Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA550950
`ESTTA Tracking number:
`07/29/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210975
`Defendant
`Xigen S.A.
`DAVID A. JACKSON
`KLAUBER & JACKSON LLC
`25 E SPRING VALLEY AVE STE 160
`MAYWOOD, NJ 07607-2154
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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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`david.jackson@kjiplaw.com
`Motion to Amend Application
`DAVID A. JACKSON
`info@kjiplaw.com
`/David A. Jackson/
`07/29/2013
`Opposition No. 91210975 - Post Publication Amendment.pdf(25520 bytes )
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`TRADEMARK
`3325-3-001
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`VIIV HEALTHCARE COMPANY,
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`XIGEN S.A.,
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`Opposer
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`Applicant
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`No.
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`91210975
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`Application Serial No.
`Filed
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`Published for Opposition
`Mark
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`85/510,388
`January 6, 2012
`December 11, 2012
`XIGEN
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`FILED ELECTRONICALLY
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`David A. Jackson
`(Name of E-Filer)
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`POST-PUBLICATION AMENDMENT
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`Commissioner for Trademarks
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Dear Sir:
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`Further to the Notice of Opposition mailed June 7, 2013, and in accordance with a
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`Settlement Agreement entered into with the Opposer, applicant herein wishes to amend the
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`above identified application as follows.
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`Please amend the application, without prejudice, to delete the present identification of
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`AMENDMENT
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`goods and services in its entirety and replace it with the following:
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`“Food supplements for medical purposes; pharmaceutical, veterinary and sanitary
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`preparations, namely, anti-inflammatory drugs, inhibitors of cell signalling, anti-cancer drugs,
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`antiinfectives and anti-viral drugs; dietetic substances adapted for medical use, namely, food for
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`babies; adjuvants for medical purposes; proteins for medical purposes; biological preparations
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`for medical purposes, namely, for the treatment of inflammatory diseases, for the treatment of
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`inflammatory diseases in the eye or in the gastro-intestinal tract, for the treatment of neurological
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`disorders, for the treatment of dementia, for the treatment of Parkinson’s disease, for the
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`treatment of stroke, for the treatment of traumatic brain damage, for the treatment of dry eye, for
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`the treatment of cancer, for the treatment of infections, for the treatment of viral infections, for
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`the treatment of cardiovascular diseases and rheumatologic diseases; pharmaceutical
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`preparations for medical purposes, namely, for the treatment of inflammatory diseases, for the
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`treatment of inflammatory diseases in the eye or in the gastro-intestinal tract, for the treatment of
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`neurological disorders, for the treatment of dementia, for the treatment of Parkinson’s disease,
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`for the treatment of stroke, for the treatment of traumatic brain damage, for the treatment of dry
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`eye, for the treatment of cancer, for the treatment of infections, for the treatment of viral
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`infections, for the treatment of cardiovascular diseases and rheumatologic diseases; chemical
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`preparations for medical purposes, namely, for the treatment of inflammatory diseases, for the
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`treatment of inflammatory diseases in the eye or in the gastro-intestinal tract, for the treatment of
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`neurological disorders, for the treatment of dementia, for the treatment of Parkinson’s disease,
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`for the treatment of stroke, for the treatment of traumatic brain damage, for the treatment of dry
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`eye, for the treatment of cancer, for the treatment of infections, for the treatment of viral
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`infections, for the treatment of cardiovascular diseases and rheumatologic diseases; chemical
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`reagents for medical or veterinary purposes; chemico-pharmaceutical preparations for medical
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`purposes, namely, for the treatment of inflammatory diseases, for the treatment of inflammatory
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`diseases in the eye or in the gastro-intestinal tract, for the treatment of neurological disorders, for
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`the treatment of dementia, for the treatment of Parkinson’s disease, for the treatment of stroke,
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`for the treatment of traumatic brain damage, for the treatment of dry eye, for the treatment of
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`cancer, for the treatment of infections, for the treatment of viral infections, for the treatment of
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`cardiovascular and rheumatologic diseases; ferments for pharmaceutical purposes, namely for
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`the treatment of inflammatory diseases, for the treatment of inflammatory diseases in the eye or
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`in the gastro-intestinal tract, for the treatment of neurological disorders, for the treatment of
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`dementia, for the treatment of Parkinson’s disease, for the treatment of stroke, for the treatment
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`of traumatic brain damage, for the treatment of dry eye, for the treatment of cancer, for the
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`treatment of infections, for the treatment of viral infections, for the treatment of cardiovascular
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`diseases and rheumatologic diseases; hormones for medical purposes; medicinal infusions for
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`medical purposes, namely, for the treatment of inflammatory diseases, for the treatment of
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`inflammatory diseases in the eye or in the gastro-intestinal tract, for the treatment of neurological
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`disorders, for the treatment of dementia, for the treatment of Parkinson’s disease, for the
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`treatment of stroke, for the treatment of traumatic brain damage, for the treatment of dry eye, for
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`the treatment of cancer, for the treatment of infections, for the treatment of viral infections, for
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`the treatment of cardiovascular diseases and rheumatologic diseases; chemical reagents for
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`medical or veterinary purposes, excluding anti-viral and HIV pharmaceutical preparations and
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`substances, in International Class 5.
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`Advertising; business management; business administration assistance; providing office
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`functions, providing business analysis and research services, in International Class 35.
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`Scientific and technological services and research, namely, pharmaceutical research in
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`particular drug discovery, and design, excluding pharmaceuticals in the HIV and anti-viral
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`therapeutic areas; providing pharmaceutical analysis and research services, excluding
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`pharmaceuticals in the HIV and anti-viral therapeutic areas; design and development of computer
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`hardware and software, in International Class 42.”
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`REMARKS
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`Subsequent to the publication of the above identified application, a Notice of Opposition
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`thereto was filed as of June 7, 2013. Since the filing thereof, applicant and the Opposer have
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`reached a resolution wherein the Opposer proposes to withdraw the Opposition, in return for the
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`execution of a settlement agreement and the amendment of the identification of goods by the
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`applicant.
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`Accordingly, applicant submits the present post publication amendment herein, to amend
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`the identification of goods and services, as to all classes recited in the application, to specifically
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`exclude the following:
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`"Antiviral and HIV pharmaceutical preparations and substances"
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`The amendments to the identifications for each of the classes are indicated in underlining.
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`Applicant believes that the foregoing amendment satisfies the rules for post publication
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`amendments, and requests entry and favorable consideration thereof.
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`Respectfully submitted,
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` /David A. Jackson/
`David A. Jackson
`KLAUBER & JACKSON LLC
`Bergen Four
`25 East Spring Valley Avenue,
`Suite 160
`Maywood, New Jersey 07607
`Telephone: (201) 487-5800
`Attorneys for Applicant Xigen S.A.
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`Dated: July 29, 2013
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`4
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`CERTIFICATE OF SERVICE
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`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:
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`Paul C. Llewellyn
`KAYE SCHOLER LLP
`425 Park Avenue
`New York, N.Y. 10022
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`John P. Rynnkiewicz
`KAYE SCHOLER LLP
`901 Fifteenth Street, N.W.
`Washington, D.C. 20005
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`Diane Fry Maginnis
`Counsel,
`GlaxoSmithKline
`Legal: Global Trade Marks
`Bide C.3160
`5 Moore Drive
`Research Triangle Park, N.C. 27709
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`5