UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`am/dmd
`
`
`
`
`
`
`
`
`
`
` Mailed: February 22, 2014
`
`Opposition No. 91213644
`
`Ferring B.V.
`
`v.
`
`Horiba ABX SAS
`
`
`
` Opposer’s motion to withdraw the opposition without
`
`prejudice (filed January 28, 2014) is noted.
`
`NOTICE OF IRREGULARITY WITHDRAWN
`
` Application Serial No. 79110913, the application
`
`subject of this opposition proceeding, was transmitted to
`
`the USPTO on April 14, 2012. Pursuant to Trademark Act §
`
`68(c)(1)(C), notice was sent to the International Bureau of
`
`the World Intellectual Property Organization (“IB”) on July
`
`3, 2013, advising the IB of the possibility of an opposition
`
`filed after the expiration of 18 months from the date the
`
`application was transmitted to the USPTO. That notice
`
`appears in the file of the subject application.
`
`This opposition was commenced on November 20, 2013.
`
`Pursuant to Trademark Act § 68(c)(2), notice of the
`
`
`
`
`
`Opposition No. 91213644
`
`
`opposition was sent to the IB on November 21, 2013. On
`
`December 11, 2013, a notice of irregularity was received
`
`from the IB with respect to the notice of opposition in this
`
`case, alleging that the notice of opposition was untimely.
`
`The Board contacted the IB, pointing out what appeared
`
`to be an error on the part of the IB examiner, and requested
`
`that the irregularity be withdrawn. On February 21, 2014,
`
`the Board received confirmation from the IB that the
`
`irregularity was indeed issued in error and should be
`
`disregarded.
`
`AMENDMENT PRIOR TO COMMENCEMENT OF OPPOSITION
`
` Application Serial No. 79110913, is a request for
`
`extension of protection to the United States filed pursuant to
`
`Trademark Act § 66(a), 15 U.S.C. § 1141F (a). At publication,
`
`the identification of goods read as follows:
`
`
`
`
`
`Chemical, biological, biochemical,
`biotechnological preparations and reagents,
`for medical or veterinary purposes, intended
`for in vitro analysis or diagnosis of blood,
`urine or biological liquid samples for
`diagnosis purposes in general and for the
`treatment of diseases the markers for which
`are present in blood, urine or biological
`liquid, all these preparations and all these
`reagents for use in hematology, biochemistry,
`immunology or coagulation in International
`Class 5 and;
`
`Apparatus and instruments, for medical or
`veterinary use, designed for diagnostic in
`vitro analysis or diagnostic analysis of
`blood, urine or biological liquid samples;
`medical devices, namely, blood, urine and
`other bodily fluid analyzers, and holders,
`
`2
`
`
`
`Opposition No. 91213644
`
`
`needles and sampling tubes for use therewith,
`all these goods for use in connection with
`hematology, biochemistry, immunology or
`coagulation in International Class 10.
`
`This opposition commenced on November 20, 2013 with the
`
`filing of a notice of opposition against the registration of
`
`the mark identified in application Serial No. 79110913 for
`
`all of the goods identified in Class 5 only.1
`
`On November 14, 2013, the International Bureau (“IB”) of
`
`the World Intellectual Property Organization transmitted to
`
`the USPTO a “Restriction of Protection of Goods and Services
`
`in an International Registration” by which the USPTO was
`
`notified that as to the goods identified in Classes 5, there
`
`had been “partial cancellation”. As a consequence, the
`
`goods in Class 5 were deleted from the involved
`
`international registration.
`
`The effective date of the modification of the
`
`international registration is September 27, 2013, a date
`
`which is prior to the commencement of this opposition.
`
`Accordingly, inasmuch as the opposition was filed against
`
`the goods identified in Class 5 only, and that class was
`
`deleted from the international registration prior to the
`
`commencement of the instant opposition, the opposition is
`
`dismissed as a nullity as to class 52 and the matter will be
`
`
`1 The goods in class 10 were unopposed.
`2 The application will be forwarded for issuance in International Class 10.
`
`
`
`3
`
`
`
`Opposition No. 91213644
`
`
`referred to the Finance Division for issuance of a refund of
`
`the opposition fee.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By the Trademark Trial
`and Appeal Board
`
`
`
`4
