Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA637835
`ESTTA Tracking number:
`11/10/2014
`
`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
`
`G. D. Searle & Co.
`11/09/2014
`
`235 East 42nd Street
`New York, NY 10017
`UNITED STATES
`
`Correspondence
`information
`
`Paul C. Llewellyn
`Attorney of record
`Kaye Scholer LLP
`250 West 55th Street
`New York, NY 10019-9710
`UNITED STATES
`paul.llewellyn@kayescholer.com, john.rynkiewicz@kayescholer.com, tmdocket-
`ing@kayescholer.com Phone:212-836-7828
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`85959221
`11/10/2014
`
`NONE
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`
`05/13/2014
`11/09/2014
`
`NONE
`
`GW Pharma Limited
`Porton Down Science Park
`Salisbury, SP4OJR
`UNITED KINGDOM
`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 and veterinary preparations
`and substances for the treatment of epilepsy, convulsions, seizures, pain, multiple sclerosis, neuro-
`pathic pain, spinal cord injury, bladder disfunction, peripheral neuropathy, cancer pain, peri-operative
`pain, rheumatoid arthritis, inflammatory bowel disease, ulcerative colitis, neurogenic symptoms,
`psychotic disorders, diseases of the central nervous system, stroke and head injury, motion sickness
`and chemically induced sickness, spasticity, oncology, cancer symptoms, psychiatric illnesses,
`neurodegenerative diseases, metabolic disorders, obesity, obesity associated with type II diabetes,
`bulimia, schizophrenia, crohns disease, alzheimers, bone disorders, drug, alcohol and nicotine abuse
`and inflammatory disorders; pharmaceutical preparations and substances for the treatment of pediat-
`ric epilepsy; pharmaceutical and veterinary preparations and substances for thetreatment of Dravet
`syndrome, hypoxic-ischaemic encephalopathy, Lennox-Gastaut syndrome (LGS), intractable child-
`hood epilepsy with generalized tonic-clonic seizures (ICE-GTC), generalized epilepsy with febrile
`seizures plus (GEFS+), dup 15, and Doose syndrome; herbs for medicinal purposes; medicinal
`
`

`
`herbs; medicinal oils; medicinal infusions for the treatment of epilepsy, convulsions, seizures, pain,
`multiple sclerosis, neuropathic pain, spinal cord injury, bladder disfunction, peripheral neuropathy,
`cancer pain, peri-operative pain, rheumatoid arthritis, inflammatory bowel disease, ulcerative colitis,
`neurogenic symptoms, psychotic disorders, diseases of the central nervous system, stroke and head
`injury, motion sickness and chemically induced sickness, spasticity, oncology, cancer symptoms, psy-
`chiatric illnesses, neurodegenerative diseases, metabolic disorders, obesity, obesity associated with
`type II diabetes, bulimia, schizophrenia, crohns disease, alzheimers, bone disorders, hypoxic-
`ischaemic encephalopathy, drug, alcohol and nicotine abuse and inflammatory disorders; pure ex-
`tracts of medicinal plants and herbs used for the treatment ofepilepsy, convulsions, seizures, pain,
`multiple sclerosis, neuropathic pain, spinal cord injury, bladder disfunction, peripheral neuropathy,
`cancer pain, peri-operative pain, rheumatoid arthritis, inflammatory bowel disease, ulcerative colitis,
`neurogenic symptoms, psychotic disorders, diseases of the central nervous system, stroke and head
`injury, motion sickness and chemically induced sickness,spasticity, oncology, cancer symptoms, psy-
`chiatric illnesses, neurodegenerativediseases, metabolic disorders, obesity,obesity associated with
`type II diabetes, bulimia, schizophrenia, crohns disease, alzheimers, hypoxic-ischaemic encephalo-
`pathy, bone disorders, drug, alcohol and nicotine abuse and inflammatory disorders; herb teas for
`medicinal purposes
`
`Grounds for Opposition
`
`False suggestion of a connection
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2307888
`
`01/11/2000
`
`CELEBREX
`
`Application Date
`
`02/10/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/00 First Use In Commerce: 1999/02/00
`pharmaceuticals in the nature of anti-inflammatory analgesics
`
`Application Date
`
`03/08/1999
`
`Foreign Priority
`Date
`
`NONE
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2321622
`
`02/22/2000
`
`CELEBREX
`
`Description of
`Mark
`
`NONE
`
`

`
`Goods/Services
`
`Class 005. First use: First Use: 1999/02/06 First Use In Commerce: 1999/02/06
`pharmaceutical products in the nature of anti-inflammatory analgesics
`
`Attachments
`
`75432043#TMSN.png( bytes )
`75655826#TMSN.png( bytes )
`Notice of Opposition.pdf(274849 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
`
`/paul c. llewellyn/
`Paul C. Llewellyn
`11/10/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`~ _ _ _ _ _ _ _ . _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ — — — — — — — — ~ — — — — — — — — X
`
`G.D. SEARLE LLC,
`
`Opposer,
`
`V.
`
`GW PHARMA LIMITED,
`
`Applicant.
`— _ . — _ _ _ _ _ _ — _ — — _ _ _ — _ _ _ _ _ _ _ _ — — — — — — — — — — — — — — — — X
`
`NOTICE OF OPPOSITION
`
`Applicant Serial No:
`Filed:
`
`Published for Opposition:
`Mark:
`
`85959221
`June 13, 2013
`
`May 13, 2014
`CEBEDEX
`
`Commissioner for Trademarks
`
`Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Opposer G.D. Searle LLC (“Opposer” or “Searle”), a limited liability company existing
`
`under the laws of State of Delaware, with its principal place of business at 235 East 42nd Street,
`
`New York, New York 10017, believes that it will be damaged by the registration of the mark
`
`CEBEDEX shown in Application Serial No. 85959221, and hereby opposes the same.
`
`As grounds for opposition, Opposer, by and through its undersigned counsel, alleges that:
`
`1.
`
`Searle is a wholly owned subsidiary of Pfizer Inc., which is one of the largest
`
`pharmaceutical enterprises in the world, with global operations in more than 150 countries.
`
`('\.I.‘(l?'r9ll('>5.(lm:x
`
`

`
`Pfizer discovers, develops, manufactures and markets leading prescription medicines, as well as
`
`consumer healthcare products.
`
`2.
`
`Pfizer and its subsidiaries, including Searle, have used the CELEBREX mark on
`
`pharmaceutical preparations continuously since at least February 1999.
`
`3.
`
`Searle is the owner of U.S. Trademark Registration No. 2,307,888
`
`for the
`
`trademark CELEBREX®, and U.S. Trademark Registration No. 2,321,622 for the trademark
`
`CELEBREX® and design,
`
`respectively covering “pharmaceuticals in the nature of anti-
`
`inflammatory analgesics” and “pharmaceutical products in the nature of anti-inflammatory
`
`analgesics” in International Class 5.
`
`4.
`
`Said registrations are on the Principal Register and are valid and subsisting, and
`
`Searle hereby gives notice in accordance with Trademark Rule of Practice 2.122(d)(2) that it will
`
`rely upon said registrations as evidence in this proceeding, and a status copy of each registration
`
`showing present title will be introduced into evidence on its behalf during Searle’s testimony
`
`period.
`
`5.
`
`The CELEBREX® trademark is inherently distinctive; it is a fanciful and coined
`
`term with no meaning other than to identify Searle’s product.
`
`6.
`
`Since introducing its CELEBREX® product in 1999, Searle has spent substantial
`
`time, effort and money to promote the sale of the product in the United States under the
`
`CELEBREX® mark. Within a very short time of its launch, the CELEBREX® product became
`
`extremely well—known throughout the United States and abroad.
`
`7.
`
`Searle has sold and continues to sell substantial quantities of CELEBREX®
`
`product in the United States and has spent substantial time, effort and money promoting the sale
`
`of such product under the mark.
`
`

`
`8.
`
`By virtue of Searle’s substantial use, sales, advertising, and promotion of the
`
`CELEBREX® mark throughout the United States and abroad and the inherently distinctive
`
`nature of the mark, the CELEBREX® mark has become an extremely well~known mark and has
`
`become distinctive of Searle’s product.
`
`9.
`
`Despite Searle’s long prior common law and statutory rights in the CELEBREX®
`
`mark, Applicant GW Pharma Limited (“Applicant”), with at least constructive notice of Searle’s
`
`federal registrations, and long after Searle established rights in and to the CELEBREX® mark,
`
`adopted and filed an application for registration of the mark CEBEDEX for:
`
`PHARMACEUTICAL
`
`AND
`
`VETERINARY PREPARATIONS
`
`AND
`
`SUBSTANCES FOR THE TREATMENT OF EPILEPSY, CONVULSIONS,
`SEIZURES, MULTIPLE
`SCLEROSIS, NEUROGENIC
`SYMPTOMS,
`PSYCHOTIC DISORDERS, DISEASES OF THE CENTRAL NERVOUS
`SYSTEM, STROKE AND HEAD INJURY, MOTION SICKNESS AND
`CHEMICALLY INDUCED SICKNESS,
`SPASTICITY, ONCOLOGY,
`CANCER
`SYMPTOMS,
`PSYCHIATRIC
`ILLNESSES,
`NEURODEGENERATIVE
`DISEASES,
`METABOLIC
`DISORDERS,
`OBESITY, OBESITY ASSOCIATED WITH TYPE II DIABETES, BULIMIA,
`SCHIZOPHRENIA, CROHNS DISEASE, ALZHEIMERS, BONE DISORDERS,
`DRUG, ALCOHOL AND NICOTINE ABUSE;
`PHARMACEUTICAL
`PREPARATIONS AND SUBSTANCES FOR THE TREATMENT OF
`
`PHARMACEUTICAL AND VETERINARY
`EPILEPSY;
`PEDIATRIC
`PREPARATIONS AND SUBSTANCES FOR THE TREATMENT OF
`
`DRAVET ‘SYNDROME, HYPOXIC-ISCHAEMIC ENCEPHALOPATHY,
`LENNOX-GASTAUT SYNDROME (LGS),
`INTRACTABLE CHILDHOOD
`EPILEPSY WITH GENERALIZED TONIC—CLONIC SEIZURES (ICE-GTC),
`GENERALIZED EPILEPSY WITH FEBRILE SEIZURES PLUS (GEFS+), DUP
`15, AND DOOSE SYNDROME; HERBS FOR MEDICINAL PURPOSES;
`MEDICINAL HERBS; MEDICINAL OILS; MEDICINAL INFUSIONS FOR
`THE TREATMENT OF EPILEPSY, CONVULSIONS, SEIZURES, MULTIPLE
`SCLEROSIS,
`BLADDER DISFUNCTION, NEUROGENIC SYMPTOMS,
`PSYCHOTIC DISORDERS, DISEASES OF THE CENTRAL NERVOUS
`SYSTEM, STROKE AND HEAD INJURY, MOTION SICKNESS AND
`CHEMICALLY INDUCED SICKNESS,
`SPASTICITY, ONCOLOGY,
`CANCER
`SYMPTOMS,
`PSYCHIATRIC
`ILLNESSES,
`NEURODEGENERATIVE
`DISEASES,
`METABOLIC
`DISORDERS,
`OBESITY, OBESITY ASSOCIATED WITH TYPE II DIABETES, BULIMIA,
`SCHIZOPHRENIA, ALZHEIMERS, BONE DISORDERS, HYPOXIC-
`ISCHAEMIC ENCEPHALOPATHY, DRUG, ALCOHOL AND NICOTINE
`
`

`
`ABUSE; PURE EXTRACTS OF MEDICINAL PLANTS AND HERBS USED
`FOR THE TREATMENT OF EPILEPSY, CONVULSIONS, SEIZURES,
`MULTIPLE
`SCLEROSIS, NEUROGENIC SYMPTOMS,
`PSYCHOTIC
`DISORDERS, DISEASES OF THE CENTRAL NERVOUS SYSTEM, STROKE
`AND HEAD INJURY, MOTION SICKNESS AND CHEMICALLY INDUCED
`SICKNESS,
`SPASTICITY,
`ONCOLOGY,
`CANCER
`SYMPTOMS,
`PSYCHIATRIC
`ILLNESSES,
`NEURODEGENERATIVE
`DISEASES,
`METABOLIC DISORDERS, OBESITY, OBESITY ASSOCIATED WITH
`TYPE II DIABETES, BULIMIA,
`SCHIZOPHRENIA, ALZHEIMERS,
`HYPOXIC-ISCHAEMIC ENCEPHALOPATHY, BONE DISORDERS, DRUG,
`
`ALCOHOL AND NICOTINE ABUSE; HERB TEAS FOR MEDICINAL
`PURPOSES
`
`in International Class 5, as set forth in the Post-Publication Amendment filed by
`
`Applicant on November 6, 2014.
`
`10.
`
`11.
`
`Applicant’s mark was published for opposition on May 13, 2014.
`
`Searle filed a Request for Extension of Time to Oppose on June 11, 2014. The
`
`Trademark Trial and Appeal Board granted an extension until July 12, 2014.
`
`12.
`
`Searle filed a Request for Extension of Time to Oppose on June 27, 2014. The
`
`Trademark Trial and Appeal Board granted an extension until September 10, 2014.
`
`13.
`
`Searle filed a Request for Extension of Time to Oppose on September 2, 2014.
`
`The Trademark Trial and Appeal Board granted an extension until November 9, 2014.
`
`14.
`
`Searle’s marks have priority over Applicant’s mark because the filing dates of
`
`Searle’s word and design trademark applications (February 10, 1998 and March 8, 1999,
`
`respectively) and Searle’s date of first use for both marks (February 1999) predate Applicant’s
`
`intent—to—use trademark application’s foreign filing date of June 13, 2013, by more than ten
`
`years.
`
`15.
`
`App1icant’s CEBEDEX mark is extremely similar to Opposer’s CELEBREX®
`
`trademark in sound, appearance and commercial impression.
`
`

`
`16.
`
`The goods set forth in the subject application are related to the pharmaceutical
`
`compound for which Searle’s CELEBREX® trademarks are registered and used, in that many
`
`consumers who encounter Applicant’s mark in connection with nutritional supplements are
`
`likely to think that the same company that offers Applicant’s product might be authorized by,
`
`sponsored by,
`
`licensed by, affiliated with or related to the company that offers Searle’s
`
`CELEBREX® product.
`
`17.
`
`As a result, Applicant’s mark CEBEDEX, if used in conjunction with the goods
`
`set forth in the subject application, is likely to cause confusion, mistake, or to deceive as to the
`
`origin, source, sponsorship or affiliation of Applicant’s goods.
`
`18.
`
`Applicant’s applied-for mark CEBEDEX so resembles Opposer’s previously used
`
`and registered CELEBREX® marks as to be likely, when applied to the goods set forth in
`
`Applicant’s application, to cause confusion, mistake or deception within the meaning of 15
`
`U.S.C. § l052(d).
`
`l9.
`
`Applicant’s applied-for mark CEBEDEX is a close approximation of Opposer’s
`
`previously used and registered CELEBREX mark, which is a name or identity of substantial
`
`reputation that is closely identified with Opposer, so as to be likely, when applied to the goods
`
`set forth in Applicant’s application,
`
`to point uniquely to Opposer and to falsely suggest a
`
`connection with the Opposer within the meaning of 15 U.S.C. § 1052(a).
`
`WHEREFORE, Opposer respectfully prays that this Opposition be sustained and that
`
`registration to Applicant be refused.
`
`The Patent & Trademark Office and Trademark Trial and Appeal Board are hereby
`
`authorized to collect any fees necessitated by this Notice of Opposition from the deposit account
`
`of Opposer’s attorneys, Kaye Scholer LLP, Deposit Account No. ll—O228.
`
`

`
`Dated: November 10, 2014
`
`/Paul C. Llewellyn/
`Paul C. Llewellyn
`KAYE SCHOLER LLP
`250 West 55”‘ Street
`
`New York, N.Y. 10019-9710
`Telephone: (212) 836-7828
`
`John P. Rynkiewicz
`KAYE SCHOLER LLP
`
`901 Fifteenth Street, N.W.
`
`Washington, D.C. 20005
`Telephone: (202) 682-3671
`Attorneys for Opposer G. D. Searle LLC
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 10th day of November, 2014, I caused a true and correct copy
`of the foregoing Notice of Opposition to be served by United States first class mail, postage
`prepaid, upon the following domestic representative / correspondent of record:
`
`MICHELLE L. VISSER, ESQ
`RADER, FISHMAN & GRAUER PLLC
`39533 WOODWARD AVE STE 140
`
`BLOOMFIELD HILLS, MI 48304-5098
`UNITED STATES