UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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` Mailed: November 22, 2013
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`Opposition No. 91213644
`Serial No. 79110913
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`LESLIE BERTAGNOLLI
`BAKER & MCKENZIE LLP
`300 EAST RANDOLPH STREET, SUITE 5000
`CHICAGO, IL 60601 UNITED STATES
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`Ferring B.V.
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`v.
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`Horiba ABX SAS
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`KATHRYN E GARIPAY
`OLSON & CEPURITIS LTD
`20 NORTH WACKER DRIVE, 36TH FLOOR
`CHICAGO, IL 60606 UNITED STATES
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`Millicent Canady, Paralegal Specialist:
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` A
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` notice of opposition to the registration sought by the above-
`identified application has been filed. A service copy of the notice of
`opposition was forwarded to applicant (defendant) by the opposer
`(plaintiff). An electronic version of the notice of opposition is
`viewable in the electronic file for this proceeding via the Board's
`TTABVUE system: http://ttabvue.uspto.gov/ttabvue/.
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`Proceedings will be conducted in accordance with the Trademark Rules of
`Practice, set forth in Title 37, part 2, of the Code of Federal
`Regulations ("Trademark Rules"). These rules may be viewed at the
`USPTO's trademarks page: http://www.uspto.gov/trademarks/index.jsp. The Board's
`main webpage (http://www.uspto.gov/trademarks/process/appeal/index.jsp) includes
`information on amendments to the Trademark Rules applicable to Board
`proceedings, on Alternative Dispute Resolution (ADR), Frequently Asked
`Questions about Board proceedings, and a web link to the Board's manual
`of procedure (the TBMP).
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`Plaintiff must notify the Board when service has been ineffective,
`within 10 days of the date of receipt of a returned service copy or the
`date on which plaintiff learns that service has been ineffective.
`Plaintiff has no subsequent duty to investigate the defendant's
`whereabouts, but if plaintiff by its own voluntary investigation or
`through any other means discovers a newer correspondence address for the
`defendant, then such address must be provided to the Board. Likewise,
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`Opposition No. 91213644
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`if by voluntary investigation or other means the plaintiff discovers
`information indicating that a different party may have an interest in
`defending the case, such information must be provided to the Board. The
`Board will then effect service, by publication in the Official Gazette
`if necessary. See Trademark Rule 2.118. In circumstances involving
`ineffective service or return of defendant's copy of the Board's
`institution order, the Board may issue an order noting the proper
`defendant and address to be used for serving that party.
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`Defendant's ANSWER IS DUE FORTY DAYS after the mailing date of this
`order. (See Patent and Trademark Rule 1.7 for expiration of this or any
`deadline falling on a Saturday, Sunday or federal holiday.) Other
`deadlines the parties must docket or calendar are either set forth below
`(if you are reading a mailed paper copy of this order) or are included
`in the electronic copy of this institution order viewable in the Board's
`TTABVUE system at the following web address: http://ttabvue.uspto.gov/ttabvue/.
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`Defendant's answer and any other filing made by any party must include
`proof of service. See Trademark Rule 2.119. If they agree to, the
`parties may utilize electronic means, e.g., e-mail or fax, during the
`proceeding for forwarding of service copies. See Trademark Rule
`2.119(b)(6).
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`The parties also are referred in particular to Trademark Rule 2.126,
`which pertains to the form of submissions. Paper submissions, including
`but not limited to exhibits and transcripts of depositions, not filed in
`accordance with Trademark Rule 2.126 may not be given consideration or
`entered into the case file.
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`1/1/2014
`1/31/2014
`1/31/2014
`3/2/2014
`6/30/2014
`7/30/2014
`9/13/2014
`10/28/2014
`11/12/2014
`12/27/2014
`1/11/2015
`2/10/2015
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`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures
`Plaintiff's 15-day Rebuttal Period Ends
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`As noted in the schedule of dates for this case, the parties are
`required to have a conference to discuss: (1) the nature of and basis
`for their respective claims and defenses, (2) the possibility of
`settling the case or at least narrowing the scope of claims or defenses,
`and (3) arrangements relating to disclosures, discovery and introduction
`of evidence at trial, should the parties not agree to settle the case.
`See Trademark Rule 2.120(a)(2). Discussion of the first two of these
`three subjects should include a discussion of whether the parties wish
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`to seek mediation, arbitration or some other means for resolving their
`dispute. Discussion of the third subject should include a discussion of
`whether the Board's Accelerated Case Resolution (ACR) process may be a
`more efficient and economical means of trying the involved claims and
`defenses. Information on the ACR process is available at the Board's
`main webpage. Finally, if the parties choose to proceed with the
`disclosure, discovery and trial procedures that govern this case and
`which are set out in the Trademark Rules and Federal Rules of Civil
`Procedure, then they must discuss whether to alter or amend any such
`procedures, and whether to alter or amend the Standard Protective Order
`(further discussed below). Discussion of alterations or amendments of
`otherwise prescribed procedures can include discussion of limitations on
`disclosures or discovery, willingness to enter into stipulations of
`fact, and willingness to enter into stipulations regarding more
`efficient options for introducing at trial information or material
`obtained through disclosures or discovery.
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`The parties are required to conference in person, by telephone, or by
`any other means on which they may agree. A Board interlocutory attorney
`or administrative trademark judge will participate in the conference,
`upon request of any party, provided that such participation is requested
`no later than ten (10) days prior to the deadline for the conference.
`See Trademark Rule 2.120(a)(2). The request for Board participation
`must be made through the Electronic System for Trademark Trials and
`Appeals (ESTTA) or by telephone call to the interlocutory attorney
`assigned to the case, whose name can be found by referencing the TTABVUE
`record for this case at http://ttabvue.uspto.gov/ttabvue/. The parties should
`contact the assigned interlocutory attorney or file a request for Board
`participation through ESTTA only after the parties have agreed on
`possible dates and times for their conference. Subsequent participation
`of a Board attorney or judge in the conference will be by telephone and
`the parties shall place the call at the agreed date and time, in the
`absence of other arrangements made with the assigned interlocutory
`attorney.
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`The Board's Standard Protective Order is applicable to this case, but
`the parties may agree to supplement that standard order or substitute a
`protective agreement of their choosing, subject to approval by the
`Board. The standard order is available for viewing at:
`http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp. Any party
`without access to the web may request a hard copy of the standard order
`from the Board. The standard order does not automatically protect a
`party's confidential information and its provisions must be utilized as
`needed by the parties. See Trademark Rule 2.116(g).
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`Information about the discovery phase of the Board proceeding is
`available in chapter 400 of the TBMP. By virtue of amendments to the
`Trademark Rules effective November 1, 2007, the initial disclosures and
`expert disclosures scheduled during the discovery phase are required
`only in cases commenced on or after that date. The TBMP has not yet
`been amended to include information on these disclosures and the parties
`are referred to the August 1, 2007 Notice of Final Rulemaking (72 Fed.
`Reg. 42242) posted on the Board's webpage. The deadlines for pretrial
`disclosures included in the trial phase of the schedule for this case
`also resulted from the referenced amendments to the Trademark Rules, and
`also are discussed in the Notice of Final Rulemaking.
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`The parties must note that the Board allows them to utilize telephone
`conferences to discuss or resolve a wide range of interlocutory matters
`that may arise during this case. In addition, the assigned
`interlocutory attorney has discretion to require the parties to
`participate in a telephone conference to resolve matters of concern to
`the Board. See TBMP § 502.06(a) (2d ed. rev. 2004).
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`The TBMP includes information on the introduction of evidence during the
`trial phase of the case, including by notice of reliance and by taking
`of testimony from witnesses. See TBMP §§ 703 and 704. Any notice of
`reliance must be filed during the filing party's assigned testimony
`period, with a copy served on all other parties. Any testimony of a
`witness must be both noticed and taken during the party's testimony
`period. A party that has taken testimony must serve on any adverse
`party a copy of the transcript of such testimony, together with copies
`of any exhibits introduced during the testimony, within thirty (30) days
`after the completion of the testimony deposition. See Trademark Rule
`2.125.
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`Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
`(b). An oral hearing after briefing is not required but will be
`scheduled upon request of any party, as provided by Trademark Rule
`2.129.
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`If the parties to this proceeding are (or during the pendency of this
`proceeding become) parties in another Board proceeding or a civil action
`involving related marks or other issues of law or fact which overlap
`with this case, they shall notify the Board immediately, so that the
`Board can consider whether consolidation or suspension of proceedings is
`appropriate.
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`ESTTA NOTE: For faster handling of all papers the parties need to file with
`the Board, the Board strongly encourages use of electronic filing through the
`Electronic System for Trademark Trials and Appeals (ESTTA). Various
`electronic filing forms, some of which may be used as is, and others which may
`require attachments, are available at http://estta.uspto.gov.
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