Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA417293
`ESTTA Tracking number:
`06/30/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91199979
`Defendant
`L. Perrigo Company
`H. W. REICK
`PRICE, HENEVELD, COOPER, DEWITT & LITTON
`PO BOX 2567
`GRAND RAPIDS, MI 49501-2567
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`ptomail@priceheneveld.com
`Answer
`H. W. Reick
`spugh@priceheneveld.com, dlozon@priceheneveld.com
`/H. W. Reick/
`06/30/2011
`Answer.pdf ( 6 pages )(69260 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TRADEMARK
`
`Applicant
`Serial No.
`Mark
`
`: L. Perrigo Company
`: 85/201,763
`: MUCUS—ER
`
`Int'1 Class
`
`: 5
`
`For
`Published
`
`: Expectorants
`: April 26, 2011
`
`Reckitt Benckiser Inc.,
`
`Opposer,
`
`V.
`
`L. Perrigo Company,
`Applicant.
`
`g/g/g/g/g/g/5
`
`Attn: TTAB
`
`Commissioner for Trademarks
`
`P. O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dear Sir:
`
`Opposition No. 91199979
`
`ANSWER
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`L. Perrigo Company, (“Applicant”), by and through its counsel, hereby responds to
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`Reckitt Benckiser Inc.’s (“Opposer”, hereinafter RB) Notice of Opposition. (“Opposition”) as
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`follows:
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`1.
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`In response to Paragraph 1 of the Opposition, Applicant admits only that RB
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`manufactures and sells an expectorant under the term MUCINEX but is without knowledge or
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`information sufficient to form a belief as to the truth of the remaining matters set forth therein
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`and, therefore, denies the same.
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`
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`2.
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`In response to Paragraph 2 of the Opposition, Applicant admits that RB alleges
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`ownership of the trademark registrations recited therein, but is without knowledge or information
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`sufficient to form a belief as to the truth of any remaining matters set forth therein and, therefore,
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`denies the same.
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`3.
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`In response to Paragraph 3 of the Opposition, Applicant admits only that it filed
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`Application Serial No. 77/682,313 (the “‘313 Application”) for the mark MUCUS—ER, which
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`application was abandoned on December 31, 2010. The remainder of the allegations are denied.
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`4.
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`It is admitted that Applicant filed Application Serial No. 77/770,809 for the mark
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`MUCUS EXTENDED~RELEASE on June 30, 2009, and abandoned that application on
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`October 22, 2010.
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`It is also admitted that Applicant also filed Application Serial No. 85/157,689
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`(the “‘689 Application”) on October 21, 2010, for MUCUS EXTENDED—RELEASE and that
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`the ‘689 application is the subject of an improper rejection under Section 2(e)(1) by an Office
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`Action mailed January 20, 2011. The remainder of the allegations are denied.
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`5.
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`It is admitted that Applicant filed Application Serial No. 85/157,692 (the ‘"692
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`Application”) for the mark MUCUS RELIEF~ER on October 21, 2005, and that the ‘692
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`application is subject to an improper rejection under Section 2(e)(1), which was mailed January
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`25, 2011. The remainder of the allegations are denied.
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`6.
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`It
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`is admitted that on December 20, 2010, Applicant filed an application for
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`MUCUS—ER. Application Serial No. 85/201,763 (the “‘763 Application”), for expectorants.
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`It
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`is admitted that the ‘763 application was published for opposition on April 26, 2011, and the
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`Notice of Opposition was timely filed. The remainder of the allegations are denied.
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`7.
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`8.
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`In response to Paragraph 7 of the Opposition, admitted.
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`In response to Paragraph 8 of the Opposition, admitted.
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`
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`9.
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`In response to Paragraph 9 of the Opposition,
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`it is admitted only that the filing
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`dates and first use dates stated on the registrations as identified in paragraph 2 are prior to the
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`filing date of the ‘763 Application. Applicant is without knowledge or information sufficient to
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`form a belief as to the accuracy of such dates and, therefore, denies the same.
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`10.
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`In response to Paragraph 10 of the Opposition, Applicant is without knowledge or
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`information sufficient to form a belief as to the truth of the matter set forth therein and, therefore,
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`denies the same.
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`11.
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`Applicant denies the allegations in Paragraph 11 of the Opposition.
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`12.
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`Applicant denies the allegations in Paragraph 12 of the Opposition.
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`13.
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`Applicant denies the allegations in Paragraph 13 of the Opposition.
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`14.
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`Applicant denies the allegations in Paragraph 14 of the Opposition.
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`15.
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`Applicant repeats and realleges its answers to Paragraphs 1-14 and incorporates
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`the same as if fully set forth herein.
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`16.
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`Applicant denies the allegations in Paragraph 16 of the Opposition.
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`17.
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`Applicant denies the allegations in Paragraph 17 of the Opposition.
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`18.
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`Applicant denies the allegations in Paragraph 18 of the Opposition.
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`19.
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`Applicant denies the allegations in Paragraph 19 of the Opposition.
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`20.
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`Applicant denies the allegations in Paragraph 20 of the Opposition.
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`21.
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`Applicant repeats and realleges its answers to Paragraphs 1-20 and incorporates
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`the same as if fully set forth herein.
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`22.
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`Applicant denies the allegations in Paragraph 22 of the Opposition.
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`23.
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`Applicant denies the allegations in Paragraph 23 of the Opposition.
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`
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`24.
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`In response to Paragraph 24 of the Opposition, Applicant is without knowledge or
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`information sufficient to form a belief as to the truth of the matter set forth therein and, therefore,
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`denies the same.
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`25.
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`Applicant denies the allegations in Paragraph 25 of the Opposition.
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`26.
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`Applicant denies the allegations in Paragraph 26 of the Opposition.
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`27.
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`28.
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`Applicant denies the allegations in Paragraph 27 of the Opposition.
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`Applicant repeats and realleges its answers to Paragraphs 1-27 and incorporates
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`the same as if fully set forth herein.
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`29.
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`Applicant admits only that the goods associated with the intent to use mark are
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`expectorants. The remaining allegations are denied as the goods are not currently for sale.
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`30.
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`Applicant denies the allegation of Paragraph 30 of the Opposition.
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`31.
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`Applicant denied the allegation of Paragraph 31 as the abbreviation “ER” is
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`commonly used with respect to many different terms.
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`32.
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`33.
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`Applicant denies the allegations of Paragraph 32 of the Opposition.
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`Applicant denies each and every remaining allegation not specifically admitted
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`herein to be true,
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`including any allegations made in Opposer’s prayer for relief. Applicant
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`further denies that Opposer is entitled to any of the prayed for relief.
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`FIRST AFFIRMATIVE DEFENSE
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`The Notice of Opposition fails to state any claim upon which relief can be granted.
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`SECOND AFFIRMATIVE DEFENSE
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`The marks identified in Paragraph 2 of the Opposition are not famous and not distinctive.
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`THIRD AFFIRMATIVE DEFENSE
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`The marks identified in Paragraph 2 of the Opposition have no secondary meaning.
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`
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`FOURTH AFFIRMATIVE DEFENSE
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`Use of Applicant’s mark MUCUS—ER would not result in a likelihood of confusion with
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`the marks identified in Paragraph 2 of the Opposition.
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`FIFTH AFFIRMATIVE DEFENSE
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`Opposer’s Opposition is barred by the Doctrine of Estoppel.
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`SIXTH AFFIRMATIVE DEFENSE
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`The marks identified in Paragraph 2 of the Opposition are not enforceable against
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`Applicant.
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`SEVENTH AFFIRMATIVE DEFENSE
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`Applicant reserves the right to assert any other defenses and counterclaims as information
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`in support of those defenses and counterclaims are discovered.
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`WHEREFORE, Applicant respectfully requests that Opposer’s Notice of Opposition be
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`dismissed in its entirety.
`
`June 30, 2011
`
`Date
`
`Respectfully submitted,
`
`L. PERRIGO COMPANY
`
`By: Price, Heneveld, Cooper,
`DeWitt & Litton, LLP
`
`7414 SE‘
`"”‘/L
`
`H. W. Reick, Reg. No. 25 438
`Mathew J . Gipson, Reg. 45 631
`695 Kenmoor S.E.
`
`PO. Box 2567
`
`Grand Rapids, MI 49501
`(616) 949-9610
`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing Answer was served on counsel for Reckitt
`Benckiser Inc. by mailing, first class mail, postage prepaid to:
`
`Amie Peele Carter
`
`Louis T. Perry
`Baker & Daniels LLP
`300 North Meridian Street, Suite 2700
`Indianapolis, Indiana 46204
`
`this
`
`day of June, 2011.
`
`Date
