Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA475266
`ESTTA Tracking number:
`05/30/2012
`
`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
`
`Johnson & Johnson
`05/30/2012
`
`One Johnson & Johnson Plaza
`New Brunswick, NJ 08933
`UNITED STATES
`
`Attorney
`information
`
`Christen M. English
`Drinker Biddle & Reath LLP
`1500 K St., NW, Suite 1100
`Washington, DC 20005
`UNITED STATES
`tmlitdocket@dbr.com, christen.english@dbr.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85401851
`05/30/2012
`
`Publication date
`Opposition
`Period Ends
`
`01/31/2012
`05/30/2012
`
`DERMAL LIFE, LLC
`4951 Tampa West Boulevard
`Tampa, FL 33634
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Anti-inflammatory ointments; Medicated
`lotions for face and body; Medicated skin preparation for use in treating sunburns, facial wrinkles, dry
`skin, burns, rashes and wounds; Medicated sun block; Medicated sun care preparations; Medicated
`sun screen; Pharmaceutical preparations for wounds; Pharmaceutical skin lotions
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`77900162
`
`NONE
`
`Word Mark
`
`HELIDERM
`
`Application Date
`
`12/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA475266
`ESTTA Tracking number:
`05/30/2012
`
`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
`
`Johnson & Johnson
`05/30/2012
`
`One Johnson & Johnson Plaza
`New Brunswick, NJ 08933
`UNITED STATES
`
`Attorney
`information
`
`Christen M. English
`Drinker Biddle & Reath LLP
`1500 K St., NW, Suite 1100
`Washington, DC 20005
`UNITED STATES
`tmlitdocket@dbr.com, christen.english@dbr.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85401851
`05/30/2012
`
`Publication date
`Opposition
`Period Ends
`
`01/31/2012
`05/30/2012
`
`DERMAL LIFE, LLC
`4951 Tampa West Boulevard
`Tampa, FL 33634
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Anti-inflammatory ointments; Medicated
`lotions for face and body; Medicated skin preparation for use in treating sunburns, facial wrinkles, dry
`skin, burns, rashes and wounds; Medicated sun block; Medicated sun care preparations; Medicated
`sun screen; Pharmaceutical preparations for wounds; Pharmaceutical skin lotions
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`77900162
`
`NONE
`
`Word Mark
`
`HELIDERM
`
`Application Date
`
`12/23/2009
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Related
`Proceedings
`
`Attachments
`
`NONE
`
`Class 005. First use:
`blend of ingredients, namely, nutrients, sold as an integral component of an
`antibiotic for the treatment of general and local bacterial and virus infections;
`blend of ingredients, namely, nutrients sold as an integral component of
`medicated lip care preparations
`
`Opposition No. 91205184
`
`77900162#TMSN.jpeg ( 1 page )( bytes )
`HEALIXADERM (Cl. 5) Opp.pdf ( 10 pages )(321656 bytes )
`
`Certificate of Service
`
`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.
`
`Signature
`Name
`Date
`
`/Christen M. English/
`Christen M. English
`05/30/2012
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Ser. No. 85/401851 - HEALIXADERM
`
`Published January 31, 2012
`
`JOHNSON & JOHNSON,
`
`v.
`
`DERMAL LIFE, LLC:
`
`Opposer,
`
`Applicant.
`
`:
`
`:
`
`Opposition No.
`
`NOTICE OF OPPOSITION
`
`JOHNSON & JOHNSON, a New Jersey corporation, having a principal place of business
`
`at One Johnson & Johnson Plaza, New Brunswick, New Jersey 08933-7001 (“Opposer”),
`
`believes that it will be damaged by the registration of Ser; No. 85/401851 ~ HEALIXADERM for
`
`“anti-inflammatory ointments; medicated lotions for face and body; medicated skin preparation
`
`for use in treating sunburns, facial wrinkles, "dry skin, burns, rashes and wounds; medicated sun
`
`block; medicated sun care preparations; medicated sun screen; pharmaceutical preparations for
`
`wounds; pharmaceutical skin lotions” in class 5; filed August 18, 2011 by Dermal Life, LLC, a
`
`Florida limited liability company having an address at 4951 Tampa West Boulevard, Tampa,
`
`Florida, 33634 (“Applicant”), and hereby opposes the same pursuant to Section 13 of the
`Trademark Act of 1946 (15 U.S.C. §l063).
`0
`
`As grounds for the opposition Opposer states:
`
`1. Opposer is world famous as a leader in the design, manufacture and marketing of wound
`
`care, sun protection, and skin care products, and a wide variety of other products and
`
`services in the fields of medicine, pharmaceuticals, healthcare, personal care and nutrition.
`
`
`
`2. Opposer owns the following application:
`
`Ser. No. 77/900,162 — HELIDERM for blend of ingredients, namely, nutrients,
`sold as an integral component of an antibiotic for the treatment of general and
`local bacterial and Virus infections; blend of ingredients, namely, nutrients
`sold as an integral component of medicated lip care preparations, in Class 5;
`filed December 23, 2009; allowed on June 21, 2011.
`
`A photocopy of the TARR and TESS records for the foregoing application is attached as
`Exhibit A.
`
`3. Opposer’s filing date for application Ser. No. 77/900,162 — HELIDERM predates the filing
`
`date of Applicant’s application Ser. No. 85/401,851 — HEALIXADERM by nearly nineteen
`
`(19) months.
`
`On information and belief, Applicant made no use in commerce of the mark
`
`HEALIXADERM in the United States prior to the December 23, 2009 filing date of
`
`Opposer’s application Ser. No. 77/900,162.
`
`On information and belief, Applicant has made no use in commerce of the
`
`HEALIXADERM mark in the United States for the goods covered by Ser. No. 85/401,851
`
`or any other goods or services.
`
`Applicant’s HEALIXADERM mark is substantially similar to Opposer’s HELIDERM mark
`
`in appearance, sound and commercial impression.
`
`The goods on which Opposer intends to use the HELIDERM mark and the goods for which
`
`Applicant seeks to register the HEALIXADERM mark are highly related.
`
`The goods on which Opposer intends to use the HELIDERM mark and the goods for which
`
`Applicant seeks to register the HEALIXADERM mark are likely to be sold or rendered
`
`through the same channels of trade.
`
`
`
`9. The goods on which Opposer intends to use the HELIDERM mark and the goods for which
`
`Applicant seeks to register the HEALIXADERM mark are likely to be sold or rendered to
`
`the same class of purchasers.
`
`10. The use and registration by Applicant of the HEALIXADERM mark for the goods identified
`
`in Ser. No. 85/401,851 is likely to cause confusion, mistake or deception by having the
`
`public erroneously assume or believe that the goods emanate from Opposer, or are in some
`
`other way associated or connected with Opposer’s prior-filed HELIDERM mark, all
`
`to
`
`Opposer’s irreparable damage.
`
`For the reasons set forth above, Opposer believes and believing asserts that it will be
`
`damaged by the registration of Ser. No. 85/401,851 - HEALIXADERM. Accordingly, Opposer
`
`prays that
`
`this Opposition be sustained, and that Applicant be refused registration of the
`
`HEALIXADERM mark for the goods set forth in application Ser. No. 85/401,851.
`
`The $300.00 filing fee is submitted herewith. Should additional fees be required please
`
`charge them to the deposit account of Opposer’s counsel, No. 50-0573.
`
`Respectfully submitted,
`JOHNSON & JOHNSONWWWWWWWW.0MN
`
`
`
`.or
`
`
`
`
`
` By: (/ A /
`
`
`
`.
`
`t’./ a
`
`u
`
`Drinker Biddle & Reath LLP
`
`1500 K Street, N.W., Suite 1100
`Washington, D.C. 20005
`Tel: (202) 842-8800
`Fax: (202) 842-8465
`Attorneys for Opposer
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certified that a true and correct copy of this NOTICE OF OPPOSITION was served on
`App1icant’s counsel of re 0rd at the following address of record, by first class mail, postage
`
`prepaid, thisflay of _2012:
`
`William S. Gardner, Esq.
`28 West 62“ Street
`
`Indianapolis, IN 46260
`
` LCCa&Q
`
`
`
`Trademark Electronic Search System (TESS)
`
`Page 1 of2
`
`Exhibit A
`
`
`
`United States Patent and Trademark Office
`
`Homelsite Index] Search[FAQ[GlossaryIGuides] Contacts[eBusiness]eBiz alertsINews[Help
`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Wed May 30 04:35:46 EDT 2012
`
`NEWUSER
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`
`S'TftUc’l"t.IR"ED
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`
`SEARCH 0'3
`
`L257
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`tg_L9g§ru§yg Please logout when you are done to release system resources allocated for you.
`
`[start List At:]S A0
`
`“Son Jutnp torecord:§W
`
`A’ Record 1 out of 3
`
`E
`
`‘(ARR Status
`
`
`
` Assist: Stausflh
`
`
`
`Y
`A ”‘'‘B S‘‘‘‘“‘”‘’
`. ( Use the "Back" button of the Internet
`Browser to return to TESS)
`
`HELIDERM
`
`word Mark
`
`Goods and
`Services
`
`Standard
`Characters
`Claimed
`
`Mark Drawing
`Code
`
`HELIDERM
`
`IC 005. US 006 018 044 046 051 052. G & S: blend of ingredients, namely, nutrients, sold as an
`integral component of an antibiotic for the treatment of general and local bacterial and virus
`infections; blend of ingredients, namely, nutrients sold as an integral component of medicated lip
`care preparations
`
`(4) STANDARD CHARACTER MARK
`
`Serial Number
`
`77900162
`
`Filing Date
`Current Basis
`
`December 23, 2009
`1 B
`
`Original Filing
`Basis
`Published for
`
`Opposition
`Owner
`
`1B
`
`April 26, 2011
`
`(APPLICANT) JOHNSON & JOHNSON CORPORATION NEW JERSEY One Johnson & Johnson
`Plaza New Brunswick NEW JERSEY 089337001
`
`Attorney of
`Record
`
`Type of Mark
`Register
`
`Brian T. Jaenicke
`
`TRADEMARK
`
`PRINCIPAL
`
`http://tess2 .uspto .gov/bin/gate.exe?f=doc&state=4003 :qobuut.2.1
`
`5/30/2012
`
`
`
`Trademark Electronic Search System (TESS)
`
`Page 2 of 2
`
`L‘ e/Dead
`Irgicator
`
`LIVE
`
`
`
`
`
`NԤ::'a:'a" 2.551"
`
`f’?“msTE'2so:3:":
`
`§1‘1=a.:*e; E3633
`
`
`
`I.HOME | SITE INDEX! SEARCH I eBUSlNESS I HELP I PRIVACY POLICY
`
`http://tess2.uspto.goV/bin/gate.exe?f=doc&state=4O03 :qobuut.2.1
`
`5/30/2012
`
`
`
`Latest Status Info
`
`Page 1 of 4
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2012-05-30 11:16:48 ET
`
`Serial Number: 77900162 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: (NOT AVAILABLE)
`
`Mark
`
`HELIDERM
`
`(words only): HELIDERM
`
`Standard Character claim: Yes
`
`Current Status: A first request for extension of time to file a Statement of Use has been granted.
`
`Date of Status: 2012-01-23
`
`Filing Date: 2009-12-23
`
`The Notice of Allowance Date is: 201 1-06-21
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 103
`
`Attorney Assigned:
`BORSUK ESTHER A
`
`Current Location: 700 -Intent To Use Section
`
`Date In Location: 2012-01-23
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`1. JOHNSON & JOHNSON
`
`http://tarr.uspto.gov/servlet/tarr?regser=seria1&entry=77900162
`
`5/30/2012
`
`
`
`Latest Status Info
`
`Page 2 of 4
`
`Address:
`JOHNSON & JOHNSON
`One Johnson & Johnson Plaza
`
`New Brunswick, NJ 089337001
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: New Jersey
`Phone Number: 732-524-6273
`Fax Number: 732-524-6341
`
`GOODS AND/OR SERVICES
`
`International Class: 005
`Class Status: Active
`
`blend of ingredients, namely, nutrients, sold as an integral component of an antibiotic for the
`treatment of general and local bacterial and virus infections; blend of ingredients, namely, nutrients
`sold as an integral component of medicated lip care preparations
`Basis: 1(b)
`First Use Date: (DATE NOT AVAILABLE)
`First Use in Commerce Date: (DATE NOT AVAILABLE)
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`(NOT AVAILABLE)
`
`(NOT AVAILABLE)
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2012-01-24 - Notice Of Approval Of Extension Request E-Mailed
`
`2012-01-23 - Extension 1 granted
`
`2011-12-21 - Extension 1 filed
`
`2012-01-23 - Case Assigned To Intent To Use Paralegal
`
`2011-12-21 - TEAS Extension Received
`
`2011-12-20 - TEAS Change Of Correspondence Received
`
`2011-06-21 — NOA Mailed - SOU Required From Applicant
`
`http://tarr.uspto.gov/serv1et/tarr?regser=seria1&entry=77900162
`
`5/3 0/2012
`
`
`
`Latest Status Info
`
`Page 3 of 4
`
`2011-04-26 - Published for opposition
`
`2011-04-06 - Notice of publication
`
`2011-03-23 - Law Office Publication Review Completed
`
`2011-03-22 - Assigned To LIE
`
`2011-03-04 - Approved For Pub - Principal Register
`
`2011-02-15 - Teas/Email Correspondence Entered
`
`201 1-02-15 - Communication received from applicant
`
`2011-02-15 - TEAS Response to Office Action Received
`
`2010-10-08 - Non-final action mailed
`
`2010-10-08 - Non-Final Action Written
`
`2010-09-21 - Teas/Email Correspondence Entered
`
`2010-09-20 - Communication received from applicant
`
`2010-09-20 - TEAS Response to Office Action Received
`
`2010-03-18 - Non-final action mailed
`
`2010-03-18 - Non-Final Action Written
`
`2010-03-18'— Non-Final Action Written
`
`2010-03-18 - Assigned To Examiner
`
`2009-12-31 - New Application Office Supplied Data Entered In Tram
`
`2009-12-26 - New Application Entered In Tram
`
`ATTORNEY/CORRESPONDENT INFORMATION
`
`Attorney of Record
`Brian T. Jaenicke
`
`Correspondent
`BRIAN T. JAENICKE
`JOHNSON & JOHNSON
`ONE JOHNSON & JOHNSON PLAZA
`NEW BRUNSWICK NJ 08933-7001
`Phone Number: 732-524-6273
`
`http://tarr.uspto. gov/serv1et/tarr?regser=seria1&entry=77900 1 62
`
`5/30/2012
`
`
`
`Latest Status Info
`
`Page 4 of 4
`
`Fax Number: 732-524-6341
`
`http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77900162
`
`5/30/2012
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