Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA466873
`ESTTA Tracking number:
`04/12/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201582
`Defendant
`Guerlain S.A.
`DAVID EHRLICH
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`866 UNITED NATIONS PLZ
`NEW YORK, NY 10017-1822
`UNITED STATES
`ehrlich-docket@fzlz.com
`Answer and Counterclaim
`David Ehrlich
`ehrlich-docket@fzlz.com
`/dwe/
`04/12/2012
`Lupin Pharmaceuticals v. Guerlain - Answer and Cancellation Counterclaim
`(F0992144).PDF ( 7 pages )(286426 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Registration Subject to the filing
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`Registration No
`Registrant
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`4024405
`Lupin Pharmaceuticals, Inc.
`Harborplace Tower 111 South Calvert Street, 21st Floor
`Baltimore, MD 21202
`UNITED STATES
`Goods/Services Subject to the filing
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`Registration date
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`09/13/2011
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`Class 005. First Use: 2005/07/01 First Use In Commerce: 2005/07/01
`All goods and services in the class are requested, namely: HOUSE MARK FOR FULL LINE OF
`PHARMACEUTICALS FOR MEDICAL PURPOSES, BUT EXCLUDING DIETARY SUPPLEMENTS
`AND EDIBLE FLOUR
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application No. 85/161,714
`Trademark: ARSENE LUPIN
`Applicant’s Ref.: GNS 1108044
`.................................................................. --X
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`Lupin Pharmaceuticals,
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`v.
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`Guerlain S.A.,
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`Opposer,
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`Applicant.
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`__________________________________________________________________-_X'
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`Opposition No. 91201582
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`APPLICANT’S ANSWER AND CANCELLATION COUNTERCLAIM
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`Applicant, by its undersigned attorney, hereby answers the Notice of Opposition as follows and
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`makes the following counterclaim:
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`1. Applicant denies knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 1 in the Notice of Opposition.
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`2. Applicant admits the allegations of the Paragraph 2 of the Notice of Opposition.
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`3. Applicant denies knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 3 in the Notice of Opposition.
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`4. Applicant denies knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 4 in the Notice of Opposition.
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`5. Applicant denies the allegations of Paragraph 5 of the Notice of Opposition.
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`(F099|947 I
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`)
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`Applicant denies knowledge or information sufficient to form a belief as to the truth
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`of the allegations of Paragraph 6 in the Notice of Opposition.
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`Applicant denies the allegations of Paragraph 7 of the Notice of Opposition.
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`Applicant denies the allegations of Paragraph 8 of the Notice of Opposition.
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`Applicant admits that the marks are inherently distinctive for pharmaceuticals not
`containing ingredients derived from the lupin plant and otherwise denies the
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`allegations of Paragraph 9 of the Notice of Opposition.
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`10.
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`Applicant admits the allegations of the Paragraph 10 of the Notice of Opposition.
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`ll.
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`its two claimed
`for
`Applicant admits that Opposer’s application filing dates,
`applications, predate the filing date of the opposed application and otherwise denies
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`the allegations of Paragraph 11 of the Notice of Opposition.
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`12.
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`Applicant denies the allegations of Paragraph 12 of the Notice of Opposition.
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`13.
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`Applicant admits that the literary character name and mark ARSENE LUPIN includes
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`the word LUPIN and otherwise denies the allegations of Paragraph 13 of the Notice
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`of Opposition.
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`14.
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`Applicant denies the allegations of Paragraph 14 of the Notice of Opposition.
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`15.
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`Applicant denies the allegations of Paragraph 15 of the Notice of Opposition.
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`16.
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`Applicant denies the allegations of Paragraph 16 of the Notice of Opposition.
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`17.
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`Applicant denies the allegations of Paragraph 17 of the Notice of Opposition.
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`(F099|947 I )2
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`18. Applicant denies the allegations of Paragraph 18 of the Notice of Opposition.
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`19. Applicant admits that
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`this opposition was filed within the extended opposition
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`deadline.
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`CANCELLATION COUNTERCLAIM
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`1. Opposer is the record owner of U.S. trademark Reg. No. 4024405, maturing from
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`Serial No. 77/766,890, for the mark LUPIN for “house mark for a full line of
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`pharmaceuticals for medical purposes, but excluding dietary supplements and edible
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`flower,” which claims the date of first use of July 1, 2005, and which was filed on
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`June 24, 2009, on the basis of use under Section 1(a), covering “house mark for a full
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`line of pharmaceuticals for medical purposes.” The limiting phrase “but excluding
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`dietary supplements and edible flower” was added by amendment later, during
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`prosecution.
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`2. Section 1402.03(c) now states that, in an application in which the goods are a full line
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`of pharmaceuticals, “the Examining Attorney must require the applicant to provide
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`evidence that it uses the mark in connection with pharmaceuticals to treat diseases or
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`health problems in all categories in the World Health Organization (”W.H.O.”)
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`International Statistical Classification Of Diseases And Related Health Problems.
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`Upon information and belief, the ninth revision of this list was in effect on the June
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`24, 2009 filing date of the application concerned and is still widely used in the United
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`States. Upon information and belief, this list is organized with 18 top level
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`classifications that group diseases or health conditions in broad scientific categories.
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`3. Upon information and belief, the Opposer was selling, in the United States, on the
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`filing date of the application concerned, June 24, 2009, pharmaceuticals classified in
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`fewer than such 18 categories.
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`(F099l947 I )3
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`4. Upon information and belief, on such date, the pharmaceuticals sold by Opposer in
`the United States consisted entirely of pharmaceuticals of the following types:
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`1. Antibiotics
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`Cardiovascular drugs
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`Anti-inflammatory drugs
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`.V‘:'>."’!\’ Drugs for nervous system disorders
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`Drugs for mental disorders and convulsions
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`Upon information and belief, these drugs not only do not fall within all 18 of the required
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`categories for a full line of pharmaceuticals, but do not even fall in one half of the
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`required categories for a full line of pharmaceuticals. Upon information and belief, for
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`example, Opposer’s LUPIN drugs sold in the U.S. did not then include such required
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`W.H.O. categories as neoplasms (cancer) and diseases of the digestive system.
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`COUNT I — INVALIDITY
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`5. Contrary to the claim of use in its application, Opposer was not using the mark
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`LUPIN “in commerce,” within the meaning of that term in the Lanham Act, for “full
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`line of pharmaceuticals for medical purposes” on the filing date of its application,
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`June 24, 2009.
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`6. The registration maturing from that application is accordingly invalid for a lack of use
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`for the claimed goods under Section 1 of the Lanham Act.
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`7.
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`If, as a matter of law, the TTAB determines that use of a mark for less than a filll line
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`of pharmaceuticals, in a registration claiming such use, is not a basis for complete
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`cancellation, then the identification of goods in the registration should be
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`appropriately limited to name the actual drug categories, such as antibiotics and
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`pharmaceutical preparations for cardiovascular diseases, sold in commerce under the
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`mark on the filing date.
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`(P0991947 I )4
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`COUNT II — NON-USE ABANDONMENT
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`8.
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`Opposer is a generic drug manufacturer, and is a subsidiary of Lupin Limited, a
`generic drug manufacturer located in India. Upon information and belief, as a generic
`drug company, Opposer’s business model is to produce generic versions of popular
`drugs, developed by other companies, for which patent protection has expired in the
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`United States, and is not to create pioneering drugs in all therapeutic categories.
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`Upon information and belief, Opposer is using its mark LUPIN in commerce for
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`some drugs, but is not using its mark LUPIN in commerce for drugs comprising a full
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`line of pharmaceuticals in all 18 W.H.O. categories.
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`10.
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`Upon in formation and belief, Opposer has no immediate intention or active plans to
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`begin use, or recommence use, of its mark in commerce for drugs comprising a full
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`line of pharmaceuticals. Upon information and belief, Opposer’s intention is to
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`opportunistically use its mark only for those drugs which are off patent and on which
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`it can maximize its profit. Upon information and belief, its actual focus is on a
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`relatively small number of drug categories, including anti-tuberculosis drugs,
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`cardiovascular drugs, cephalosporin antibiotics and a few other categories. Upon
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`information and belief, it has not announced plans to develop drugs for sale in
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`commerce, under its mark LUPIN, for drugs in those of the 18 therapeutic categories
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`for which it does not now sell drugs.
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`ll.
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`Accordingly, Opposer has abandoned its mark LUPIN as a “house mark for a full line
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`of pharmaceuticals for medical purposes,” through non-use with no intention to
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`resume use, within the meaning of abandonment in Lanham Act Section 45.
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`12.
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`If, as a matter of the law, the TTAB determines that such abandonment is not a basis
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`for complete cancellation, then the identification of goods in the registration should
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`be appropriately limited to name the actual drug categories, such as antibiotics and
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`pharmaceutical preparations for cardiovascular diseases, sold in commerce under the
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`mark now.
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`(F099l947 I )5
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`13. Applicant is damaged by the continued existence of the registration at issue because
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`the application that matured into such registration has been named by Opposer as a
`basis for the opposition against Applicant's mark and Opposer could argue that the
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`“full line” goods list in its registration covers drugs more closely related to
`Applicant’s goods than the specific drugs, such as cardiovascular drugs, actually sold
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`by Opposer under its mark LUPTN in the U.S.
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`Wherefore, Applicant requests that the opposition be dismissed in its entirety and that the
`registration for LUPIN be cancelled in its entirety or, if the '|‘TAB determines that total
`cancellation is inappropriate, that the registration be partially cancelled and a more appropriate
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`identification of goods be substituted for the present identification.
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`Respectfully submitted:
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`Dated: April 12, 2012
`New York, New York
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`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`By:
`
`I..-——-
`
`David Ehrlich
`
`866 United Nations Plaza
`New York, New York 100] T
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`(212) 313-5900
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`Ana:-ney.s'_fbr /lpplicanr/Cozm.'erc!m'm Petitioner
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`lI"ll‘J01R!-17 1 I6
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing was served by First Class mail upon the
`Attorney for Opposer, James M. Gibson, at Powley & Gibson, P.C., 304 Hudson Street, 2"“
`Floor, New York, NY 10013, on this date, April 12, 2012
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`
`
`David Ehrlich
`
`{I-‘D99l9\I1'l
`
`I 1-?