Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA630442
`ESTTA Tracking number:
`10/01/2014
`
`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
`
`GALDERMA S.A.
`10/01/2014
`
`Zugerstrasse 8
`Cham, CH-6330
`SWITZERLAND
`
`Domestic Rep-
`resentative
`
`G MATHEW LOMBARD
`Attorney for Opposer
`LOMBARD & GELIEBTER LLP
`1115 BROADWAY 12 FL
`NEW YORK, NY 10010
`UNITED STATES
`mlombard@lgtrademark.com Phone:917.779,9967
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86104014
`10/01/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`06/03/2014
`10/01/2014
`
`Mariner Biomedical, Inc.
`6276 San Ignacio Avenue, Suite A
`San Jose, CA 95119
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Non-medicated skin care preparations;
`non-medicated skin care products, namely,exfoliating salt scrubs, anti-aging serums, anti-wrinkle gel,
`bath salts, facial cleansers, massage gels and oils, bodyoils and lotions, facial and body toners, bath
`soap, lip balms
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Medicated skin care preparations; medic-
`ated skin care products, namely, sun screens, skin protectant preparations, anti-itch preparations,
`anti-inflammatory preparations; dermatological pharmaceutical products; parapharmaceutical
`products for use in dermatology
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`1531542
`
`03/28/1989
`
`Application Date
`
`01/15/1988
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`GALDERMA
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`PERFUME, TOILET WATER, MAKEUP, DENTIFRICES, SOAP, NON-
`MEDICATED SKIN CREAMS, SKIN MOISTURIZERS, SKIN GELS, SKIN LO-
`TIONS, HAIR SHAMPOOS AND CONDITIONERS AND DEODORANTS
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`MEDICATED CREAMS, MOISTURIZERS AND LOTIONS FOR SKIN AND
`SCALP
`
`U.S. Registration
`No.
`Registration Date
`
`2334441
`
`03/28/2000
`
`Word Mark
`Design Mark
`
`GALDERMA
`
`Application Date
`
`05/11/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`NONE
`
`Class 005. First use: First Use: 1996/08/19 First Use In Commerce: 1996/08/19
`PHARMACEUTICAL PREPARATIONS FOR THE TREATMENT OF SKIN,
`SCALP, HAIR AND NAIL CONDITIONS,
`
`3532964
`
`Application Date
`
`02/12/2007
`
`11/18/2008
`
`Foreign Priority
`Date
`GALDERMA COMMITTED TO THE FUTURE OF DERMATOLOGY G
`
`12/18/2006
`
`

`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "GALDERMA" at the top. The phrase "Committed
`to the future of dermatology" is below the word "Galderma" and separated from
`it by a horizontal line. To the right of both of the word elements are two vertically
`stacked boxes over which a stylized letter "G" with a single underscore is super-
`imposed.
`Class 001. First use: First Use: 0 First Use In Commerce: 0
`Chemical additives for use in the manufacture of pharmaceuticals and dermato-
`logical goods
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Face, hand and body soaps; perfumery; essential oils; cosmetics; deodorants;
`hair lotions; hair shampoos; hair conditioners; dentifrices; skin care preparations,
`namely, non-medicated skin creams; skin moisturizers; skin cleansers; skin gels;
`skin lotions, acne kits comprising anti-acne preparations and moisturizers; pre-
`parations for use in relief of skin irritation; sunscreens; cosmetic preparations for
`use as a soft tissue filler andfor wrinkle correction
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical dermatological preparations and substances; full line of pharma-
`ceutical products used in connection withfacial and body aesthetic and surgery;
`medicated skin care preparations for usein dermatology; dermatological phar-
`maceutical preparations for the skin, the scalp and the hair; pharmaceutical pre-
`parations for the treatment of rosacea and acne; pharmaceutical preparations
`for useas a soft tissue filler and for wrinklecorrection
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`CD-Roms featuring pharmaceutical and medical information and electronic data-
`bases in the field of medicine
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`Receptacle in the nature of a drug delivery device, namely, a handheld applicat-
`or for delivering measured amounts of medication to the skin for the treatment of
`dermatological disorders; medical apparatus, namely, automatic fluid dispenser-
`for dispensing a liquid to treat tumors, warts, lesions, wrinkles and disordersof
`the skin; diagnostic instruments, namely, cards depicting skin hues for assess-
`ment of skin phototypes, hyperpigmentation and the effectiveness of treatment
`of skin disorders; cryosurgical apparatus for use in performing ablative surgery;
`disposable syringes; drug delivery systems; electrosurgical apparatus for use in
`desiccation and fulguration procedures; heat lamps for use in treatment of der-
`matological conditions; injection device for pharmaceuticals; injection instru-
`ments with needles; injection instrumentswithout needles; injection needles;
`lasers for medical usage; medical apparatusfor use in the treatment of dermato-
`logical conditions through the use of electromagnetic energy; medical contain-
`ers, sold empty, for administering dermatological medications; medical devices
`for the treatment of skin lesions; medical instrument, namely, a rotary calculator
`used for assessing the proper dosage of medication; medical syringes; medica-
`tion dispensers, sold empty, for applying medicine to the skin; mercury arc lamp
`units for therapeutic purposes; needle-based andneedle-free injection systems;
`needles for medical use; phototherapeutic apparatus for medical purposes;
`plastic bags for transmitting medical specimens; sprayers for applying medicine
`to the skin; surgical lamps; artificial skin for surgical purposes
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Printed matter, namely, magazines, journals, periodicals, brochures, and books
`featuring information in the field of medicine and dermatology
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`Providing on-line electronic bulletin boards for transmission of messages amon-
`gcomputer users concerning skin care; transmission of pharmaceutical informa-
`tionand medical information to others by means of telephone, telegraphic, cable,
`and satellite transmissions
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Educational services, namely, providingtraining in the pharmaceutical and med-
`ical fields; Arranging and conducting educational conferences, congresses and
`seminars; publication of magazines, books, and guides in the field of medicine
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Scientific and technological services and research relating thereto, namely,
`chemical research, biological and pharmaceutical research, design and develop-
`ment of computer software and databases
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Medical services; veterinary services; pharmacy and health consultancy; Provid-
`ing health information in the field of hygienic skin care and beauty care; provid-
`ing an on-line computer database in the field of medicine
`
`3532965
`
`Application Date
`
`02/12/2007
`
`11/18/2008
`
`Foreign Priority
`Date
`GALDERMA COMMITTED TO THE FUTURE OF DERMATOLOGY G
`
`12/18/2006
`
`The mark consists of the word "GALDERMA" at the top in dark blue. The phrase
`"Committed to the future of dermatology" is below the word Galderma in dark
`blue and separated from it by a light blue horizontal line. To the right of both of
`the word elements are two vertically stacked boxes (the top box is dark blue and
`the lower box is light blue) over which astylized letter "G" with a single under-
`score is superimposed, both of which arewhite.
`Class 001. First use: First Use: 0 First Use In Commerce: 0
`Chemical additives for use in the manufacture of pharmaceuticals and dermato-
`logical goods
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Face, hand and body soaps; perfumery; essential oils; cosmetics; deodorants;
`hair lotions; hair shampoos; hair conditioners; dentifrices; skin care preparations,
`namely, non-medicated skin creams; skin moisturizers; skin cleansers; skin gels;
`skin lotions, acne kits comprising anti-acne preparations and moisturizers; pre-
`parations for use in relief of skin irritation; sunscreens; cosmetic preparations for
`use as a soft tissue filler andfor wrinkle correction
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical dermatological preparations and substances; full line of pharma-
`ceutical products used in connection withfacial and body aesthetic and surgery;
`medicated skin care preparations for usein dermatology; dermatological phar-
`maceutical preparations for the skin, the scalp and the hair; pharmaceutical pre-
`parations for the treatment of rosacea and acne; pharmaceutical preparations
`for useas a soft tissue filler and for wrinklecorrection
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`CD-Roms featuring pharmaceutical and medical information and electronic data-
`bases in the field of medicine
`
`

`
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`Receptacle in the nature of a drug delivery device, namely, a handheld applicat-
`or for delivering measured amounts of medication to the skin for the treatment of
`dermatological disorders; medical apparatus, namely, automatic fluid dispenser-
`for dispensing a liquid to treat tumors, warts, lesions, wrinkles and disordersof
`the skin; diagnostic instruments, namely, cards depicting skin hues for assess-
`ment of skin phototypes, hyperpigmentation and the effectiveness of treatment
`of skin disorders; cryosurgical apparatus for use in performing ablative surgery;
`disposable syringes; drug delivery systems; electrosurgical apparatus for use in
`desiccation and fulguration procedures; heat lamps for use in treatment of der-
`matological conditions; injection device for pharmaceuticals; injection instru-
`ments with needles; injection instrumentswithout needles; injection needles;
`lasers for medical usage; medical apparatusfor use in the treatment of dermato-
`logical conditions through the use of electromagnetic energy; medical contain-
`ers, sold empty, for administering dermatological medications; medical devices
`for the treatment of skin lesions; medical instrument, namely, a rotary calculator
`used for assessing the proper dosage of medication; medical syringes; medica-
`tion dispensers, sold empty, for applying medicine to the skin; mercury arc lamp
`units for therapeutic purposes; needle-based andneedle-free injection systems;
`needles for medical use; phototherapeutic apparatus for medical purposes;
`plastic bags for transmitting medical specimens; sprayers for applying medicine
`to the skin; surgical lamps; artificial skin for surgical purposes
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Printed matter, namely, magazines, journals, periodicals, brochures, and books
`featuring information in the field of medicine and dermatology
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`Providing on-line electronic bulletin boards for transmission of messages amon-
`gcomputer users concerning skin care; transmission of pharmaceutical informa-
`tionand medical information to others by means of telephone, telegraphic, cable,
`and satellite transmissions
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`Educational services, namely, providingtraining in the pharmaceutical and med-
`ical fields; Arranging and conducting educational conferences, congresses and
`seminars; publication of magazines, books, and guides in the field of medicine
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Scientific and technological services and research relating thereto, namely
`chemical research, biological and pharmaceutical research, design and develop-
`ment of computer software and databases
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Medical services; veterinary services; pharmacy and health consultancy; Provid-
`ing health information in the field of hygienic skin care and beauty care; provid-
`ing an on-line computer database in the field of medicine
`
`U.S. Registration
`No.
`Registration Date
`
`3740054
`
`01/19/2010
`
`Word Mark
`
`GALDERMA
`
`Application Date
`
`08/12/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`Automatic fluid dispenser for dispensing a liquid to treat tumors, warts, lesions,
`wrinkles and disorders of the skin, sold empty; medical diagnostic devices,
`namely, cards depicting skin hues for assessment of skin phototypes, hyperpig-
`mentation and the effectiveness of treatment of skin disorders; cryosurgical ap-
`paratus for use in performing ablative surgery; disposable syringes; drug deliv-
`ery systems; electrosurgical apparatus for use in desiccation and fulguration
`procedures; heat lamps for use in treatment of dermatological conditions; injec-
`tion device for pharmaceuticals; injection instruments with needles; injection in-
`struments without needles; injection needles; lasers for medical usage; medical
`apparatus for use in the treatment of dermatological conditions through the use
`of electromagnetic energy; medical containers, sold empty, for administering
`dermatological medications; medical devices for the treatment of skin lesions;
`medical instrument, namely, a rotary calculator used for assessing the proper
`dosage of medication; medical syringes; medication dispensers, sold empty, for
`applying medicine to the skin; mercury arc lamp units for therapeutic purposes;
`needle-based and needle-free injection systems; needles for medical use; pho-
`totherapeutic apparatus for medical purposes; plastic bagsfor transmitting med-
`ical specimens; sprayers for applying medicine to the skin;surgical lamps
`
`U.S. Application
`No.
`Registration Date
`
`85957469
`
`NONE
`
`Word Mark
`Design Mark
`
`GALDERMA
`
`Application Date
`
`06/12/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "GALDERMA" written in dark blue, except for
`the letter "D" which is created by the transparent portion of a rectangle with
`theupper half in the color light blue and lower half in the color dark blue and the
`color white appearing in the mark represents outlining or transparent areas and
`is not part of the mark.
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Skin care preparations, namely, non-medicated creams, moisturizers, cleansers,
`gels and lotions; non-medicated skin cream for general skin irritations; cosmetic
`sunscreen preparations and sun block
`
`

`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical products and preparations for use in dermatology; pharmaceut-
`icalpreparations for the treatment of glabellar lines, facial wrinkles, asymmetries,
`defects and related skin disorders; biological dermal implants, namely, visco-
`supplementation solutions for filling wrinkles; medicated sunscreen
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`Medical devices, namely, phototherapeutic apparatus and dermal fillers consist-
`ing of artificial materials, namely, visco-supplementation solutions for filling
`wrinkles and skin volume
`
`Attachments
`
`75483151#TMSN.png( bytes )
`77104715#TMSN.png( bytes )
`77104716#TMSN.png( bytes )
`77802592#TMSN.png( bytes )
`85957469#TMSN.png( bytes )
`NOO.pdf(1237392 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/g mathew lombard/
`G MATHEW LOMBARD
`10/01/2014
`
`

`
`IN THE U.S. PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL & APPEAL BOARD
`
`
`
`In the matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`
`Atty Ref.: 102.0937
`
`
`GALDERMA S.A.,
`
`
`
`
`
`
`
`
`
`Opposition No. __________________
`
`
`
`
`
`
`
`
`
`Opposer,
`
`
`v.
`
`MARINER BIOMEDICAL, INC.,
`
`
`
` Applicant.
`
`
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Attn: BOX TTAB FEE
`
`
`
`
`NOTICE OF OPPOSITION
`
`GALDERMA S.A., a Swiss société anonyme, with a business address of Zugerstrasse 8,
`
`Cham, CH-6330, SWITZERLAND (hereinafter “Opposer”), believes that it will be damaged by
`
`registration of the mark shown in U.S. Trademark Application Serial No. 86104014, filed October
`
`29, 2013, by MARINER BIOMEDICAL, INC. (hereinafter “Applicant”) and, hereby opposes
`
`the same.
`
`
`
`As grounds for opposition, Opposer alleges that:
`
`1.
`
`Opposer, Galderma S.A., individually and through its related companies, is a
`
`leading global pharmaceutical company and is in the business of researching, manufacturing and
`
`selling high-quality pharmaceutical and dermatological products at the interstate and international
`
`levels.
`
`2.
`
`Opposer operates in the dermatology field.
`
`

`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`On information and belief, Applicant is a corporation organized and existing under
`
`3.
`
`the laws of the State of California and having a business address of 6276 San Ignacio Avenue,
`
`Suite A, San Jose, California 95119, USA.
`
`4.
`
`Opposer is the owner of the U.S. trademark registrations identified below:
`
`Reg. Date
`Reg. No. Filing Date
`1531542
`January 15, 1988 March 28, 1989
`
`2334441 May 11, 1998
`
`March 28, 2000
`
`3532964
`
`February 12,
`2007
`
`November 18,
`2008
`
`Galderma S.A.
`
`
`
`
`
`Goods/Services
`Owner
`Mark
`GALDERMA Galderma S.A. Perfume, toilet water, makeup,
`dentifrices, soap, non-
`medicated skin creams, skin
`moisturizers, skin gels, skin
`lotions, hair shampoos and
`conditioners and deodorants in
`Class 3; and
`medicated creams, moisturizers
`and lotions for skin and scalp in
`Class 5
`Galderma S.A. Pharmaceutical preparations for
`the treatment of skin, scalp, hair
`and nail conditions in Class 5
`Inter alia:
`Face, hand and body soaps;
`perfumery; essential oils;
`cosmetics; deodorants; hair
`lotions; hair shampoos; hair
`conditioners; dentifrices; skin
`care preparations, namely, non-
`medicated skin creams; skin
`moisturizers; skin cleansers;
`skin gels; skin lotions, acne kits
`comprising anti-acne
`preparations and moisturizers;
`preparations for use in relief of
`skin irritation; sunscreens;
`cosmetic preparations for use as
`a soft tissue filler and for
`wrinkle correction in Class 3;
`pharmaceutical dermatological
`preparations and substances;
`full line of pharmaceutical
`products used in connection
`with facial and body aesthetic
`and surgery; medicated skin
`care preparations for use in
`dermatology; dermatological
`pharmaceutical preparations for
`the skin, the scalp and the hair;
`pharmaceutical preparations for
`the treatment of rosacea and
`acne; pharmaceutical
`preparations for use as a soft
`
`
`
`
`
`Page 2 of 12 
`
`
`
`NOTICE OF OPPOSITION
`
`

`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`
`tissue filler and for wrinkle
`correction in Class 5; receptacle
`in the nature of a drug delivery
`device, namely, a handheld
`applicator for delivering
`measured amounts of
`medication to the skin for the
`treatment of dermatological
`disorders; medical apparatus,
`namely, automatic fluid
`dispenser for dispensing a
`liquid to treat tumors, warts,
`lesions, wrinkles and disorders
`of the skin; diagnostic
`instruments, namely, cards
`depicting skin hues for
`assessment of skin phototypes,
`hyperpigmentation and the
`effectiveness of treatment of
`skin disorders; cryosurgical
`apparatus for use in performing
`ablative surgery; disposable
`syringes; drug delivery
`systems; electrosurgical
`apparatus for use in desiccation
`and fulguration procedures;
`heat lamps for use in treatment
`of dermatological conditions;
`injection device for
`pharmaceuticals; injection
`instruments with needles;
`injection instruments without
`needles; injection needles;
`lasers for medical usage;
`medical apparatus for use in the
`treatment of dermatological
`conditions through the use of
`electromagnetic energy;
`medical containers, sold empty,
`for administering
`dermatological medications;
`medical devices for the
`treatment of skin lesions;
`medical instrument, namely, a
`rotary calculator used for
`assessing the proper dosage of
`medication; medical syringes;
`medication dispensers, sold
`empty, for applying medicine to
`the skin; mercury arc lamp
`units for therapeutic purposes;
`needle-based and needle-free
`injection systems; needles for
`medical use; phototherapeutic
`apparatus for medical purposes;
`
`
`
`
`Page 3 of 12 
`
`
`
`NOTICE OF OPPOSITION
`
`

`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`
`plastic bags for transmitting
`medical specimens; sprayers for
`applying medicine to the skin;
`surgical lamps; artificial skin
`for surgical purposes in Class
`10; printed matter, namely,
`magazines, journals,
`periodicals, brochures, and
`books featuring information in
`the field of medicine and
`dermatology in Class 16;
`educational services, namely,
`providing training in the
`pharmaceutical and medical
`fields; Arranging and
`conducting educational
`conferences, congresses and
`seminars; publication of
`magazines, books, and guides
`in the field of medicine in Class
`41; scientific and technological
`services and research relating
`thereto, namely, chemical
`research, biological and
`pharmaceutical research, design
`and development of computer
`software and databases in Class
`42; and
`medical services; veterinary
`services; pharmacy and health
`consultancy; providing health
`information in the field of
`hygienic skin care and beauty
`care; providing an on-line
`computer database in the field
`of medicine in Class 44
`Inter alia:
`Face, hand and body soaps;
`perfumery; essential oils;
`cosmetics; deodorants; hair
`lotions; hair shampoos; hair
`conditioners; dentifrices; skin
`care preparations, namely, non-
`medicated skin creams; skin
`moisturizers; skin cleansers;
`skin gels; skin lotions, acne kits
`comprising anti-acne
`preparations and moisturizers;
`preparations for use in relief of
`skin irritation; sunscreens;
`cosmetic preparations for use as
`a soft tissue filler and for
`wrinkle correction in Class 3;
`pharmaceutical dermatological
`preparations and substances;
`
`
`Galderma S.A.
`
`
`
`3532965
`
`February 12,
`2007
`
`November 18,
`2008
`
`
`
`Page 4 of 12 
`
`
`
`NOTICE OF OPPOSITION
`
`

`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`
`full line of pharmaceutical
`products used in connection
`with facial and body aesthetic
`and surgery; medicated skin
`care preparations for use in
`dermatology; dermatological
`pharmaceutical preparations for
`the skin, the scalp and the hair;
`pharmaceutical preparations for
`the treatment of rosacea and
`acne; pharmaceutical
`preparations for use as a soft
`tissue filler and for wrinkle
`correction in Class 5; receptacle
`in the nature of a drug delivery
`device, namely, a handheld
`applicator for delivering
`measured amounts of
`medication to the skin for the
`treatment of dermatological
`disorders; medical apparatus,
`namely, automatic fluid
`dispenser for dispensing a
`liquid to treat tumors, warts,
`lesions, wrinkles and disorders
`of the skin; diagnostic
`instruments, namely, cards
`depicting skin hues for
`assessment of skin phototypes,
`hyperpigmentation and the
`effectiveness of treatment of
`skin disorders; cryosurgical
`apparatus for use in performing
`ablative surgery; disposable
`syringes; drug delivery
`systems; electrosurgical
`apparatus for use in desiccation
`and fulguration procedures;
`heat lamps for use in treatment
`of dermatological conditions;
`injection device for
`pharmaceuticals; injection
`instruments with needles;
`injection instruments without
`needles; injection needles;
`lasers for medical usage;
`medical apparatus for use in the
`treatment of dermatological
`conditions through the use of
`electromagnetic energy;
`medical containers, sold empty,
`for administering
`dermatological medications;
`medical devices for the
`treatment of skin lesions;
`
`
`
`
`Page 5 of 12 
`
`
`
`NOTICE OF OPPOSITION
`
`

`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`
`medical instrument, namely, a
`rotary calculator used for
`assessing the proper dosage of
`medication; medical syringes;
`medication dispensers, sold
`empty, for applying medicine to
`the skin; mercury arc lamp
`units for therapeutic purposes;
`needle-based and needle-free
`injection systems; needles for
`medical use; phototherapeutic
`apparatus for medical purposes;
`plastic bags for transmitting
`medical specimens; sprayers for
`applying medicine to the skin;
`surgical lamps; artificial skin
`for surgical purposes in Class
`10; printed matter, namely,
`magazines, journals,
`periodicals, brochures, and
`books featuring information in
`the field of medicine and
`dermatology in Class 16;
`educational services, namely,
`providing training in the
`pharmaceutical and medical
`fields; Arranging and
`conducting educational
`conferences, congresses and
`seminars; publication of
`magazines, books, and guides
`in the field of medicine in Class
`41; scientific and technological
`services and research relating
`thereto, namely, chemical
`research, biological and
`pharmaceutical research, design
`and development of computer
`software and databases in Class
`42; and
`medical services; veterinary
`services; pharmacy and health
`consultancy; providing health
`information in the field of
`hygienic skin care and beauty
`care; providing an on-line
`computer database in the field
`of medicine in Class 44
`GALDERMA Galderma S.A. Automatic fluid dispenser for
`dispensing a liquid to treat
`tumors, warts, lesions, wrinkles
`and disorders of the skin, sold
`empty; medical diagnostic
`devices, namely, cards
`depicting skin hues for
`
`
`3740054 August 12, 2009
`
`January 19,
`2010
`
`
`
`Page 6 of 12 
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`
`
`NOTICE OF OPPOSITION
`
`

`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`
`assessment of skin phototypes,
`hyperpigmentation and the
`effectiveness of treatment of
`skin disorders; cryosurgical
`apparatus for use in performing
`ablative surgery; disposable
`syringes; drug delivery
`systems; electrosurgical
`apparatus for use in desiccation
`and fulguration procedures;
`heat lamps for use in treatment
`of dermatological conditions;
`injection device for
`pharmaceuticals; injection
`instruments with needles;
`injection instruments without
`needles; injection needles;
`lasers for medical usage;
`medical apparatus for use in the
`treatment of dermatological
`conditions through the use of
`electromagnetic energy;
`medical containers, sold empty,
`for administering
`dermatological medications;
`medical devices for the
`treatment of skin lesions;
`medical instrument, namely, a
`rotary calculator used for
`assessing the proper dosage of
`medication; medical syringes;
`medication dispensers, sold
`empty, for applying medicine to
`the skin; mercury arc lamp
`units for therapeutic purposes;
`needle-based and needle-free
`injection systems; needles for
`medical use; phototherapeutic
`apparatus for medical purposes;
`plastic bags for transmitting
`medical specimens; sprayers for
`applying medicine to the skin;
`surgical lamp in Class 10
`
`
`
`See EXHIBIT A.
`
`5.
`
`Opposer is also the owner of allowed Application Serial No. 85957469 for
`
`GALDERMA & Design in Classes 3, 5 and 10, filed on June 12, 2013. A Notice of Allowance
`
`for Application Serial No. 85957469 issued on July 29, 2014. See EXHIBIT B.
`
`
`
`
`
`Page 7 of 12 
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`
`
`NOTICE OF OPPOSITION
`
`

`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`Opposer was created in 1981 and has been using GALDERMA as a business name,
`
`6.
`
`trade name, trade- and service mark around the world since that time.
`
`7.
`
`Opposer has been using its mark in commerce in the United States that Congress
`
`may regulate since at least as early as 1995 and more specifically as of the late 1980s or early
`
`1990s.
`
`8.
`
`Opposer’s subsidiaries and/or related companies, Galderma Laboratories, Inc. and
`
`Galderma Laboratories, L.P. are located in Fort Worth, Texas, and are authorized to use Opposer’s
`
`trademarks – including the GALDERMA mark – in the United States.
`
`9.
`
`Opposer, directly, through related companies or through authorized licensees,
`
`maintains a web site at HTTP://WWW.GALDERMA.COM at which Opposer offers: information about
`
`its products, itself, support information and services for patients who suffer from various diseases
`
`and conditions, coupons and/or rebates for Opposer’s products, product brochures, and related
`
`information.
`
`10.
`
`On October 29, 2013, Applicant filed Applicant Serial No. 86104014, for
`
`registration on the Principal Register of the word trademark KAIDERMA for non-medicated skin
`
`care preparations; non-medicated skin care products, namely, exfoliating salt scrubs, anti-aging
`
`serums, anti-wrinkle gel, bath salts, facial cleansers, massage gels and oils, body oils and lotions,
`
`facial and body toners, bath soap, lip balms in International Class 3 and medicated skin care
`
`preparations; medicated skin care products, namely, sun screens, skin protectant preparations,
`
`anti-itch preparations, anti-inflammatory preparations; dermatological pharmaceutical products;
`
`parapharmaceutical products for use in dermatology in Class 5, based on § 1(b) intent-to-use.
`
`11.
`
`On information and belief, Applicant has not – and has never – used its alleged
`
`KAIDERMA mark as required by the Lanham Act for any product(s) or service(s) prior to
`
`
`
`
`
`Page 8 of 12 
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`
`
`NOTICE OF OPPOSITION
`
`

`
`October 29, 2013.
`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`
`12.
`
`There is no issue of priority since the filing date of Applicant’s aforementioned
`
`trademark application filing date is subsequent to both the actual filing datse of Opposer’s
`
`aforementioned registrations and application, subsequent to Opposer’s dates of first use, and
`
`Applicant’s earliest dates of constructive rights is October 29, 2013, which is subsequent to
`
`Opposer’s filing dates, dates of registration and dates of first use in commerce.
`
`13.
`
`On information and belief, Applicant did not use its alleged trademark
`
`KAIDERMA anywhere in the United States, or in commerce, prior to the above-mentioned
`
`date(s).
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`Opposer’s GALDERMA mark comprises eight (8) letters.
`
`Applicant’s mark also comprises eight (8) letters.
`
`Opposer’s GALDERMA mark contains three (3) syllables.
`
`Applicant’s mark also contains three (3) syllables.
`
`Of the eight (8) letters in each mark, six (6) are identical and fall into the same
`
`position in each mark; to wit: _A_DERMA.
`
`19.
`
`The suffixes (i.e., the final five (5) letters of each mark) are identical.
`
`20. With regard to the third letter of each mark, “I” and “L,” these letters are visually
`
`similar in that they are “tall” letters.
`
`21.
`
`The visual similarity between the letters “I” and “L” increases the similarities
`
`between each mark.
`
`22.
`
`There exists market interface between Opposer and Applicant.
`
`
`
`
`
`Page 9 of 12 
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`
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`NOTICE OF OPPOSITION
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`

`
`In the Matter of Application Serial No. 86104014
`Published in the Official Gazette of June 3, 2014
`
`On information and belief, Applicant’s products, as identified in Application Serial
`
`23.
`
`No. 86104014, are identical to, substantially identical to, related to, or similar to Opposer’s goods
`
`in both Classes 3 and 5.
`
`24.
`
`Opposer markets and sells products to treat psoriasis, eczema, rosacea and other
`
`skin diseases, disorders an