Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA551892
`ESTTA Tracking number:
`08/02/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203944
`Defendant
`Celgene Corporation
`CAMILLE M MILLER
`COZEN O'CONNOR
`1900 MARKET STREET
`PHILADELPHIA, PA 19103-3527
`UNITED STATES
`cmiller@cozen.com, mmiller@cozen.com, phdocketing@cozen.com
`Motion to Amend/Amended Answer or Counterclaim
`Melanie A. Miller
`mmiller@cozen.com
`/Melanie A. Miller/
`08/02/2013
`Celgene's Motion for Leave to Amend.PDF(115799 bytes )
`Exhibit A- Motion for Leave to Amend.PDF(154572 bytes )
`Exhibit B part 1.PDF(933302 bytes )
`Exhibit B part 2.PDF(1241622 bytes )
`Exhibit B part 3.PDF(1653255 bytes )
`Exhibit B part 4.PDF(1146366 bytes )
`Exhibit B part 5.PDF(628545 bytes )
`Exhibit C Motion for Leave to Amend.PDF(1078709 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91203944
`
`Serial Nos.:
`
`85/347,198
`85/347,212
`
`Marks:
`
`POML
`POMD
`
`) )
`
`) )
`
`POM WONDERFUL LLC,
`
`Opposer,
`
`v.
`
`CELGENE CORPORATION,
`
`)
`)
`)
`)
`)
`Applicant.
`.
`
`CELGENE CORPORATION’S MOTION FOR LEAVE TO FILE
`
`AMENDED ANSWER AND COUNTERCLAIMS
`
`I.
`
`INTRODUCTION
`
`Applicant, Celgene Corporation (“Celgene”), respectfully moves the Board for leave to
`
`file an Amended Answer and Counterclaims so that it may assert counterclaims for partial
`
`cancellation ofthe goods identified in certain of Opposer’s, Pom Wonderfill LLC’s (“Pom’s”),
`
`pleaded trademark registrations based on recently-discovered evidence suggesting that Pom in no
`
`way uses, cannot use and never has used the marks identified in these registrations in connection
`
`with some of the goods recited therein. A redlined copy of the proposed Amended Answer and
`
`Counterclaims is attached hereto as Exhibit A.
`
`Indeed, in reviewing Pom’s arguments raised in its Reply Brief in Support of its Motion
`
`to Reopen Time for Expert Discovery and to Extend the Discovery Deadline, Celgene learned
`
`that Pom intended to argue that a likelihood of confusion exists between its marks and Celgene’s
`
`marks in part because the goods associated with the respective applications encompass
`
`pharmaceutical preparations. Pom intends to raise this argument even though the Federal Trade
`
`Commission (“FTC”) issued a final order in its action against Pom, upholding an Administrative
`
`Law Judge’s initial determination that Pom falsely advertised that its POM_Juice and its POMX
`
`

`
`supplements can “treat, prevent, or reduce the risk of heart disease, prostate cancer, or erectile
`
`dysfunction, or are clinically proven to do so.” See In the Matter ofPom Wonderful LLC et al.,
`
`No. 9344, Initial Decision, at 328 (FTC May 17, 2012) attached hereto as Exhibit B; In the
`
`Matter ofPom Wonderful LLC et al., No. 9344, Opinion of the Commission, at 53 (FTC Jan. 10,
`
`2013) attached hereto as Exhibit C. This final order, which the Board advised Celgene could _
`
`“introduce through a notice of reliance” if it were to issue prior to applicant’s testimony period,
`
`see Board Order dated March 1, 2013, makes plain that Pom in no way offers and cannot claim
`
`it offers “anti-cancer preparations” or “pharmaceutical products and preparations .
`
`.
`
`. for the
`
`treatment of viral and infectious diseases, including for the treatment of cancer” under certain of
`
`Pom’s trademarks, as the ldentified Registrations assert. Thus, these registrations are subject to
`
`partial cancellation and, in light of this recently garnered knowledge, Celgene should be allowed
`
`to amend its Answer to assert counterclaims to this effect.
`
`Given that discovery in this case is still pending, that Pom should have been aware of the
`
`FTC’s final order when it first issued on January 10, 2013, and the fact that Celgene only
`
`recently learned that, despite the issuance ofthis final order, Pom nonetheless intends to argue
`
`that a likelihood of confusion exists between its marks and Celgene’s marks because the
`
`registrations at issue both cover pharmaceutical products and anti-cancer preparations, it is
`
`plainly within the interest ofjustice to grant Celgene’s Motion.
`
`II.
`
`' BACKGROUND
`
`Four of the trademark registrations alleged in Pom’s Notices of Opposition, namely, U.S.
`
`Trademark Reg. No. 3,562,516 for POMX, U.S. Trademark Reg. No. 3,562,517 for POMX and
`
`design, U.S. Trademark Reg. No. 3,697,491 for POM WONDERFUL, and U.S. Trademark Reg.
`
`1
`
`No. 3,687,492 for POM WONDERFUL and design (collectively, the “Identified Registrations”)
`
`

`
`cover “anti—cancer preparations; pharmaceutical products and preparations .
`
`.
`
`. for the treatment
`
`of viral and infectious diseases, including for the treatment of cancer.” The ‘5 17 Registration
`
`additionally covers “drug delivery agents consisting of compounds that facilitate delivery of
`
`pharmaceuticals.”
`
`Having found evidence of an FTC proceeding wherein the FTC claimed. that Pom may
`
`have falsely advertised its products as capable of curing, preventing or treating certain diseases
`
`such as cancer, Celgene initially requested in its discovery requests information pertinent to the
`
`FTC proceeding and related information so that it could determine whether Pom actually offered
`
`in commerce these goods. See, e.g., Exhs. 1 and 4 of Celgene’s Motion to Compel, filed on
`
`September'7, 2012, for a true and complete copy of these requests. When Pom repeatedly failed
`
`to provide Celgene with this—.and other—information, Celgene moved to compel this
`
`information on September 7, 2012. The case was then stayed.
`
`Six months later, in ruling on Celgene’s Motion to Compel, the Board denied Celgene’s
`
`request to pursue discovery related to the FTC proceeding. See March 1, 2013 Order. However,
`
`the Board expressly noted that “[i]n the event that the FTC litigation is finally disposed of prior
`
`to the conclusion of applicant’s testimony period, applicant may .
`
`.
`
`. introduce the decision
`
`through a notice of reliance. .
`
`. .” Id.
`
`The FTC ‘apparently issued a final order in this matter on January 10, 2013, during the
`
`time this case was first stayed. See Exhibit C. In issuing the final order, the FTC agreed with
`
`the Administrative Law Judge that Pom “made serious yet unsupported claims” that its products
`
`“treat, prevent or reduce the risk of heart disease, prostate cancer, or ED.” Exh. C at 49. And
`
`affirrned that Pom’s “actions were serious and deliberate,” noting that Pom “made numerous
`
`deceptive representations and were aware that they were making such representations despite the
`
`

`
`inconsistency between the results of some of their later studies and the results of earlier studies to
`
`which [Pom] refer[red] in [its] ads.” Id. Thus, the FTC upheld the ALJ’s cease and desist order,
`
`restraining Porn from making “any representation in any manner, expressly or by implication,
`
`including through the use of a .
`
`.
`
`. trademark .
`
`.
`
`. that [Pom’s products are] effective in the
`
`diagnosis, cure, mitigation, treatment, or prevention of any disease,” including heart disease,
`
`prostate cancer, or erectile dysfunction, unless the representation is non-misleading and Porn
`
`possessed competent and reliable scientific evidence that substantiate these claims. See Exh. B
`
`at 332. Thus, the final order and the corresponding initial decision effectively prohibit Porn from
`
`asserting, as it does in the Identified Registrations, that the goods upon which Porn uses its
`
`various trademarks are anti-cancer preparations, pharmaceutical preparations, or are effective in
`
`the treatment of viral or infectious diseases or cancer. This information expressly shows that the
`
`Identified Registrations are at least overly broad or, at most, fraudulent.
`
`Despite the FTC’s order, Celgene recently learned, on July 25, 2013 when Porn filed its
`
`Reply Brief in Support of Its Motion to Reopen Expert Discovery, that Porn nonetheless plans to
`
`argue a likelihood of confusion between its registrations and Celgene’s applications on the basis
`
`that the goods associated with each include pharmaceutical preparations and treatments} See
`
`Pom’s Reply Br. at 2-3. However, given the FTC’s Order, Pom should not be able’ to argue that
`
`its products constitute pharmaceutical preparations, drug agents or anti-cancer preparations.
`
`In light of these recent developments, Celgene now moves the Board to allow it leave to
`
`file an Amended Answer, see Exhibit A, seeking to partially cancel the Identified Registrations
`
`Indeed, Pom argues in its Reply Brief that “[t]his case is simply about two pharmaceutical preparations
`1
`whose names differ only by a single letter — POMX vs. POML and POMX vs. POMD. Even if these products were
`in the same class but not both for pharmaceutical preparations, registration would be unlikely given the extremely
`high similarity between these coined terms. However, in this case registration is particularly unlikely since ‘tribunals
`have long recognized the need for a more ‘conservative approach to determining a likelihood of confusion between
`trademarks used on pharmaceutical preparations due to the harmful
`consequences of mistakenly taking the wropg
`medication.” In Re Indep. Pharmaceutica Ab, SERIAL 78160932, 2005 WL 363408, *3 (Trademark Tr. & App.
`Bd. Jan. 25, 2005).”
`
`

`
`to exclude any reference to pharmaceutical products and/or anti-cancer preparations. Celgene I
`
`has acted diligently in filing this Motion and Porn will not be prejudiced in any way if the Board
`
`grants the same, particularly given the fact that discovery is still open in this matter and pretrial
`
`disclosures are not yet due. Thus, the Motion should be granted in its entirety.
`
`III.
`
`ARGUMENT
`
`The Board should grant Celgene’s Motion to assert new counterclaims against Pom as
`
`entry of the proposed amendment will not “violate settled law or be prejudicial to the rights of
`
`[Pom],” TBMP § 507.02, particularly given the fact that (i) Pom should have been well aware of
`
`the FTC’s final order for quite some time, (ii) Pom has all of the facts related to Celgene’s
`
`counterclaims in its possession, (iii) Celgene only recently became aware that despite the FTC’s
`
`final order, Pom intends on arguing to the Board that there exists a likelihood of confusion in this
`
`case because, inter alia, both Pom’s registrations and_Celgene’s applications cover
`pharmaceutical preparations. and medications, and (iv) discovery is still open in this proceeding
`
`and there is still plenty of time before Pom’s pretrial disclosures are due.
`
`The Board “liberally grants leave to amend pleadings at any stage of a proceeding when
`
`justice so requires” so long as the opposing party will not be prejudiced by the amendment.
`
`TBMP § 507.02. The “timing of a motion for leave to amend under Fed. R. Civ. P. l5(a) plays a
`
`large role in the Board’s determination of whether the adverse party would be prejudiced by the
`
`allowance of the proposed amendment.” Id. § 507.02(a). This is especially true for amendments
`
`to assert counterclaims. Id. § 507.02(b). Thus, “[i]n the absence of any apparent or declared
`
`reason -- such as undue delay, bad faith or dilatory motive on the part of the movant, repeated
`
`failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing
`
`party by virtue of allowance of the amendment, futility of amendment, etc. -— the leave sought
`
`

`
`should” be granted. Foman v. Davis, 371 U.S. 178, 182 (1962) (internal citations and quotations
`
`omitted); see also Commodore Elec. Ltd. v. CBMKabushz'kz' Kaisha, 26 U.S.P.Q.2d 1503, 1505
`
`(TTAB 1993) (“in deciding [a] motion for leave to amend, the Board must consider whether
`
`there is any undue prejudice .
`
`.
`
`. and whether the amendment is legally sufficient”). Given this
`
`liberal standard, the non—movant “generally carries the burden in persuading the court to deny
`
`leave to amend.” Dove v. Wash. Metro. Area Transit Auth., 221 F.R.D. 246, 247 (D.D.C. 2004).
`
`Here, it is plain that justice requires granting Celgene’s Motion. While the FTC issued its
`
`final order on January 10, 2013, it was not until Pom filed its Reply Brief———approximately one
`
`week ago—that Celgene learned that Pom, despite the FTC’s final order, nonetheless intended to
`
`argue that a likelihood of confusion was likely here because one or more of the Identified
`
`Registrations cover pharmaceutical preparations, as do Celgene’s applications. See Pom’s Reply
`
`Br. at 2-3. Celgene has therefore acted diligently in seeking leave to amend its Answer to assert
`
`'
`
`these counterclaims. See, e.g., Media Online Inc. v. El Claszficado, Inc., 88 U.S.P.Q.2d 1285,
`
`1286 (T.T.A.B. 2008) (a motion for leave to amend should be filed promptly after the “ground
`
`for such amendment, e.g., newly discovered evidence, becomes apparent”).
`
`In addition, and perhaps more importantly, Pom will in no way be prejudiced by
`
`Celgene’s assertions of these counterclaims. First, discovery in this case is still pending and the
`
`case is still far away from either party’s testimony period such that Pom will have ample time to
`
`consider and respond to Celgene’s new counterclaims. Thus, Celgene’s counterclaims cannot be
`
`said to have been so late so as to prejudice Porn in this case. See, e.g., Commodore Elec. Ltd., 26
`
`U.S.P.Q.2d at 1505-06 (T.T.A.B. 1993) (no undue delay where, inter alia, discovery was still
`
`open when the motion was filed). These facts are in stark contrast to the facts in Cha Cha Search
`
`Inc. v. Grape Tech. Group Inc., 105 U.S.P.Q.2d 1298 (T.T.A.B. 2012), where the Board found
`
`

`
`undue delay when, inter alia, a motion for leave to amend was brought after pretrial disclosures
`
`were served and months after summary judgment motions involving the counterclaim were
`
`entertained. 105 U.S.P.Q.2d at 1301.
`
`Second, Pom should have all of the information relevant to these counterclaims in its
`
`possession, custody or control and should not require any discovery on these issues from
`
`Celgene or any third party. Indeed, Pom must have been aware of the FTC’s final order months
`
`ago when the order first issued given the fact that the order expressly enjoined Porn from
`
`engaging in certain advertising and marketing practices, see Exhibit C, and, thus, likely
`
`impacted its business rather substantially. Thus, Pom cannot feign surprise regarding this order
`
`and the facts associated therewith. Moreover, Porn is the keeper of all ofthe facts upon which
`
`Celgene’s counterclaims rest. Pom was the entity responsible for falsely advertising its various
`
`products. And Pom was responsible for filing overly broad trademark applications that
`
`encompass goods that it was not in fact offering for sale or selling under the applied-for marks.
`
`Thus, Porn is unable to claim that it should be surprised by these counterclaims. Given that
`
`“”[t]he question of prejudice is closely linked with analysis on undue delay,” Bookhamer v.
`
`Sunbeani Prods., No. C—09—6027 EMC (DMR), 2012 U.S. Dist. LEXIS 180497, at *14 (N.D.
`
`Cal. Dec. 20, 2012), and Porn will in no way be prejudiced by the assertions of these
`
`counterclaims, Celgene’s Motion should be granted.
`
`Finally, Celgene’s Motion should be granted in the interest of promoting justice. The
`
`FTC has expressly enjoined Porn from making “any representation in any manner .
`
`.
`
`. including
`
`through the use of a .
`
`. trademark .
`
`.
`
`. that [any food, drug, or dietary supplement, including, but
`
`not limited to, the POM Products] is effective in the diagnosis, cure, mitigation, treatment, or
`
`prevention of any disease” including the treatment of heart disease and prostate cancer unless
`
`

`
`Pom can rely upon competent and reliable scientific evidence in making these claims. See Exh.
`
`B at 332. If the Board denies Celgene’s Motion, it would effectively allow POM to continue to
`
`claim that its marks in the Identified Registrations cover anti-cancer preparations and
`
`pharmaceutical products when these claims are not substantiated, until such time as another third
`
`party challenges Pom’s registrations. In the meantime, multiple third party applications could be
`
`refused registration to the detriment of the public at large. These issues should be litigated now
`
`to avoid any potential harm to the public on a prospective basis. Thus, this weighs towards
`
`granting Celgene’s Motion as well.
`
`IV.
`
`CONCLUSION
`
`For all of the foregoing reasons, Celgene respectfully requests that the Board grant its
`
`Motion and allow it to amend its Answer to assert counterclaims against Pom as set forth in the
`
`sample Amended Answer in Exhibit A.
`
`Respectfully Submitted,
`
`/s/ Melanie A. Miller
`
`Camille M. Miller
`Melanie A. Miller
`COZEN O’CONNOR
`1900 Market Street
`
`Philadelphia, PA 19103
`(215) 665-2714
`mmiller@cozen.com
`
`Dated: August 2, 2013
`
`Attorneys for Celgene Corporation
`
`

`
`CERTIFTCATE OF SERVICE
`
`I hereby certify that on the 2nd day of August, 2013, I served a true and correct copy of the
`foregoing CELGENE CORPORATION’S MOTION FOR LEAVE TO FILE AMENDED
`ANSWER AND COUNTERCLAIMS via email and via first class mail, postage prepaid to the
`following address:
`
`Michael M. Vasseghi
`Roll Law Group P.C.
`11444 W. Olympic Blvd.
`Los Angeles, CA 90064
`MVassegl3i@Rol1.com
`
`Dated: August 2, 2013
`
`./s/ J. Trevor Cloak
`J. Trevor Cloak
`
`Attorneyfor Applicant,
`Celgene Corporation
`
`

`
`EXHIBIT A
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL ANDAPPEAL BOARD
`
`Opposition No.:
`
`91203944
`
`) )
`
`) )
`
`Serial No.:
`85/347,198
`
`85/347 212
`)
`) M
`) Marks‘
`POML
`)
`POMD
`)
`
`POM WONDERFUL LLC,
`
`Opposer,
`
`v.
`
`CELGENE CORPORATION
`
`Applicant.
`
`AMENDED ANSWER TO NOTICES OF OPPOSITION AND COUNTERCLAIMS
`
`Applicant, Celgene Corporation ("Applicant") is owner of U.S. Trademark Application
`
`
`Serial Nos. 85/347,198 and 85/347 212 for the marks POML and POMD, respectively filed on
`
`June 15, 2011, and hereby submits this Amended Answer answersigthe Notices of Opposition
`
`filed by Opposer, POM Wonderful LLC ("Opposer") in accordance with the numbered
`
`paragraphs thereof, as follows:
`
`1.‘
`
`Denied. Applicant lacks sufficient information concerning the allegations in
`
`paragraph 1 and therefore denies the same and demands strict proof thereof
`
`2.
`
`Denied. Applicant lacks sufficient information concerning the allegations in
`
`paragraph 2 and therefore denies the same and demands strict proof thereof.
`
`3.
`
`Denied. Applicant lacks sufficient information concerning the allegations in
`
`paragraph 3 and therefore denies the same and demands strict proof thereof.
`
`4.
`
`Denied. Applicant lacks sufficient information concerning the allegations in
`
`paragraph 4 and therefore denies the same and demands strict proof thereof
`
`5.
`
`Denied. Applicant lacks sufficient information concerning the allegations in
`
`paragraph 5 and therefore denies the same and demands strict proof thereof.
`
`

`
`6.
`
`Denied. Applicant lacks sufficient information conceming the allegations in
`
`paragraph 6 and therefore denies the same and demands strict proof thereof.
`
`7.
`
`Denied. Applicant lacks sufficient information concerning the allegations in
`
`paragraph 7 and therefore denies the same and demands strict proof thereof.
`
`8.
`
`. Denied. Applicant lacks sufficient information concerning the allegations in
`
`paragraph 8 and therefore denies the same and demands strict proof thereof.
`
`9.
`
`Admitted in part and denied in part. Applicant admits that its POML Application
`
`and POMD Application is for registration and use of POML and POMD, respectively for
`
`“Pharmaceutical preparations, namely, cytokine inhibitory drugs; pharmaceutical preparations
`
`that modulate the immune system; pharmaceutical preparations for the treatment of certain
`
`cancers and blood disease and printed dosage instructional manuals sold together as a unit” in
`
`Int. Class 5. Applicant denies its application necessitates obtaining Opposer’s consent or
`
`permission, and lacks sufficient information concerning such allegations in paragraph 9 and
`
`therefore denies the same and demands strict proof thereof.
`
`1 0.
`
`Admitted.
`
`11.
`
`Applicant repeats and answers every allegation as set forth’ in paragraphs 1-10 and
`
`incorporates its answers herein.
`
`12.
`
`Denied.
`
`13.
`
`Applicant repeats and answers every allegation as set forth in paragraphs 1-12 and
`
`incorporates its answers herein.
`
`14.
`
`Denied. Applicant lacks sufficient information concerning the allegations in
`
`paragraph 14 and therefore denies the same and demands strict proof thereof.
`
`15.
`
`Denied.
`
`

`
`AFFIRMATIVE DEFENSES
`
`By way of further Answer, Applicant alleges the following affinnative defenses:
`
`16.
`
`17.
`
`The Notice of Opposition fails to state a claim for relief.
`
`The goods identified in Opposer’s trademark registrations, U.S. Reg. Nos.
`
`_ 2,637,053; 3,047,447; 2,640,835; 2,864,641; 2,780,314; 3,687,491; 3,687,492; 3,436,526;
`
`3,411,595; 3,391,707; 3,411,596; 3,382,338; 3,013,614; 2,944,482; 2,944,481; 2,960,192;
`
`2,981,525; 2,981,524; 2,960,193; 3,562,516; 3,562,517; 3,208,934; and 3,667,882 (“POM
`
`Marks”) are unrelated to Applicant’s goods identified in its application and have differing
`
`channels of trade than the goods identified in Applicant’s application.
`
`18.
`
`Applicant owns U.S. Registration No. 3,980,998 for POMALYST, which covers
`
`the same goods “Pharmaceutical preparations, namely, cytokine inhibitory drugs; pharmaceutical
`
`preparations that modulate the immune system; pharmaceutical preparations for the treatment of
`
`certain cancers and blood diseases and printed dosage instructional manuals sold together as a
`
`unit”'in Int. Class 5 as the trademark application at issue.
`
`19.
`
`The Examining Attorney reviewing U.S. Application Serial No. 85/150,878
`
`(“POMALYST Trademark Application”) which issued into U.S. Registration No. 3,980,998 for
`
`POMALYST did not issue any Office Action and did not cite any of Opposer’s registrations or
`
`applications as potential bars to the registration.
`
`20.
`
`Opposer was aware of the POMALYST Trademark Application but did not
`
`oppose the POMALYST Trademark Application and allowed it to be registered.
`
`21.
`
`Applicant’s use of the POMALYST mark and Opposer’s POM Marks have been
`
`coexisting in the marketplace without any known actual confusion.
`
`22.
`
`The purchasers of Applicant’s goods identified in its applications are
`
`

`
`sophisticated and know with whom they are dealing.
`
`23.
`Other third-party registrations exist on the Principle Register that include the term
`POM, and variations thereof.
`
`24.
`
`Third—party use of the POM marks and variations thereof demonstrates the narrow
`
`scope of protection afforded to the POM mark.
`
`25.
`
`The Examining Attorney reviewing U.S. Application Serial Nos. 85/347,198 Ed
`
`85/347,212 did not issue any Office Action and did not cite any of Opposer’s registrations or
`
`applications as potential bars to the registration of U.S. Application Serial Nos. 85/347,198_;apd
`
`85/347,212.
`
`26.
`
`The opposition is barred by the doctrines of acquiescence, laches and/or estoppel,
`
`in that numerous other persons have used and continue to use the designation POM and
`
`variations thereof without objection from Opposer.
`
`COUNTERCLAIM 1:
`
`Partial Cancellation of U.S. Reg. No. 3,562,516 for POMX on the Basis of Non-Use
`
`_ 27.
`
`Opposer has asserted rights in U.S. Trademark Reg. No. 3,562,516 against
`
`Celgene in connection with this proceeding. Therefore, Celgene has standing to bring
`
`this counterclaim.
`
`28.
`
`U.S. Registration No. 3,562,516 for POMx issued on January 13, 2009 in
`
`connection with, inter alia, “anti-cancer preparations,’ pharmaceutical products and
`
`preparations, including preparations derived from and containing pomegranate extracts
`
`and plant extracts, for the treatment of viral and infectious disease, including for the
`
`treatment of cancer” in International Class 5.
`
`29.
`
`Opposer is not using—and has never used—its POMX mark in connection with
`
`

`
`the goods identified in Paragraph 28.
`
`_ 30.
`
`Qpposer is currently enjoined, pursuant to an FTC final order, from asserting that
`
`any of the products it offers for sale and/or sells in the ordin_a_ry course of trade in
`
`connection with the POMX mark constitute “anti-cancer preparations,‘ pharmaceutical
`
`products and preparations, including preparations derived from and containing
`
`pomegganate extracts and plant extracts, for the treatment of viral and infectious disease,
`
`including for the treatment of cancer.”
`
`31.
`
`Both at the time U.S. Reg. No. 3,562,516 was issued and at the time Opposer filed
`
`its specimen of use for the POMX mark, Opposer was not using the POMX mark in
`
`commerce in the ordinary course of trade in connection with the goods identified in
`
`Paragraph 28.
`
`32.
`
`Opposer has never made a bona fide use of its POMX mark in commerce in the
`
`ording course of trade in connection with the goods identified in Paragraph 28.
`
`33.
`
`Opposer has never perfected its rights to the POMX mark, has ceased using the
`
`POMX mark, and/or has never used the POMX mark in connection with the goods
`
`identified in Paragraph 28.
`
`34.
`
`In li
`
`t of the fore oin U.S. Trademark Re . No. 3 562 516 should be artiall
`
`cancelled to delete from the registration the goods identified in Paragraph 28 in their
`
`entirety.
`
`COUNTERCLAIM II:
`
`Partial Cancellation of U.S. Reg. No. 3,562,517 for POMX and design
`on the Basis of Non-Use
`
`35.
`
`Opposer has asserted rights in U.S. Trademark Reg._No. 3,562,517 against
`
`Celgene in connection with this proceeding. Therefore, Celgepe has standing to bring
`
`

`
`this counterclaim.
`
`36.
`
`U.S. Registration No. 3,562,517 for POMx issued on Janugry 13, 2009 in
`
`connection with, inter alia, “anti-cancer preparations‘, pharmaceutical products and
`
`preparations, including preparations derived from and containing pomegranate extracts
`
`and plant extracts, for the treatment of viral and infectious disease, including for the
`
`treatment of cancer,‘ drug delivery agents consisting of compounds that facilitate delivery
`
`of pharmaceuticals” in International Class 5.
`
`37.
`
`Opposer is not using—and has never used—its POMX and desig mark in
`
`connection with the goods identified in Paragraph 36.
`
`38.
`
`Opposer is currently enjoined, pursuant to an FTC final order, from asserting that
`
`any of the products it offers for sale and/or sells in the ordinary course of trade in
`
`connection with the POMX and desig mark constitute “anti-cancer preparations;
`
`pharmaceutical products and preparations, including preparations derived from and
`
`containing pomegranate extracts and plant extracts, for the treatment of viral and
`
`infectious disease, including for the treatment of cancer‘, drug delivery agents consisting
`
`of compounds that facilitate delivery of pharmaceuticals.”
`
`39.
`
`Both at the time U.S. Reg. No.- 3,562,517 was issued and at the time Opposer filed
`
`its specimen of use for the POMX and desigp mark, Opposer was not using the POMX
`
`and desigp mark in commerce in the ordinag; course of trade in connection with the
`
`goods identified in Paragraph 36.
`
`40.
`
`Opposer has never made a bona fide use of its POMX and design mark in
`
`commerce in the ordinary course of trade in connection with the goods identified in
`
`Paragraph 36.
`
`

`
`41.
`
`O oser has never erfected its ri
`
`ts to the POMX and desi mark has ceased
`
`using the POMX and desigp mark, and/or has never used the POMX and desigp mark in
`
`connection with the goods identified in Paragraph 36.
`
`42.
`
`In li
`
`t of the fore oin U.S. Trademark Re . No. 3 562 517 should be artiall
`
`cancelled to delete from the registration the goods identified in Paragraph 36 in their
`
`entirety.
`
`COUNTERCLAIM III:
`
`Partial Cancellation of U.S. Reg. No. 3,687,491 for POM WONDERFUL
`on the Basis of Non—Use
`
`43.
`
`Opposer has asserted rigl_1ts in U.S. Trademark Reg. No. 3,687,491 against
`
`Celgene in connection with this proceeding. Therefore, Celgene has standing to bring
`
`this counterclaim.
`
`44.
`
`U.S. Registration No. 3,687,491 for POM WONDERFUL issued on September
`
`22 2009 in connection with inter alia, “anti-cancer preparations,’ pharmaceutical
`
`products and preparations, including preparations derived from and containing
`
`pomegranate extracts and plant extracts, for the treatment of viral and infectious disease,
`
`including for the treatment of cancer” in International Class 5.
`
`45.
`
`Opposer is not using——and has never used——its POM WONDERFUL mark in
`
`connection with the goods identified in Paraggaph 44.
`
`46.
`
`Opposer is currently enjoined, pursuant to an FTC final order, from asserting that
`
`any of the products it offers for sale and/or sells in the ordinary course of trade in
`
`connection with the POM WONDERFUL mark constitute “anti-cancer preparations,’
`
`pharmaceutical products and preparations, including preparations derived from and
`
`containing pomegranate extracts and plant extract§,f_or the treatment of viral and
`
`

`
`infectious disease, including for the treatment of cancer.”
`
`47.
`
`Both at the time U.S. Reg. No. 3,687,491 was issued and at the time Opposer filed
`
`its specimen of use for the POM WONDERFUL mark, Opposer was not using the POM
`
`WONDERFUL mark in commerce in the ordinary course oftrade in connection with the
`goods identified in Paragraph 44.
`I
`
`48.
`
`Opposer has never made a bona fide use of its POM WONDERFUL mark in
`
`commerce in the ordinary course of trade in connection with the goods identifiedin
`
`Paragraph 44.
`
`49.
`
`Opposer has never perfected its rights to the POM WONDERFUL mark, has
`
`ceased using the POM WONDERFUL mark, and/or has never used the POM
`
`WONDERFUL mark in connection with the goods identified in Paragraph 44.
`
`50.
`
`In li
`
`tof the fore oin U.S. Trademark Re . No. 3 687 491 should be artiall
`
`cancelled to delete from the registration the goods identified in Paragraph 44 in their
`
`entirety.
`
`COUNTERCLAIM IV:
`
`Partial Cancellation of U.S. Reg. No. 3,687,492 for POM WONDERFUL and desigp
`on the Basis of Non-Use
`
`51..
`
`Opposer has asserted rights in U.S. Trademark Reg. No. 3,687,492 against
`
`Cel gene in connection with this proceeding. Therefore, Cel gene has standing to bring
`
`this counterclaim.
`
`52.
`
`U.S. Registration No. 3,687,492 for POM WONDERFUL and desigp issued on
`
`September 22, 2009 in connection with, inter alia, ‘v‘anti-cancer preparations,‘
`
`pharmaceutical products and preparations, including preparations derived from and
`
`containing pomegranate extracts and plant extracts, for the treatment of viral and
`
`

`
`infectious disease, including for the treatment of cancer” in International Class 5.
`
`53.
`
`Opposer is not using—and has never used—its POM WONDERFUL and design
`
`mark in connection with the goods identified in Paragraph 52.
`
`54.
`
`Opposer is currently enjoined, pursuant to an FTC final order, from asserting that
`
`any of the products it offers for sale and/or sells in the ordinary course of trade in
`connection with the POM WONDERFUL and desigp mark constitute “anti-cancer
`
`preparations,’ pharmaceutical products and preparations, including preparations derived
`
`from and containing pomegranate extracts and plant extracts, for the treatment of viral
`
`and infectious disease, including for the treatment of cancer.”
`
`55.
`
`Both at the time U.S. Reg. No. 3,687,492 was issued and at the time Opposer filed
`
`its specimen of use for the POM WONDERFUL and desigp mark, Opposer was not using
`
`the POM WONDERFUL and design mark in commerce in the ordinary course of trade in
`
`connection with the goods identified in Paragraph 52.
`
`56.
`
`Opposer has never made a bona Zzde use of its POM WONDERFUL and desigp
`
`mark in commerce in the ordinary course of trade in connection with the goods identified
`
`in Paragraph 52.
`
`57.
`
`O oser has never erfected its ri
`
`ts to the POM WONDERFUL and desi
`
`mark, has ceased using the POM WONDERFUL and design mark, and/or has never used
`
`the POM WONDERFUL and desigp mark in connection with the goods identified in
`
`Paragraph 52.
`
`58.
`
`In li
`
`t of the fore oin U.S. Trademark Re . No. 3 687 492 should be artiall
`
`cancelled to delete from the registration the goods identified in Paragraph 52 in their
`
`entirety.
`
`

`
`WHEREFORE, Applicant requests that the opposition be dismissed and that Serial Nos.
`
`
`85/347,198 and 85/347 212 be allowed to register.
`
`Date:
`
`Respectfully submitted,
`
`Camille M. Miller
`
`Melanie A. Miller
`
`COZEN O’CONNOR
`
`1900 Market St.
`
`Philadelphia, PA 19103
`(215) 665-2000
`_
`Attorneys for Applicant
`
`

`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true and correct copy of the foregoing document was
`
`mailed on
`
`Via First Class Mail, postage prepaid, to counsel for Opposer:
`
`Michael M. Vasseghi
`Roll Law Group P.C.
`11444 W. Olympic Blvd.
`Los Angeles, CA 90064
`
`Date:
`
`-
`
`
`
`Camille M. Miller
`
`COZEN O’CONNOR
`
`1900 Market St.
`
`Philadelphia, PA 19103
`(215) 665-2000
`Attorneys for Applicant
`
`

`
`EXHIBIT B
`
`

`
`PUBLIC
`
`UNITED STATES OF AM