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`2.
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`Since as early as February 1996, ConvaTec, through its predecessors in interest
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`E.R. Squibb & Sons, Inc. and E.R. Squibb & Sons, L.L.C. (collectively “ConvaTec”), has used
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`in interstate commerce the AQUACEL and HYDROFIBER trademarks in connection with
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`wound dressings and fillers.
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`
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`3.
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`ConvaTec has invested significant resources in developing, advertising,
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`promoting, and marketing wound dressings and fillers under the AQUACEL and HYDROFIBER
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`trademarks and in establishing the AQUACEL and HYDROFIBER products in the minds of
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`consumers as high quality products offered by ConvaTec. The AQUACEL and HYDROFIBER
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`marks have been printed on a variety of materials, such as product packaging, brochures,
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`pamphlets and the like.
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`4.
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`The AQUACEL and HYDROFIBER marks are inherently distinctive. By reason
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`of extensive use and promotion, ConvaTec’s AQUACEL and HYDROFIBER trademarks have
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`become favorably known among consumers as used in connection with ConvaTec’s wound
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`dressings and fillers and have become valuable assets as symbols of ConvaTec, its quality
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`products and its goodwill.
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`5.
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`ConvaTec has taken steps to protect the AQUACEL and HYDROFIBER
`
`trademarks in connection with its products and owns the federal registrations set forth below.
`
`Trademark
`
`Reg. No.
`
`Reg. Date
`
`Goods
`
`
`AQUACEL
`
`
`2,048,097
`
`
`March 25, 1997
`
`
`
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`2,837,287
`
`
`April 27, 2004
`
`
`
`Wound dressings and wound fillers
`taking the form of powder, granules,
`sheets or packing material in
`International Class 005
`
`Wound care products, namely, wound,
`burn and surgical dressings; surgical
`bandages; bandages for skin wounds;
`impregnated bandages for skin
`wounds; impregnated surgical
`bandages; impregnated wound
`dressings; wound fillers in
`International Class 005
`
`
`HYDROFIBER
`
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`2,034,182
`
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`January 28, 1997
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`Wound dressings and fillers in
`International Class 005
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`2
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`Trademark
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`Reg. No.
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`Reg. Date
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`Goods
`
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`3,665,200
`
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`August 4, 2009
`
`Wound dressings and fillers in
`International Class 005
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`6.
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`Pursuant to Section 7(b) of the Lanham Act, 15 U.S.C. § 1057(b), ConvaTec’s
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`federal registration certificates are prima facie evidence of the validity of these marks as well as
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`ConvaTec’s ownership and exclusive right to use these marks in connection with the identified
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`goods. In fact, ConvaTec’s exclusive right to use the AQUACEL and HYDROFIBER marks for
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`the goods recited in Registration Nos. 2,034,182, 2,048,097 and 2,837,287 has achieved
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`incontestable status under 15 U.S.C. § 1065.
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`7.
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`Notwithstanding ConvaTec’s prior rights in the AQUACEL and HYDROFIBER
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`trademarks, AMS filed U.S. Federal Trademark Appln. Ser. No. 77/439,318 for the
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`AQUAFIBER mark in International Classes 005 covering a variety of wound dressings,
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`bandages, adhesives and related products.
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`8.
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`AMS had constructive knowledge of the AQUACEL and HYDROFIBER marks
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`before filing Application Serial No. 77/439,318. Upon information and belief, AMS had actual
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`knowledge of ConvaTec’s AQUACEL and HYDROFIBER marks before filing Application
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`Serial No. 77/439,318.
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`9.
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`ConvaTec did not authorize AMS’s adoption or registration of the AQUAFIBER
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`trademark. On information and belief, AMS intended to trade and capitalize on the goodwill
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`generated by ConvaTec’s AQUACEL and HYDROFIBER marks.
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`3
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`10.
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`AMS’s AQUAFIBER mark is confusingly similar in sight, sound, and/or
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`commercial impression to ConvaTec’s AQUACEL and HYDROFIBER marks.
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`11.
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`AMS’s AQUAFIBER mark so closely resembles ConvaTec’s AQUACEL and
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`HYDROFIBER marks that, if used in connection with the applied for goods, it would be likely to
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`cause confusion, mistake or deception of the relevant trade and public under Section 2(d) of the
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`Trademark Act. Consumers will likely believe that AMS’s products are in some way associated
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`with or connected with, or approved or authorized by, ConvaTec, or that AMS’s products
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`otherwise originate from the same source as do ConvaTec’s products, when this is not the case.
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`12.
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`By reason of the foregoing, ConvaTec believes that it will be damaged by
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`registration of AMS’s AQUAFIBER mark in connection with the applied for goods.
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`WHEREFORE, ConvaTec prays that this Opposition be sustained and that Application
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`Serial No. 77/439,318 be refused registration.
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`
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`Respectfully submitted,
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`CONVATEC INC.
`
`
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`By: /s/ Thomas L. Holt
`Thomas L. Holt
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street
`Suite 3100
`Chicago, IL 60603
`Telephone: (312) 577-1300
`Facsimile: (312) 577-1370
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`
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`Attorneys for Opposer
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`4
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`Dated: September 22, 2010
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 22, 2010 I served a true and correct copy of the
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`foregoing NOTICE OF OPPOSITION on counsel for Applicant by U.S. mail at the following
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`address:
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`Miriam Claire Beezy
`Foley & Lardner LLP
`Suite 3500
`555 South Flower Street
`Los Angeles CA 90071-2411
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` /s/ Thomas L. Holt
`One of the Attorneys for Opposer
`ConvaTec Inc.
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`5
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