Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA632629
`ESTTA Tracking number:
`10/14/2014
`
`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
`
`Takeda GmbH
`10/11/2014
`
`Byk-Gulden-Str. 2
`Konstanz, 78467
`GERMANY
`
`Attorney informa-
`tion
`
`Darren W. Saunders
`Manatt Phelps & Phillips LLP
`Seven Times Square - 21st Floor
`New York, NY 10036
`UNITED STATES
`dsaunders@manatt.com, trademarksny@manatt.com, jbernard@manatt.com
`Phone:212-790-4600
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86083090
`10/14/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`08/12/2014
`10/11/2014
`
`Infinity Pharmaceuticals, Inc.
`780 Memorial Drive
`Cambridge, MA 02139
`UNITED STATES
`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: pharmaceutical preparations for the dia-
`gnosis and treatment of cancer and inflammatory diseases and disorders
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: medical and scientific research, namely,
`conducting of clinical studies and trials of pharmaceuticals; providing medical and scientific research
`information inthe field of clinical trials
`Class 044. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: online services, namely, providing a web-
`site featuring information regarding cancer and inflammatory disease treatments; providing informa-
`tion regarding pharmaceutical preparations and medical disorders
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`
`ESTTA632629
`ESTTA Tracking number:
`10/14/2014
`
`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
`
`Takeda GmbH
`10/11/2014
`
`Byk-Gulden-Str. 2
`Konstanz, 78467
`GERMANY
`
`Attorney informa-
`tion
`
`Darren W. Saunders
`Manatt Phelps & Phillips LLP
`Seven Times Square - 21st Floor
`New York, NY 10036
`UNITED STATES
`dsaunders@manatt.com, trademarksny@manatt.com, jbernard@manatt.com
`Phone:212-790-4600
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86083090
`10/14/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`08/12/2014
`10/11/2014
`
`Infinity Pharmaceuticals, Inc.
`780 Memorial Drive
`Cambridge, MA 02139
`UNITED STATES
`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: pharmaceutical preparations for the dia-
`gnosis and treatment of cancer and inflammatory diseases and disorders
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: medical and scientific research, namely,
`conducting of clinical studies and trials of pharmaceuticals; providing medical and scientific research
`information inthe field of clinical trials
`Class 044. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: online services, namely, providing a web-
`site featuring information regarding cancer and inflammatory disease treatments; providing informa-
`tion regarding pharmaceutical preparations and medical disorders
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`4016771
`
`08/23/2011
`
`Word Mark
`Design Mark
`
`NONE
`
`Application Date
`
`04/26/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of a stylized triangle in the colors yellow, blue, and gray.
`
`Class 005. First use: First Use: 2011/05/23 First Use In Commerce: 2011/05/23
`Pharmaceutical preparations for the treatment of respiratory diseases; anti-
`inflammatory agents
`
`Attachments
`
`85023044#TMSN.png( bytes )
`Takeda vs Infinity Pharmaceuticals Notice of Opposition.pdf(2690957 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
`
`/Darren W. Saunders/
`Darren W. Saunders
`10/14/2014
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD zyxwvutsrqponmlkjihgfedcbaZYXWUTSRPONMLKJIHGFEDCBA
`
`In re Application No. 86/083,090
`
`Takeda GmbH,
`
`Opposer,
`
`v.
`
`Infinity Pharmaceuticals, Inc.,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer Takeda GmbH believes that it will be damaged by the registration of the design
`
`subject of U.S. Trademark Application Serial Number 86/083,090 and hereby opposes same
`
`under Section 13 of the Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. § 1063. As grounds
`
`for its opposition, Opposer, by its attorneys, Manatt, Phelps & Phillips, LLP, alleges as follows:
`
`1.
`
`2.
`
`Opposer is an international producer and seller of pharmaceutical products.
`
`Opposer has used a distinctive design comprised of three elements to form a
`
`stylized, triangular shaped design with curved sides, colored yellow, blue and gray, (the "Takeda
`
`Design") in connection with a pharmaceutical preparation in United States commerce since 2011
`
`2011.
`
`3.
`
`Opposer owns U.S. Trademark Registration No. 4,016,771 for the Takeda Design
`
`on the Principal Register and which covers, "pharmaceutical preparations for the treatment of
`
`respiratory diseases; anti-inflammatory agents" in International Class 5 (the "Registration"). The
`
`Registration is in full force and effect. A copy of the Registration is attached hereto as Exhibit A.
`
`
`
`4.
`
`On October 4, 2013, applicant Infinity Pharmaceuticals, Inc. ("Applicant")
`
`applied to register a design comprised of three elements with curved sides that form a hexagonal
`
`design with a triangle in the center, colored yellow, blue and gray under Section 1(b) of the
`
`Lanham Act in International Class 5 for, "pharmaceutical preparations for the diagnosis and
`
`treatment of cancer and inflammatory diseases and disorders". International Class 42 for
`
`"medical and scientific research, namely, conducting of clinical studies and trials of
`
`pharmaceuticals; providing medical and scientific research information in the field of clinical
`
`trials", and International Class 44, "online services, namely, providing a website featuring
`
`information regarding cancer and inflammatory disease treatments; providing information
`
`regarding pharmaceutical preparations and medical disorders" (the "Application"). An image of
`
`Applicant's design in the Application is attached as Exhibit B.
`
`5.
`
`Applicant's mark is likely, when applied to the goods and used for the services
`
`listed in the Application, to cause confusion, mistake or deception, and cause the public to
`
`believe that the goods/services offered under Applicant's mark emanate from or are otherwise
`
`sponsored by or endorsed by Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C.
`
`§ 1052(d).
`
`6.
`
`Upon information and belief, Opposer has priority of use of the Takeda design as
`
`against any bona fide use by Applicant of its design in the Application.
`
`7.
`
`By reason of the foregoing, Opposer will be damaged by issuance of a registration
`
`for the design in the Application.
`
`2
`
`
`
`WHEREFORE, Opposer prays that its opposition be sustained and that the registration of
`
`the design in the Application be denied.
`
`Dated: New York, New York
`October 14, 2014
`
`Respectfully submitted,
`
`MANATT, PHELPS & PHILLIPS, LLP
`
`Bv: /s/ Darren W. Saunders
`Darren W. Saunders
`7 Times Square
`New York, New York 10036
`Tel: (212) 790-4500
`Fax: (212) 790-4545
`dsaunders@manatt. com yutsrponmkhfedcbaTOHGA
`
`Attorneys for Opposer Take da GmbH
`
`3
`
`
`
`CERTIFICATE OF SERVICE zyxwvutsrqponmlkjihgfedcbaZYXWUTSRPONMLKJIHGFEDCBA
`
`I hereby certify that a copy of the foregoing Notice of Opposition was served by First
`
`Class Mail upon counsel of record for Applicant, Infinity Pharmaceuticals, Inc., Michael
`
`Bevilacqua, Esq., Wilmer Cutler Pickering Hale and Dorr, LLP, 60 State Street, Boston,
`
`Massachusetts 02109 on this date, October 14, 2014.
`
`/s/Janice E. Bernard
`Janice E. Bernard
`
`_
`
`4
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`states of amer, yutsrponmkhfedcbaTOHGA
`
`mutch jfetatetf intent nnb tKrabcmnrlt UDWcc
`
`Reg. No. 4,016,771 zyxwvutsrqponmlkjihgfedcbaZYXWUTSRPONMLKJIHGFEDCBA
`NYCOMED GMBH (FED REP GERMANY CORPORATION)
`UYK-GULDliN-Srn 2
`Registered Aug. 23,2011 78467 KONSTANZ, FED REP CJERMANY
`Int. CI.: 5
`
`FOR; PHARMACEUTICAL PREPARATIONS FOR THE TREATMENT OF RESPIRATORY
`DISEASES; ANTI-INFLAMMATORY AGENTS, IN CLASS 5 (U.S. CLS. 6,18, 44, 46, 51 AND
`52).
`
`FIRST USE 5-23-201 i; IN COMMERCE 5-23-2011.
`
`THE MARK CONSISTS OF A STYLIZED TRIANOLT. IN THE COLORS YELLOW, BLUE,
`AND GRAY,
`
`THE COLOR(S) YELLOW, BLUE, AND GRAY IS/ARE CLAIMRD AS A FEATURE OF THE
`MARK.
`
`SN 85-023,044, FILED 4-26-2010.
`
`KATHEIUNli M. DUBRAY, EXAMINING ATTORNEY
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`Dlftdof oflk IMJM SUIfi Pttcni KKl ThNkiwrttOITke
`
`
`
`EXHIBIT B
`EXHIBIT B
`
`
`
`I ASSIGK Status I TI AO Sf.Kus utroneTSE
`TSDR
`Browser fo
`I ( Use the "Back" button of the Internet wvutsrponmlkjihgfedcbaXWVUTSRPONMLKIHGFEDCBA
`return to TESS) utsronkhfecbaUIB
`
`y
`
`Goods and
`Services
`
`10 005. US 006 018 044 046 051 052. G & S: pharmaceutical preparations for the diagnosis
`and treatment of cancer and inflammatory diseases and disorders
`
`IC 042. US 100 101. G & S: medical and scientific research, namely, conducting of clinical
`studies and trials of pharmaceuticals; providing medical and scientific research information in
`the field of clinical trials
`
`IC 044. US 100 101. G & S; online services, namely, providing a website featuring information
`regarding cancer and inflammatory disease treatments; providing information regarding
`pharmaceutical preparations and medical disorders
`
`(2) DESIGN ONLY
`
`26.05.02 - Plain single line triangles; Triangles, plain single line
`26.15.28 - Miscellaneous designs with overall polygon shape; Polygonal shapes (miscellaneous
`overall shape)
`. .
`x .
`29.06.03 - Blue (multiple colors used on a portion of the goods)
`29.06,08 - Yellow or gold (Multiple colors used on a portion of the goods)
`
`86083090
`October 4, 2013
`IB
`
`IB
`
`August 12,2014
`
`1215522
`
`Mark Drawing
`Code
`Design Search
`Code
`
`Serial Number
`Filing Date
`Current Basis
`Original Filing
`Basis
`Published for
`Opposition
`International
`Registration
`Number
`Owner
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:797td9.3.1
`
`10/7/2014 yrnmedcbaSC
`
`Scanned by CamScanner
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