Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA603027
`ESTTA Tracking number:
`05/07/2014
`
`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 ex-
`tension
`Address
`
`JPI Commerical, LLC
`05/07/2014
`
`3180 Porter Drive
`Palo Alto, CA 94304
`UNITED STATES
`
`Correspondence
`information
`
`Tiffany A. Blofield
`Attorney
`Winthrop & Weinstine, P.A.
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`UNITED STATES
`sbaird@winthrop.com, tblofield@winthrop.com, sbell@winthrop.com, trade-
`mark@winthrop.com, greyes@winthrop.com Phone:6126046684
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86036708
`05/07/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`01/07/2014
`05/07/2014
`
`Novartis AG
`CH-4002
`Basel,
`SWITZERLAND
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Anti-infectives; Anti-inflammatories; Anti-
`bacterial pharmaceuticals; Antibiotics; Antifungal preparations; Antivirals; Cardiovascular pharma-
`ceuticals; Dermatological pharmaceutical products; Inhaled pharmaceutical preparations for the treat-
`ment of respiratory diseases and disorders; Pharmaceutical preparations acting on the central
`nervous system; Pharmaceutical preparations and substances for the treatment of gastro-intestinal
`diseases; Pharmaceutical preparations for the treatment and prevention of diseases and disorders of
`the autoimmune system, the metabolic system, the musculo-skeletal system and the genitourinary
`system; pharmaceutical preparations for use in hematology and in tissue and organ transplantation;
`Pharmaceutical preparations for the treatment of eye diseases and conditions; Pharmaceutical pre-
`parations for thetreatment of heart rhythm disorders; Pharmaceutical preparations for the treatment of
`immune system related diseases and disorders; Pharmaceutical preparationsfor the treatment of kid-
`ney diseases; Pharmaceutical preparations for treating diabetes; Pharmaceutical preparations for
`treating hypertension; Pharmaceutical preparations for treating skin disorders; Pharmaceutical pre-
`parations for use indermatology; Pharmaceutical preparations for use in urology; Pharmaceutical
`products for ophthalmological use; Pharmaceutical products for the prevention and treatment of can-
`
`

`
`cer; Pharmaceutical products for the treatment of bone diseases; Pharmaceutical products for treat-
`ing respiratory diseases; Pharmaceutical products for treating respiratory diseases andasthma
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2249959
`
`06/01/1999
`
`Application Date
`
`06/21/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`XYREM
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`pharmaceutical preparation for the treatment of narcolepsy
`
`U.S. Registration
`No.
`Registration Date
`
`2423880
`
`01/23/2001
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`10/27/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/23 First Use In Commerce: 1999/02/23
`Pharmaceutical Preparation For The Treatment Of Narcolepsy
`
`U.S. Registration
`No.
`Registration Date
`
`2472156
`
`07/24/2001
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`10/27/1998
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/23 First Use In Commerce: 1999/02/23
`Pharmaceutical Preparation For The Treatment Of Narcolepsy
`
`U.S. Registration
`No.
`Registration Date
`
`2860730
`
`07/06/2004
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`10/17/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`Pharmaceutical preparations for the treatment of diseases of the central nervous
`system and a variety of conditions, symptoms, and diseases, namely, narco-
`lepsy, fibromyalgia, insomnia and [ myositis ]
`
`U.S. Registration
`No.
`Registration Date
`
`3112732
`
`07/04/2006
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`04/13/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2003/04/01 First Use In Commerce: 2004/06/21
`Drug delivery devices
`
`U.S. Registration
`No.
`
`3309255
`
`Application Date
`
`12/08/2005
`
`

`
`Registration Date
`
`10/09/2007
`
`Word Mark
`Design Mark
`
`XYREM
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`Pain relief medication; preparation forthe relief of pain; pharmaceutical prepara-
`tions acting on the central nervous system; pharmaceutical preparations for use
`in the treatment and/or management ofsleep disorders, [ chronic fatigue syn-
`drome, drug and alcohol abuse, anxiety, cerebrovascular diseases,] neurological
`disorders, parkinson's disease [, alzheimer's disease, multiple sclerosis, autism,
`depression, inflammatory disorders, irritable bowel disorder, regional ileitis, ul-
`cerative colitis, automimmune inflamatory disorders, endocrine disturbances,and
`diabetes; and pharmaceutical preparations for the purpose of tissue protection
`including protection following hypoxia/anoxia such as in stroke, organ transplant-
`ation, organ preservation, myocardial infarction or ischemia, reperfusion injury,
`and protection following radiation, progeria, or an increased level of intracranial
`pressure, e.g., due to head trauma. ]
`
`2867332
`
`Application Date
`
`04/18/2002
`
`07/27/2004
`
`Foreign Priority
`Date
`XYREM SUCCESS PROGRAM
`
`NONE
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services tophysicians regarding the safe and appro-
`priate use and distribution of medications used to treat sleep disorders; provid-
`ing medical information via telephone and in the form of written educational ma-
`terials to physicians in connection with the safe and appropriate use and distri-
`bution of medication for the treatment ofsleep disorders
`
`U.S. Registration
`No.
`Registration Date
`
`2848521
`
`06/01/2004
`
`Application Date
`
`05/28/2002
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`XYREM PATIENT SUCCESS PROGRAM
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services topatients regarding the safe and appropri-
`ate use and distribution of medicationsused to treat sleep disorders; providing
`medical information via telephone and in the form of written educational materi-
`als to patients in connection with the safe and appropriate use and distribution of
`medication for the treatment of sleep disorders
`
`2860906
`
`Application Date
`
`05/28/2002
`
`07/06/2004
`
`Foreign Priority
`Date
`XYREM SUCCESS PROGRAM FOR PHYSICIANS
`
`NONE
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services tophysicians regarding the safe and appro-
`priate use and distribution of medications used to treat sleep disorders; provid-
`ing medical information via telephone and in the form of written educational ma-
`terials to physicians in connection with the safe and appropriate use and distri-
`bution of medication for the treatment ofsleep disorders
`
`2952351
`
`Application Date
`
`07/02/2002
`
`05/17/2005
`
`Foreign Priority
`Date
`XYREM (SODIUM OXYBATE) ORAL SOLUTION CIII
`
`NONE
`
`NONE
`
`Class 005. First use: First Use: 2002/10/07 First Use In Commerce: 2002/10/07
`Pharmaceutical preparations for use in the treatment of sleep disorders
`
`U.S. Registration
`No.
`
`3162632
`
`Application Date
`
`12/08/2005
`
`

`
`Registration Date
`
`10/24/2006
`
`Word Mark
`Design Mark
`
`XYREM
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Pre-recorded videotapes and DVDs featuring medical information [ ; decorative
`magnets; and graduated rulers ]
`
`U.S. Registration
`No.
`Registration Date
`
`3162636
`
`10/24/2006
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Medical information; providing medical information; and providing health care in-
`formation by telephone and the internet
`
`U.S. Registration
`No.
`Registration Date
`
`3162635
`
`10/24/2006
`
`Word Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2003/05/00 First Use In Commerce: 2003/05/00
`Providing customized on-line web pages featuring user-defined information,
`which includes on-line web links to other web sites; providing information at the
`specific request of end-users by means of telephone or global computer net-
`works
`
`U.S. Registration
`No.
`Registration Date
`
`3162634
`
`10/24/2006
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2003/05/00 First Use In Commerce: 2003/05/00
`Providing on-line communications links which transfer the website user to other-
`local and global web pages; and on-linedocument delivery via a global com-
`puternetwork
`
`U.S. Registration
`No.
`Registration Date
`
`3162633
`
`10/24/2006
`
`Word Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 016. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`Printed materials concerning medicine; [ padfolios; and note cards ]
`
`75577530#TMSN.gif( bytes )
`75701032#TMSN.gif( bytes )
`76327130#TMSN.gif( bytes )
`78400994#TMSN.jpeg( bytes )
`78769796#TMSN.jpeg( bytes )
`76397391#TMSN.gif( bytes )
`76412893#TMSN.gif( bytes )
`76412894#TMSN.jpeg( bytes )
`76427104#TMSN.gif( bytes )
`78769619#TMSN.jpeg( bytes )
`78769631#TMSN.jpeg( bytes )
`78769629#TMSN.jpeg( bytes )
`78769626#TMSN.jpeg( bytes )
`78769623#TMSN.jpeg( bytes )
`Notice of Opposition (ZYKADIA).pdf(408470 bytes )
`
`Certificate of Service
`
`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.
`
`Signature
`Name
`Date
`
`/Tiffany A. Blofield/
`Tiffany A. Blofield
`05/07/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Ser. No.: 86/036,708
`Filed: August 13, 2013
`For the mark: ZYKADIA
`Published in the Trademark Official Gazette on January 7, 2014
`__________________________________________
`
`JPI Commercial, LLC,
`
`Opposer,
`
`v.
`
`Novartis AG Corporation,
`
`Opposition No. _________________
`
`Applicant.
`___________________________________________
`
`NOTICE OF OPPOSITION
`
`JPI Commercial, LLC (“Opposer”) believes that it will be damaged by registration of the
`
`mark shown in Application Serial No. 86/036,708 (the “Application”) in International Class 5,
`
`and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Novartis AG Corporation (“Applicant”) seeks to register ZYKADIA as a standard
`
`character trademark without any claim or limitation as to any particular font, style, design, size,
`
`or color, for “Anti-infectives; Anti-inflammatories; Antibacterial pharmaceuticals; Antibiotics;
`
`Antifungal
`
`preparations; Antivirals; Cardiovascular
`
`pharmaceuticals; Dermatological
`
`pharmaceutical products; Inhaled pharmaceutical preparations for the treatment of respiratory
`
`diseases and disorders; Pharmaceutical preparations acting on the central nervous system;
`
`Pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases;
`
`Pharmaceutical preparations for the treatment and prevention of diseases and disorders of the
`
`autoimmune system, the metabolic system, the musculo-skeletal system and the genitourinary
`
`1
`
`

`
`system; pharmaceutical preparations
`
`for use in hematology and in tissue and organ
`
`transplantation; Pharmaceutical preparations for the treatment of eye diseases and conditions;
`
`Pharmaceutical preparations for the treatment of heart rhythm disorders; Pharmaceutical
`
`preparations for the treatment of immune system related diseases and disorders; Pharmaceutical
`
`preparations for the treatment of kidney diseases; Pharmaceutical preparations for treating
`
`diabetes; Pharmaceutical preparations for treating hypertension; Pharmaceutical preparations for
`
`treating skin disorders; Pharmaceutical preparations for use in dermatology; Pharmaceutical
`
`preparations
`
`for use
`
`in urology; Pharmaceutical products
`
`for ophthalmological use;
`
`Pharmaceutical products for the prevention and treatment of cancer; Pharmaceutical products for
`
`the treatment of bone diseases; Pharmaceutical products for treating respiratory diseases;
`
`Pharmaceutical products for treating respiratory diseases and asthma” in International Class 5
`
`(“Applicant’s Mark”).
`
`2.
`
`Applicant’s Mark was published for opposition in the Trademark Official Gazette
`
`on January 7, 2014. On February 6, 2014, the Board granted Opposer’s request to extend the
`
`time to oppose the registration of Applicant’s Mark until March 8, 2014. On March 7, 2014, the
`
`Board granted Opposer’s further request to extend the time to oppose the registration of
`
`Applicant’s Mark until May 7, 2014. Thus, this Opposition is timely filed.
`
`3.
`
`Opposer is focused on improving the lives of medical patients through the
`
`development and commercialization of pharmaceutical products and services. Through its
`
`predecessors in interest, Opposer adopted, has used, and continues to use the mark XYREM® in
`
`connection with pharmaceutical preparations and drug delivery devices, among other products
`
`and services. These goods are identical to, and/or overlap with Applicant’s broadly-worded
`
`description of goods set forth in Paragraph 1.
`
`2
`
`

`
`4.
`
`5.
`
`Opposer also provides medical and healthcare information in various ways.
`
`In privity with its predecessors in interest, Opposer has adopted and has
`
`continuously used the XYREM® mark in connection with pharmaceutical preparations since at
`
`least as early as February, 1999.
`
`6.
`
`In addition to owning extensive and strong common law rights in the well-known
`
`and famous XYREM® mark, Opposer is the owner of numerous federal trademark registrations
`
`for or containing the XYREM® mark in connection with goods and services falling within a
`
`variety of International Classes.
`
`7.
`
`Opposer
`
`is
`
`the record owner of
`
`incontestable United States Trademark
`
`Registration No. 2,249,959 for the mark XYREM® in connection with “Pharmaceutical
`
`preparation for the treatment of narcolepsy,” in International Class 5, claiming a first use date at
`
`least as early as February 24, 1999. The Registration was issued on the Principal Register on
`
`June 1, 1999. The filing date and nationwide constructive use date for this Registration is June
`
`21, 1996.
`
`8.
`
`Opposer
`
`is
`
`the record owner of
`
`incontestable United States Trademark
`
`Registration No. 2,423,880 for
`
`the XYREM® (and Design) mark in connection with
`
`“Pharmaceutical preparation for the treatment of narcolepsy,” in International Class 5, claiming a
`
`first use date at least as early as February 23, 1999. The Registration was issued on the Principal
`
`Register on January 23, 2001. The filing date and nationwide constructive use date for this
`
`Registration is October 27, 1998.
`
`9.
`
`Opposer is the owner of incontestable United States Trademark Registration No.
`
`2,472,156 for the mark XYREM® (and Design) in connection with “Pharmaceutical preparation
`
`for the treatment of narcolepsy,” in International Class 5, claiming a first use date at least as
`
`3
`
`

`
`early as February 23, 1999. The Registration was issued on the Principal Register on July 24,
`
`2001. The filing date and nationwide constructive use date for this Registration is October 27,
`
`1998.
`
`10.
`
`Opposer
`
`is
`
`the record owner of
`
`incontestable United States Trademark
`
`Registration No. 2,860,730 for the mark XYREM® in connection with “Pharmaceutical
`
`preparations for the treatment of diseases of the central nervous system and a variety of
`
`conditions, symptoms, and diseases, namely, narcolepsy, fibromyalgia, and insomnia,” in
`
`International Class 5, claiming a first use date at least as early as February 24, 1999. The
`
`Registration was issued on the Principal Register on July 6, 2004. The filing date and nationwide
`
`constructive use date for this Registration is October 17, 2001.
`
`11.
`
`Opposer is the owner of incontestable United States Trademark Registration No.
`
`3,112,732 for the mark XYREM® in connection with “Drug delivery devices,” in International
`
`Class 10, claiming a first use date at least as early as June 21, 2004. The Registration was issued
`
`on the Principal Register on July 4, 2006. The filing date and nationwide constructive use date
`
`for this Registration is April 13, 2004.
`
`12.
`
`Opposer is the owner of the incontestable United States Trademark Registration
`
`No. 3,309,255 for the mark XYREM® in connection with “Pharmaceutical preparations acting
`
`on the central nervous system; pharmaceutical preparations for use in the treatment and/or
`
`management of sleep disorders, neurological disorders,” in International Class 5, claiming a first
`
`use date at least as early as February 24, 1999. The Registration was issued on the Principal
`
`Register on October 9, 2007. The filing date and nationwide constructive first use date for this
`
`Registration is December 8, 2005.
`
`4
`
`

`
`13.
`
`Opposer is the owner of the incontestable United States Trademark Registration
`
`No. 2,867,332 for the mark XYREM SUCCESS PROGRAM® in connection with “Providing
`
`telephone support services to physicians regarding the safe and appropriate use and distribution
`
`of medications used to treat sleep disorders; providing medical information via telephone and in
`
`the form of written educational materials to physicians in connection with the safe and
`
`appropriate use and distribution of medication for the treatment of sleep disorders,” in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on July 27, 2004. The filing date and
`
`nationwide constructive first use date for this Registration is April 18, 2002.
`
`14.
`
`Opposer is the owner of the incontestable United States Trademark Registration
`
`No. 2,848,521 for the mark XYREM PATIENT SUCCESS PROGRAM® in connection with
`
`“Providing telephone support services to patients regarding the safe and appropriate use and
`
`distribution of medications used to treat sleep disorders; providing medical information via
`
`telephone and in the form of written educational materials to patients in connection with the safe
`
`and appropriate use and distribution of medication for the treatment of sleep disorders” in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on June 1, 2004. The filing date and
`
`nationwide constructive first use date for this Registration is May 28, 2002.
`
`15.
`
`Opposer is the owner of the incontestable United States Trademark Registration
`
`No. 2,860,906 for the mark XYREM PHYSICIAN SUCCESS PROGRAM® in connection with
`
`“Providing telephone support services to physicians regarding the safe and appropriate use and
`
`distribution of medications used to treat sleep disorders; providing medical information via
`
`telephone and in the form of written educational materials to physicians in connection with the
`
`5
`
`

`
`safe and appropriate use and distribution of medication for the treatment of sleep disorders” in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on July 6, 2004. The filing date and
`
`nationwide constructive first use date for this Registration is May 28, 2002.
`
`16.
`
`Opposer is the owner of the incontestable United States Trademark Registration
`
`No. 2,952,351 for the mark XYREM (SODIUM OXYBATE) ORAL SOLUTION CIII® (and
`
`Design) in connection with “Pharmaceutical preparations for use in the treatment of sleep
`
`disorders” in International Class 5, claiming a first use date at least as early as October 7, 2002.
`
`The Registration was issued on the Principal Register on May 17, 2005 and is incontestable. The
`
`filing date and nationwide constructive first use date for this Registration is July 2, 2002.
`
`17.
`
`Opposer
`
`is
`
`the record owner of
`
`incontestable United States Trademark
`
`Registration No. 3,162,632 for the mark XYREM® in connection with “pre-recorded videotapes
`
`and DVDs featuring medical information,” in International Class 9, claiming a first use date at
`
`least as early as September 23, 2002. The Registration was issued on the Principal Register on
`
`October 24, 2006. The filing date and nationwide constructive use date for this Registration is
`
`December 8, 2005.
`
`18.
`
`Opposer
`
`is
`
`the record owner of
`
`incontestable United States Trademark
`
`Registration No. 3,162,636 for the mark XYREM® in connection with “Medical information;
`
`providing medical information; and providing health care information by telephone and the
`
`internet,” in International Class 44, claiming a first use date at least as early as September 23,
`
`2002. The Registration was issued on the Principal Register on October 24, 2006. The filing
`
`date and nationwide constructive use date for this Registration is December 8, 2005.
`
`6
`
`

`
`19.
`
`Opposer is the record owner of United States Trademark Registration No.
`
`3,162,635 for the mark XYREM® in connection with “Providing customized on-line web pages
`
`featuring user-defined information, which includes on-line web links to other web sites;
`
`providing information at the specific request of the end-users by means of telephone or global
`
`computer networks,” in International Class 42, claiming a first use date at least as early as May
`
`2003. The Registration was issued on the Principal Register on October 24, 2006 and is
`
`incontestable. The filing date and nationwide constructive use date for this Registration is
`
`December 8, 2005.
`
`20.
`
`Opposer is the record owner of United States Trademark Registration No.
`
`3,162,634 for the mark XYREM® in connection with “Providing on-line communications links
`
`which transfer the website user to other local and global web pages; and on-line document
`
`delivery via a global computer network,” in International Class 38, claiming a first use date at
`
`least as early as May 2003. The Registration was issued on the Principal Register on October 24,
`
`2006 and is incontestable. The filing date and nationwide constructive use date for this
`
`Registration is December 8, 2005.
`
`21.
`
`Opposer
`
`is
`
`the record owner of
`
`incontestable United States Trademark
`
`Registration No. 3,162,633 for the mark XYREM® in connection with “Printed materials
`
`concerning medicine,” in International Class 16, claiming a first use date at least as early as
`
`February 24, 1999. The Registration was issued on the Principal Register on October 24, 2006.
`
`The filing date and nationwide constructive use date for this Registration is December 8, 2005.
`
`22.
`
`Copies of Opposer’s foregoing registrations are attached hereto as Exhibit A.
`
`23.
`
`Opposer and its predecessors in interest have expended considerable time, effort
`
`and expense in promoting, advertising and popularizing the distinctive and famous XYREM®
`
`7
`
`

`
`brand name and the goods and services offered under the XYREM® mark. Those in the relevant
`
`public have come to know, rely upon and recognize the XYREM® mark as a strong indicator of
`
`the source of Opposer’s goods and services.
`
`24.
`
`Through its predecessors in interest, Opposer commenced use of its XYREM®
`
`mark in commerce over fourteen (14) years prior to the August 13, 2013 filing date of the
`
`Applications and has nationwide constructive use of the XYREM® mark dating to June 21,
`
`1996. Opposer has continuously used in commerce, from the dates set forth in the corresponding
`
`registrations, its XYREM® mark.
`
`25.
`
`The goods upon which Applicant seeks to apply its proposed ZYKADIA mark are
`
`identical and/or closely related to Opposer’s goods and services offered under its XYREM®
`
`mark, and would travel and be promoted through the same channels of trade as the goods and
`
`services offered under Opposer’s XYREM® mark.
`
`26.
`
`Applicant’s proposed ZYKADIA mark so resembles Opposer’s XYREM® mark
`
`as to be likely, when used on or in connection with the broadly-worded goods described in
`
`Paragraph 1, to cause confusion, mistake, or to deceive.
`
`27.
`
`Applicant’s proposed ZYKADIA mark is highly similar to Opposer’s XYREM®
`
`mark. Applicant’s proposed ZYKADIA mark begins with the syllable “ZY-,” which sounds
`
`identical to the first syllable in Opposer’s XYREM® mark, “XY-.” This is the first dominant
`
`syllable so it is the most significant. The similarity stimulates recall of and likely confusion with
`
`Opposer’s well-known XYREM® mark. This similarity causes Opposer’s XYREM® mark and
`
`Applicant’s ZYKADIA Mark to appear and sound confusingly similar, especially when
`
`encountered in the marketplace.
`
`8
`
`

`
`28.
`
`The likelihood of confusion that would result if Applicant’s Mark achieved
`
`registration would be particularly damaging to Opposer, and the public as a whole, because the
`
`consequence of any likelihood of confusion is potentially quite serious in the field of
`
`pharmaceuticals and medical compositions. Given the possibly dire results of any resulting
`
`confusion between the XYREM® and the proposed ZYKADIA mark, an extra measure of care
`
`should be taken to prevent any possible confusion.
`
`29.
`
`Relying on its rights in the XYREM® mark, Opposer has successfully objected to
`
`and has prevented registration of several other phonetically and visually similar proposed
`
`trademarks, including the following marks having a phonetically identical first syllable to the
`
`first syllable of Opposer’s well-known and famous XYREM® mark: (1) ZYRAB (Aventis-
`
`Pasteur), (2) XILEP (Novartis AG), (3) XYNAM (Pharmacia), (4) XYVEL (Bristol-Myers
`
`Squibb),
`
`(5) ZYDEX (Matsu North America),
`
`(6) ZIDEX (Matsu North America),
`
`(7)
`
`ZYMERYS (Eli Lilly & Co.), (8) ZYMERIZ (Eli Lilly & Co.), (9) XYFID (VioQuest
`
`Pharmaceuticals, Inc.), (10) ZYTAN (Kiel Laboratories, Inc.), (11) XINAN (Zhejiang Xinan
`
`Chemical Industrial Group Co., Ltd.), (12) XYBREX (Orthocon, Inc.), (13) XIREZ (Hawthorn
`
`Pharmaceuticals,
`
`Inc.);
`
`(14) ZYTIOCIN (West Coast Nutritional, LLC);
`
`(15) XYRELIF
`
`(Omeros Corporation); and (16) ZYRELIF (Omeros Corporation).
`
`30.
`
`Given the visual and phonetic similarities between the marks in question and the
`
`close similarity between the goods and services offered under the respective marks, those in the
`
`relevant public are likely to mistakenly believe that the goods Applicant proposed to offer in the
`
`United States under the proposed ZYKADIA mark are sponsored, endorsed or approved by
`
`Opposer, or are in some way affiliated, connected or associated with Opposer, all to the
`
`9
`
`

`
`detriment of Opposer. Registration of the Application should therefore be refused under
`
`15 U.S.C. §1052(d) and 1063.
`
`31.
`
`Opposer’s XYREM® mark is famous and was so at least as early as the claimed
`
`filing date of Applicant’s ZYKADIA Mark in the United States, namely, by August 13, 2014.
`
`Upon information and belief and in light of the fact that applicant file an intent-to-use application
`
`rather than a use-based application, XYREM® was famous prior to Applicant’s choice to use the
`
`ZYKADIA mark.
`
`32.
`
`In addition to being confusingly similar, Applicant’s proposed ZYKADIA mark
`
`is likely to dilute the distinctive quality of Opposer’s well-known and famous XYREM® mark.
`
`Registration of Applicant's ZYKADIA mark should,
`
`therefore, be refused not only under
`
`15 U.S.C. §1052(d), but also under 15 U.S.C. § 1125(c).
`
`33.
`
`Registration of the proposed ZYKADIA mark would additionally be a source of
`
`damage to Opposer as it would confer upon the Applicant various statutory presumptions to
`
`which it is not entitled in view of Opposer’s prior use and registration of the XYREM® mark.
`
`WHEREFORE, Opposer respectfully requests that the Trademark Trial and Appeal
`
`Board sustain its opposition, refuse registration of Application Serial No. 86/036,708, and grant
`
`any other relief that may be just and equitable.
`
`Date: May 7, 2014
`
`WINTHROP & WEINSTINE, P.A.
`
`By
`
`s/Tiffany A. Blofield
`
`Stephen R. Baird
`Tiffany A. Blofield
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`Tel 612.604.6400 | Fax 612.604.6800
`
`10
`
`

`
`sbaird@winthrop.com
`tblofield@winthrop.com
`
`Attorneys for Opposer JPI Commercial, LLC
`
`11
`
`

`
`In the matter of Application Ser. No.: 86/036,708
`Filed: August 13, 2013
`For the mark: ZYKADIA
`Published in the Trademark Official Gazette on January 7, 2014
`__________________________________________
`
`JPI Commercial, LLC,
`
`Opposer,
`
`v.
`
`Novartis AG Corporation,
`
`Opposition No. _________________
`
`Applicant.
`___________________________________________
`
`CERTIFICATE OF SERVICE BY FIRST CLASS MAIL
`
`Tiffany A. Blofield declares that on the 7th day of May, 2014, she mailed by United
`
`States mail, first class postage thereon prepaid, a true and correct copy of:
`
` Notice of Opposition
`
`in the above-captioned action to the last known Attorney/Correspondent listed in the United
`
`States Patent and Trademark Office TARR database, to-wit:
`
`Maury M. Tepper, III
`Tepper & Eyester, PLLC
`3724 Benson Drive
`Raleigh, N.C. 27609
`
`9053812v1
`
`s/Tiffany A. Blofield
`Tiffany A. Blofield
`
`12
`
`

`
`Exhibit A
`Exhibit A
`
`

`
`Int. CI.: 5
`
`Prior U.S. CIs.: 6, 18, 44, 46, 51, and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,249,959
`
`Registered June 1, 1999
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`XYREM
`
`ORPHAN MEDICAL,
`PORATION)
`13911 RIDGEDALE DRIVE
`MINNETONKA, MN 5.5305
`
`INC. (MINNESOTA COR·
`
`FIRST USE
`2-24-1999.
`
`2-24-1999;
`
`IN COMMERCE
`
`SN 75-123,2.52. FILED 6-21-1996.
`
`PREPARATION
`FOR: PHARMACEUTICAL
`FOR THE TREATMENT OF NARCOLEPSY,
`IN
`CLASS S (U.S. CLS. 6, 18, 44, 46, 51 AND 52).
`
`LEIGH CAROLINE CASE, EXAMINING AT·
`TORNEY
`
`

`
`Int. Ct.: 5
`
`Prior U.S. Cis.: 6, 18, 44, 46, 51, and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,423,880
`Registered Jan. 23, 2001
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ORPHAN MEDICAL, INC. (MINNESOTA CORPORA·
`TION)
`13911RIDGEDALE DRIVE
`MINNETONKA, MN 55305
`
`PHARMACEUTICAL PREPARAnON FOR
`fOR:
`THE TREATMENT OF NARCOLEI'S'Y, IN CLASS 5
`(U.S. CLS. 6, 18,44,46,51 ANI) 52).
`FIRST USE 2-23-1999j IN COMMERCE 2-23..1999.
`THE MARK IN TIlE DRAWING IS LINED FOR
`THE COLORS BLUE, YELLOW, AND GRAY. THE
`AREA TO THE LEFT OF AND SURROUNDING THE
`LETTER "X" CONsrSTS OF GRADIENTS OF TIlE
`
`COLOR YELLOW, REPRESENTED BY THE COARS·
`ER AND FfNER CROSS-HATCH LINING. THE WORD
`MARK "XYREM"
`JS LINED FOR THE COLOR
`BLUE. THE AREAS BEHIND THE WORK MARK
`"XYREM" ARE LINED FOR THE COLOR GRAY
`TO INDICATE A "DROP SHADOW." THE LINE AT
`THE BOTTOM OF THE MARK IS YELLOW, BUT
`CANNOT BE LINED AS SUCH BECAUSE OF ITS
`SLIGHT DIMENSION.
`
`SN 75-577,530, FILED 10-27-1998.
`
`JEFf DEFOIID, EXAMINING ATTORNEY
`
`

`
`Int. CI.: 5
`
`Prior U.S. CIs.: 6, 18,44,46,51, and 52zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`,
`Reg.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`N Q . 2,472,156
`United States Patent and Trademark Office
`Registered July 24,21},O1zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ORPHAN MEDICAL,
`PORATION)
`13911RlDGEDALBDRlVE
`MINNETONKA, MN 55305
`
`INC.
`
`(MINNESOTA COR·
`
`FIRSt USB 2-23-1999;IN COMMERCE 2-23-1999.
`
`SN75·70I,032, FILED 10-27-1999.
`
`FOR: PHARMAcEUTICAL PREPARATION FOR
`THE TREATMENT OF NARCOLEPSY, IN CLASS 5
`(U.S. CLS. 6, 18,44,46, 51 AND 52).
`
`BARNEYCHARLON,~GATTORNEY
`
`

`
`Int. CI.: 5
`
`Prior U.S. Cls.: 6, 18, 44, 46, 51, and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,860,730
`Registered July 6, 2004
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`XYREM
`
`ORHAN MEDICAL,
`PORATION)
`13911RIDGEDALE DRIVE, 8TE. 250
`M