Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA549873
`ESTTA Tracking number:
`07/23/2013
`
`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
`Entity
`Address
`
`PSPC, Inc.
`Corporation
`4005 Dow Road
`Melbourne, FL 32934
`UNITED STATES
`
`Citizenship
`
`Florida
`
`Attorney
`information
`
`Wendy K. Marsh
`Nyemaster Goode, P.C.
`700 Walnut Street Suite 1600
`Des Moines, IA 50309
`UNITED STATES
`ptodm@nyemaster.com, wkmarsh@nyemaster.com Phone:515-645-5502
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85732399
`07/23/2013
`
`Publication date
`Opposition
`Period Ends
`
`07/23/2013
`08/22/2013
`
`Sogeval Laboratories, Inc.
`5605 N. MacArthur Blvd No. 740
`Irving, TX 75038
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Canine nutritional supplements for joint
`support in the nature of soft chews
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`PHYCOX
`Pharmaceutical preparations, namely, anti-inflammatories
`
`
`ESTTA549873
`ESTTA Tracking number:
`07/23/2013
`
`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
`Entity
`Address
`
`PSPC, Inc.
`Corporation
`4005 Dow Road
`Melbourne, FL 32934
`UNITED STATES
`
`Citizenship
`
`Florida
`
`Attorney
`information
`
`Wendy K. Marsh
`Nyemaster Goode, P.C.
`700 Walnut Street Suite 1600
`Des Moines, IA 50309
`UNITED STATES
`ptodm@nyemaster.com, wkmarsh@nyemaster.com Phone:515-645-5502
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85732399
`07/23/2013
`
`Publication date
`Opposition
`Period Ends
`
`07/23/2013
`08/22/2013
`
`Sogeval Laboratories, Inc.
`5605 N. MacArthur Blvd No. 740
`Irving, TX 75038
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Canine nutritional supplements for joint
`support in the nature of soft chews
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`Torres v. Cantine Torresella S.r.l.Fraud
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`PHYCOX
`Pharmaceutical preparations, namely, anti-inflammatories
`
`
`
`Related
`Proceedings
`
`Opposition No. 91210575 PSPC, Inc. v. Sogeval Laboratories, Inc., Civil Action
`Case No. 6:13-cv-00249-RBD-TBS, pending before the U.S. District Court for
`the M.D. Florida
`
`Attachments
`
`TRI-COX.opposition.pdf(29704 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/wendy k. marsh/
`Wendy K. Marsh
`07/23/2013
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`Opposition No:______________________
`
`
`
` In the matter of:
` Application No. 85/732,399
` Mark: TRI-COX
` Published in the Official Gazette on:
` July 23, 2013
`
`
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`
`
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`PSPC, INC.,
`
`
`Opposer,
`
`
`v.
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`SOGEVAL LABORATORIES, INC.
`
`
`Applicant.
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`
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`
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`
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`STATEMENT OF CLAIM UPON WHICH OPPOSITION IS BASED
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`
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`The grounds for opposition are as follows:
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`1.
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`Opposer, PSPC, Inc., has received registration upon the Principal Register, under
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`the provisions of the U.S. Trademark Act of 1946, as amended, of the trademark PHYCOX,
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`Registration No. 3,294,575, September 18, 2007, for pharmaceutical preparations, namely, anti-
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`inflammatories, in International Class 5. A copy of this registration is attached as Exhibit 1. This
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`registration was registered on a date prior the date of filing of Applicant's application, and prior
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`to any date of first use Applicant may claim.
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`
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`2.
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`Opposer's Registration No. 3,294,575 is prima facie evidence of the validity
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`thereof and Opposer's ownership and exclusive right to use this mark in commerce on the goods
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`specified in the registration, and is constructive notice of Opposer's ownership thereof. Said
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`registered mark of Opposer is incontestable.
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`
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`1
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`3.
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`Opposer and its predecessor-in-interest have for many years, and Opposer is now,
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`using the PHYCOX mark depicted in U.S. Reg. No. 3,294,575 in connection with the sale of
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`veterinary anti-inflammatories. Said use has been valid and continuous since the date of first use
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`and has not been abandoned. Said mark of Opposer is symbolic of extensive goodwill and
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`consumer recognition built up by Opposer through substantial amounts of time and effort in
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`advertising and promotion, and is an asset of Opposer.
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`4.
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`Since 2007, Opposer's sales revenue for anti-inflammatories sold under the
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`PHYCOX mark has been substantial.
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`5.
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`Opposer's PHYCOX branded anti-inflammatories have been widely advertised
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`throughout the United States since 2007 and have been sold through numerous veterinary
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`distributors and retailers nationwide, including 1-800-PetMeds, Amazon.com, EntirelyPets.com,
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`DrsFosterSmith.com, HealthyPets.com, VetRXDirect.com, JeffersPet.com, and VetDepot.com.
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`
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`6.
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`As a result of Opposer's extensive advertisement, marketing and promotion, the
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`PHYCOX brand has become exceedingly popular with pet owners and in the veterinary industry.
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`Given the volume of sales, extensive advertisement and popularity of Opposer's products bearing
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`the PHYCOX mark, Opposer's mark has become famous, well-known and recognized as a
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`distinctive symbol of Opposer's goodwill.
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`7.
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`Opposer's PHYCOX mark became famous, well-known and recognized long prior
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`to the filing date of the opposed application to register Applicant's mark.
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`
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`8.
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`Opposer also has common law rights in the PHYCOX mark that it relies upon in
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`its opposition to the opposed application.
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`9.
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`Like the registration of the PHYCOX mark, Applicant has requested registration
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`upon the Principal Register of the mark TRI-COX as an anti-inflammatory. Specifically, the
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`2
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`
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`application states the TRI-COX registration is for the following goods and services: canine
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`nutritional supplements for joint support in the nature of soft chews in International Class 5.
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`According to Applicant's advertising, Applicant's supplements for joint care are used to reduce
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`inflammation in canine joints (Exhibit 2).
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`
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`COUNT 1
`Likelihood of Confusion
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`Opposer incorporates by reference the allegations contained in paragraphs 1-9.
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`10.
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`11.
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`Applicant's TRI-COX mark is substantially similar in appearance, sound, and
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`connotation to Opposer's PHYCOX mark and engenders the same commercial impression.
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`Accordingly, the purchasing public is likely to falsely associate Applicant's products with
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`Opposer, or will erroneously believe that such products are sponsored, licensed, or otherwise
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`authorized by Opposer, to the harm and damage to the goodwill and reputation of Opposer. This
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`likelihood of harm and damage is increased where, as here, Opposer has no control over the
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`quality of Applicant's products and commercial activities in selling and marketing its TRI-COX
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`branded products.
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`12.
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`The products identified by Applicant's TRI-COX mark and Opposer's PHYCOX
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`mark are similar, if not identical.
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`13.
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`Application Serial No. 85/732,399 for the mark TRI-COX for canine nutritional
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`supplements for joint support in the nature of soft chews so closely resembles Opposer's
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`PHYCOX mark for pharmaceutical preparations, namely, anti-inflammatories, as to be likely to
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`cause confusion, or to cause mistake, or to deceive.
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`3
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`14.
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`Registration of the mark shown in Application Serial No. 85/732,399 will result in
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`damage to Opposer under the provisions of Section 2(d) of the U.S. Trademark Act, 15 U.S.C. §
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`1052(d) pursuant to the allegations stated above.
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`
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`COUNT II
`Fraudulent Procurement
`
`Opposer incorporates by reference the allegations contained in paragraphs 1-14.
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`15.
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`16.
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`On January 16, 2013, the Trademark Examining Attorney issued an office action
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`which included, in part, a requirement for Applicant to, "specify whether the wording 'TRI-COX'
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`has any significance in the medical or veterinary trade or industry or as applied to the goods
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`described in the application, or if such wording is a 'term of art' within [A]pplicant's industry." A
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`copy of this 1/16/13 office action is attached as Exhibit 3.
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`
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`17.
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`In its response dated May 29, 2013 (attached as Exhibit 4), Applicant represented
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`the following to the PTO:
`
`With the exception of functioning as Applicant's trademark, the wording TRI-COX
`neither has significance in the medical or veterinary trade or industry nor as applied to
`the goods described in the application. The wording TRI-COX is also not a term of art
`within Applicant's industry.
`
` copy of Applicant's 5/29/13 response is attached as Exhibit 4.
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`18.
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`Shortly after the filing of this response, Applicant's TRI-COX application was
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` A
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`approved for publication.
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`19.
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`On February 19, 2013, Opposer filed a lawsuit in the Middle District of Florida
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`court against Applicant (PSPC, Inc. v. Sogeval Laboratories, Inc. Civil Action No. 6:13-cv-
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`00249-RBD-TBS) involving the issue of whether Applicant's past, present, and intended use of
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`
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`4
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`
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`the designation "TRICOX" infringes Opposer's rights in its PHYCOX trademark registration. A
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`copy of Opposer's Complaint in the civil action is attached as Exhibit 5.
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`20.
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`On April 23, 2013, Applicant filed an answer and counterclaims to the complaint
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`in the lawsuit. A copy of Applicant's answer is attached as Exhibit 6. As part of its answer,
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`Applicant included several affirmative defenses to Opposer's trademark infringement claims
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`relating to its PHYCOX trademark. In particular, Opposer's Thirteenth Affirmative Defense
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`alleges that, "The wording COX is a generic designation which is incapable of distinguishing the
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`goods of PSPC from those of others." (Exh. 6, p. 13). Further, Opposer's Fourteenth
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`Affirmative Defense alleges that, "The wording COX is descriptive and is incapable of
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`distinguishing the goods of PSPC from those of others." (Exh. 6, p. 13).
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`21.
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`The statements made by Applicant in its affirmative defenses in the lawsuit
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`directly contradict the representations Applicant made to the PTO during the prosecution of its
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`TRI-COX trademark application. More particularly, Applicant's representation to the PTO that
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`the term "COX" as part of "TRI-COX" has no meaning in the relevant industry directly
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`contradicts its previously made statement in the lawsuit that the term "COX" as part of
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`"PHYCOX" is at least merely descriptive if not entirely generic in the relevant industry for the
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`parties' goods.
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`22.
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`Applicant's statements made to the PTO on April 25, 2013 in direct contradiction
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`to those previously made by Applicant in the parties' lawsuit were made with the specific intent
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`to deceive the PTO in the procurement of its trademark registration. Accordingly, Application
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`Serial No. 85/732,399 should be refused registration in its entirety.
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`5
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`COUNT III
`Trademark Dilution
`
`Opposer incorporates by reference the allegations contained in paragraphs 1-22.
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`23.
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`24.
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`Applicant's intended use of the mark shown in Application No. 85/732,399 is
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`
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`likely to dilute Opposer's PHYCOX mark.
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`25.
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`Registration of Applicant's mark will lessen the capacity of Opposer's famous and
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`well-known mark to identify and distinguish its goods.
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`26.
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`Registration of the mark shown in Application Serial No. 85/732,399 will result in
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`damage to Opposer under the provisions of Section 43(c) of the U.S. Trademark Act, pursuant to
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`the allegations stated above.
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`WHEREFORE, Opposer requests that the registration sought by Applicant in
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`
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`Application Serial No. 85/732,399 be refused and that this opposition be sustained.
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`Respectfully submitted,
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`__/s/ Wendy K. Marsh_______________________
`
`Wendy K. Marsh
`Glenn Johnson
`NYEMASTER GOODE, P.C.
`700 Walnut Street, Suite 1600
`Des Moines, Iowa 50309
`Telephone: (515) 645-5502
`Facsimile: (515) 283-8045
`Email: wkmarsh@nyemaster.com
`
`ATTORNEYS FOR OPPOSER
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`6
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that a copy of the foregoing Notice of Opposition was served on this 23rd
`day of July 2013, by overnight courier, postage prepaid, addressed to Applicant's attorney of
`record Daniel R. Frijouf, Frijouf, Rust & Pyle, P.A., 201 E. Davis Blvd, Tampa, Florida 33606-
`3728.
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`/s/ Wendy K. Marsh___________________
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`7
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