Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA527183
`ESTTA Tracking number:
`03/18/2013
`
`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
`
`Eli Lilly and Company
`03/27/2013
`
`Lilly Corporate Center
`Indianapolis, IN 46285
`UNITED STATES
`
`Attorney
`information
`
`Peter J. Lynfield
`Abelman Frayne Schwab
`666 Third Avenue
`New York, NY 10017
`UNITED STATES
`pjlynfield@lawabel.com, nwbranthover@lawabel.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79115742
`03/18/2013
`
`1123545
`
`H. Lundbeck A/S
`Ottiliavej 9 DK-2500 Valby
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`11/27/2012
`03/27/2013
`
`03/26/2012
`
`DENMARK
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Pharmaceutical preparation and
`substances for the prevention and treatment of disorders and diseases in or affecting the central
`nervous system; pharmaceutical preparations and substances acting on the central nervous system;
`central nervous system stimulants; pharmaceutical preparations and substances for the prevention
`and treatment of psychiatric and neurological diseases and disorders; pharmaceutical preparations
`and substances for the prevention and treatment of Alzheimer's disease, depression, psychosis,
`anxiety, epilepsy, sclerosis, porphyries, Huntington's disease, insomnia, Parkinson disease,
`schizophrenia, bipolar disorder, oncology, pain, alcoholism and dependency; diagnostic preparations,
`substances, reagents and agents for medical purposes
`
`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
`
`85289351
`
`NONE
`
`Word Mark
`Design Mark
`
`EZAMBRIS
`
`Application Date
`
`04/07/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use:
`Pharmaceutical preparations, namely, pharmaceutical preparations for the
`diagnosis and treatment of alcohol use disorders, Alzheimer's, anxiety disorders,
`atherosclerosis, autoimmune diseases and disorders, blood disorders, bone and
`skeletal diseases and disorders, cancer, cardiovascular diseases, central
`nervous system diseases and disorders, cholesterol disorders, cystic fibrosis,
`dementia, dermatological diseases and disorders, diabetes, dyslipidemia,
`endocrine diseases and disorders, gastrointestinal diseases and disorders,
`hormonal diseases and disorders, inflammation and inflammatory diseases and
`disorders, kidney diseases and disorders, liver diseases and disorders,
`metabolic diseases and disorders, migraines, muscle diseases and disorders,
`neurodegenerative diseases and disorders, neurological disorders, pain,
`pancreatic diseases and disorders, psychiatric disorders, reproductive system
`diseases and disorders, sleep disorders, urological disorders; antidepressants
`
`Attachments
`
`85289351#TMSN.jpeg ( 1 page )( bytes )
`Notice of Opposition - SIGNED - March 18, 2013.pdf ( 4 pages )(157684 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
`
`/Peter J. Lynfield/
`Peter J. Lynfield
`03/18/2013
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`222,570
`
`In the Matter of Serial No. 79/ 1 15,742
`Filed September 8, 2011
`Ei{£}i{§';§i'E;}}{Q;;§""""""""""""""""""X
`
`Opposer,
`
`Opposition No.
`
`V.
`
`.
`
`H. Lundbeck A/S
`
`Applicant.
`
`____________________________________________________ __X
`
`NOTICE OF OPPOSITION
`
`' Opposer Eli Lilly and Company (“Opposer”), a corporation organized and existing in the state
`
`of Indiana, with an office at Lilly Corporate Center, Indianapolis, Indiana 46285, believes that it will
`
`be damaged by the registration of Trademark Application Serial No. 79/ 1 15,742 for the mark
`
`EZACTRIS and hereby opposes that registration.
`
`As grounds for this opposition it is alleged that:
`
`1.
`
`On or about April 7, 2011, Opposer filed an application to register the trademark
`
`EZAMBRIS, which was assigned Serial No. 85/289,351.
`
`2.
`
`Opposer's EZAMBRIS trademark was issued a Notice of Allowance on October 11,
`
`2011 for the following goods:
`
`International Class 5:
`
`"Pharmaceutical preparations, namely, pharmaceutical
`preparations for the diagnosis and treatment of alcohol use disorders,
`Alzheimer's, anxiety disorders, atherosclerosis, autoimmune diseases and
`disorders, blood disorders, bone and skeletal diseases and disorders,
`cancer, cardiovascular diseases, central nervous system diseases and
`
`
`
`disorders, cholesterol disorders, cystic fibrosis, dementia, dermatological
`diseases and disorders, diabetes, dyslipidemia, endocrine diseases and
`disorders, gastrointestinal diseases and disorders, hormonal diseases and
`disorders, inflammation and inflammatory diseases and disorders, kidney
`diseases and disorders, liver diseases and disorders, metabolic diseases
`and disorders, migraines, muscle diseases and disorders,
`neurodegenerative diseases and disorders, neurological disorders, pain,
`pancreatic diseases and disorders, psychiatric disorders, reproductive
`system diseases and disorders, sleep disorders, urological disorders;
`antidepressants."
`
`I ("EZAMBRIS Application")
`
`3.
`
`On March 26, 2012 H. Lundbeck A/S (“Applicant”) filed a U.S. trademark application
`
`for the mark EZACTRIS (“Applicant's Mark") based on International Registration No.
`
`1123545 and claiming a priority date of September 29, 2011, which was assigned
`
`Trademark Application Serial No. 79/1 15,742.
`
`4.
`
`On November 27, 2012 Applicant's Mark was published for opposition for the
`
`following goods:
`
`International Class 5:
`
`"Pharmaceutical preparation and substances for the prevention and
`treatment of disorders and diseases in or affecting the central nervous
`system; pharmaceutical preparations and substances acting on the central
`nervous system; central nervous system stimulants; pharmaceutical
`preparations and substances for the prevention and treatment of
`psychiatric and neurological diseases and disorders; pharmaceutical
`preparations and substances for the prevention and treatment of
`Alzheimer's disease, depression, psychosis, anxiety, epilepsy, sclerosis,
`porphyries, Huntington's disease, insomnia, Parkinson disease,
`schizophrenia, bipolar disorder, oncology, pain, alcoholism and
`dependency; diagnostic preparations, substances, reagents and agents for
`medical purposes. "
`
`5.
`
`Opposer’s rights by virtue of the filing date for its EZAMBRIS Application are superior
`
`to Applicant's rights in the trademark EZACTRIS.
`
`
`
`6.
`
`Applicant’s EZACTRIS Mark so resembles Opposer’s EZAMBRIS trademark as to be
`
`likely, when applied to Applicant’s goods, to cause confusion and mistake and to
`
`deceive as to the source, origin or sponsorship of the goods using Applicant’s Mark.
`
`7.
`
`Opposer will be damaged by the registration sought by Applicant because such
`
`registration will support and assist Applicant in the confusing and misleading use of
`
`Applicant’s Mark and will give color of rights in Applicant in violation and derogation
`
`of the prior and superior rights of Opposer.
`
`WHEREFORE, the Opposer respectfully requests that Trademark Application Serial No.
`
`79/ 1 15,742 for the mark EZACTRIS be denied registration and that this opposition be sustained.
`
`Date: March it‘? , 2013
`
`
`
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`
`
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`
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`
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`
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`
`Peter J. Lynfield, Esq.
`Ned Branthover, Esq.
`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
`
`New York, New York 10017
`Tel: 212—949~9022
`
`Fax: 212 949-9190
`
`Email: pjlynfield@laWabel.com
`nWbranthoVer@lawabel.com
`
`Attorneys for Opposer
`Eli Lilly and Company
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that thislflth day of March 2013, l electronically filed the foregoing with the
`
`United States Patent and Trademark Office before the Trademark Trial and Appeal Board by using the
`
`ESTTA system and a copy of the foregoing was sent Via email to the following:
`
`James Thomas, Esq.
`Thomas Trademark & Copyright Legal Services
`P.0. Box 1886
`
`Durham, NC 27702
`
`Email:
`
`james@thornasIegal.pro
`
` Ma§*
`
`' Ned W. Branthover
`
`era.
