Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA937088
`11/26/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91226322
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Lupin Pharmaceuticals, Inc.
`
`DIANE B MELNICK
`POWLEY & GIBSON PC
`304 HUDSON ST 2ND FLOOR
`NEW YORK, NY 10013
`UNITED STATES
`trademarks@powleygibson.com, dbmelnick@powleygibson.com,
`thcurtin@powleygibson.com, smmorales@powleygibson.com
`212-226-5054
`
`Plaintiff's Notice of Reliance
`
`Suzanna M. M. Morales
`
`smmorales@powleygibson.com, thcurtin@powleygibson.com, trade-
`marks@powleygibson.com
`
`/suzanna m m morales/
`
`11/26/2018
`
`1 Lupin - Ampel - opposers rebuttal notice of reliance FINAL.pdf(516975 bytes )
`DD complete.pdf(1082772 bytes )
`EE complete.pdf(122084 bytes )
`FF complete.pdf(729594 bytes )
`GG public filing.pdf(6781 bytes )
`HH complete.pdf(2401233 bytes )
`II complete.pdf(980761 bytes )
`JJ Complete.pdf(1110390 bytes )
`KK complete.pdf(581305 bytes )
`LL complete part 1.pdf(2244587 bytes )
`LL complete part 2.pdf(475668 bytes )
`MM complete.pdf(3413357 bytes )
`NN complete.pdf(17838 bytes )
`OO complete.pdf(3469299 bytes )
`PP complete.pdf(664996 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial No. 86509184
`For the Mark: LUPPIN
`Published in the Official Gazette on August 18, 2015
`-----------------------------------------------------x
`
`
`
`
`
`
`:
`LUPIN PHARMACEUTICALS, INC.,
`:
`
`
`
`
`
`
`:
`
`Opposer,
`
`
`:
`
`
`
`
`
`:
`-against-
`
`
`:
`
`
`
`
`:
`
`
`AMPEL, LLC,
`
`
`
`:
`
`
`
`
`
`
`:
`
`
`Applicant.
`
`
`:
`
`
`
`
`
`
`:
`-----------------------------------------------------x
`
`
`
`
`Opposition No. 91226322
`
`
`
`OPPOSER’S NOTICE OF RELIANCE IN REBUTTAL
`
`
`
`Pursuant to 37 C.F.R. §§ 2.120(k), 2.122(b), (d), and (e), Opposer, Lupin
`
`Pharmaceuticals, Inc. (“Lupin” or “Opposer”) hereby makes of record and notifies Applicant
`
`Ampel, LLC (“Ampel” or “Applicant”) of the following exhibits for its Notice of Reliance in
`
`Rebuttal. Opposer reserves the right to use, where applicable, any other documents presented as
`
`exhibits to Opposer’s Notice of Reliance or Applicant’s Notice or Reliance:
`
`A. As Applicant has stated its intention to use the file history for the subject application, Ser.
`
`No. 86/509,184, in evidence in this matter, Opposer notes that “[t]he file . . . of the
`
`application against which a notice of opposition is filed . . . forms part of the record of the
`
`proceeding without any action by the parties and reference may be made to the file for
`
`any relevant and competent purpose . . .”. TBMP § 704.03(a); see also 37 C.F.R.
`
`§2.122(b). Opposer reserves its right to refer to the file history for “any relevant and
`
`

`

`competent purpose,” including, without limitation, for Applicant’s statements made to the
`
`USPTO regarding its application and the claimed use of Applicant’s mark.1
`
`B. The below responses to Applicant’s interrogatories. Applicant chose not to include these
`
`responses in its Notice of Reliance, thereby creating an incomplete and erroneous
`
`impression concerning Opposer’s use of its mark. In order to dispel this misleading
`
`impression, Opposer submits the following responses, which provide detailed factual
`
`information regarding the use of Opposer’s LUPIN mark. All of the following should, in
`
`fairness, be considered by the Board to prevent any misleading impression created by
`
`Applicant’s selective and incomplete excerpts from Opposer’s interrogatory responses.
`
`These answers include, without limitation:
`
`a. Opposer’s response to Interrogatory Nos. 5 and 15 in Opposer’s First Amended
`
`Responses to Applicant’s First Set of Interrogatories, regarding the use of
`
`Opposer’s LUPIN mark and the scope of pharmaceutical products Opposer offers.
`
`Opposer’s response to Interrogatory No. 5 is incorporated by reference in
`
`Opposer’s response to Interrogatory No. 15, which is, in turn, incorporated by
`
`reference in Opposer’s response to Interrogatory No. 33. Opposer’s responses to
`
`Interrogatory Nos. 5 and 15, therefore, should be considered in conjunction with
`
`Opposer’s response to Interrogatory No. 33. A true and correct copy of the cited
`
`
`1 Opposer objects to the introduction of the file history of the subject application by Applicant “for the purpose of
`demonstrating Respondent’s use of its mark and the goods and services offered under its mark.”
`
`
`Specimens in the file of an application for registration . . . are not evidence on behalf of the applicant
`or registrant unless identified and introduced in evidence as exhibits during the period for the taking
`of testimony. Statements made in an affidavit or declaration in the file of an application for
`registration . . . are not testimony on behalf of the applicant or registrant.
`
`37 C.F.R. § 2.122(b)(2). Moreover, Applicant has not introduced such specimens – or any portion of its file history –
`as an exhibit to its Notice of Reliance. Therefore, such evidence is not properly of record as evidence of the claimed
`use of Applicant’s mark.
`
`
`
`2
`
`

`

`portions of Opposer’s First Amended Responses to Applicant’s First Set of
`
`Interrogatories is attached hereto as Exhibit DD.
`
`b. Opposer’s response to Interrogatory No. 7 in Opposer’s First Amended Responses
`
`to Applicant’s First Set of Interrogatories, regarding the use of Opposer’s LUPIN
`
`mark and the range of pharmaceutical products Opposer offers and sells,
`
`including products that may be used for the treatment of common symptoms of
`
`Lupus. Opposer’s response to Interrogatory No. 7 is referenced in Opposer’s
`
`response to Interrogatory No. 8. Opposer’s response to Interrogatory No. 7,
`
`therefore, should, in fairness, be considered in conjunction with Opposer’s
`
`response to Interrogatory No. 8 as relied upon by Applicant.
`
`c. Opposer’s response to Interrogatory No. 15 in Opposer’s First Amended
`
`Responses to Applicant’s First Set of Interrogatories, regarding the nature and
`
`scope of Opposer’s use of the LUPIN mark and Opposer’s long use of the LUPIN
`
`mark. As noted above, Opposer’s responses to Interrogatory Nos. 5 and 15 should
`
`both be considered in conjunction with Opposer’s response to Interrogatory No.
`
`33.
`
`d. Opposer’s response to Interrogatory No. 17 in Opposer’s First Amended
`
`Responses to Applicant’s First Set of Interrogatories, regarding the nature and
`
`scope of Opposer’s use of the LUPIN mark, Opposer’s advertising, Opposer’s
`
`channels of trade, and the conditions of the sale/distribution of Opposer’s
`
`products and services. Opposer’s response to Interrogatory No. 17 is incorporated
`
`by reference in Opposer’s response to Interrogatory No. 18. Opposer’s response
`
`to Interrogatory No. 17, therefore, should, in fairness, be considered in
`
`
`
`3
`
`

`

`conjunction with Opposer’s response to Interrogatory No. 18 as relied upon by
`
`Applicant.
`
`e. Opposer’s response to Interrogatory No. 25 in Opposer’s First Amended
`
`Responses to Applicant’s First Set of Interrogatories, which is relevant to the
`
`presence or absence of actual confusion. This should be considered in conjunction
`
`with Opposer’s Response to Document Request No. 10 in Opposer’s Responses to
`
`Applicant’s First Requests for Production of Documents, which Applicant has
`
`included in its Notice of Reliance. Opposer also attaches hereto as Exhibit EE
`
`Respondent’s Supplemental Answers to Opposer’s First Set of Interrogatories,
`
`No. 4, which Opposer cited in Opposer’s response to Applicant’s Interrogatory
`
`No. 25, and which should, in fairness, be considered in conjunction therewith
`
`regarding the presence or absence of actual confusion.2 The foregoing should be
`
`considered by the Board as Applicant has attempted, in only citing to Opposer’s
`
`Response to Document Request No. 10, to create an issue regarding Opposer’s
`
`statement that it did not locate documents regarding actual confusion between the
`
`parties’ marks. As explained in the cited interrogatory responses, there are no
`
`documents because Applicant’s use of its claimed mark is largely non-existent.
`
`f. Opposer’s Amended Response to Interrogatory No. 5 in Opposer’s Second
`
`Amended Responses to Applicant’s First Set of Interrogatories. This amended
`
`response is relevant for the same reasons as set forth above regarding Opposer’s
`
`Response to Interrogatory No. 5 in Opposer’s First Amended Responses to
`
`
`2 Respondent’s Supplemental Answers to Opposer’s First Set of Interrogatories, No. 11, and Respondent’s
`Supplemntal (sic) Responses to Opposer’s First Set of Requests for Production of Documents, No. 12, were
`introduced in Opposer’s Notice of Reliance at Exhibits D and H, respectively. These responses also were cited in,
`and should be considered in conjunction with, Opposer’s Response to Interrogatory No. 25.
`
`
`
`4
`
`

`

`Applicant’s First Set of Interrogatories, as well as to the ongoing expansion of
`
`Opposer’s product line offered and sold under the LUPIN mark, and should be
`
`considered in conjunction with the interrogatory responses submitted in
`
`Applicant’s Notice of Reliance. A true and correct copy of the cited portions of
`
`Opposer’s Second Amended Responses to Applicant’s First Set of Interrogatories
`
`is attached hereto as Exhibit FF.3
`
`g. Opposer’s Amended Response to Interrogatory No. 7 in Opposer’s Second
`
`Amended Responses to Applicant’s First Set of Interrogatories (Exhibit FF). This
`
`amended response is relevant for the same reasons as set forth above regarding
`
`Opposer’s Response to Interrogatory No. 7 in Opposer’s First Amended
`
`Responses to Applicant’s First Set of Interrogatories, and should, in fairness, be
`
`considered in conjunction with the responses submitted in Applicant’s Notice of
`
`Reliance.
`
`C. The following response to Applicant’s requests for production of documents. Applicant
`
`chose not to include this response in its Notice of Reliance, thereby creating the
`
`erroneous impression of a limited record regarding Opposer’s use of its mark. In order to
`
`dispel this misleading impression, Opposer submits the following response, which
`
`provides detailed factual information regarding the use of Opposer’s LUPIN mark. The
`
`following should, in fairness, be considered by the Board to prevent any misleading
`
`impression created by Applicant’s selective and incomplete citation to excerpts from
`
`Opposer’s discovery responses.
`
`
`3 Numbered page 11 of Exhibit FF contains redacted confidential material, which is not relevant to or included in
`Opposer’s Notice of Reliance in Rebuttal.
`
`
`
`5
`
`

`

`a. Opposer’s Response to Document Request No. 7 in Opposer’s Responses to
`
`Applicant’s First Requests for Production of Documents, which is relevant to
`
`show Opposer’s provision of pharmaceutical products that may be used to treat
`
`certain symptoms of Lupus. This should be considered in conjunction with
`
`Opposer’s Response to Document Request No. 8, which Applicant claims is
`
`“offered in evidence to show that Opposer has not used its mark in connection
`
`with any services directed to or provided to Lupus patients . . .”. Applicant has
`
`attempted to demonstrate that the fact that Opposer does not provide services of
`
`the nature of those identified in Applicant’s Application Ser. No. 86/509,184, and
`
`has neglected to include Opposer’s distribution and sale of numerous goods that
`
`can be used to treat common symptoms of Lupus. True and correct copies of the
`
`cited portion of Opposer’s Responses to Applicant’s First Requests for Production
`
`of Documents, as well a representative sample of documents produced in response
`
`thereto (namely, Bates Nos. LUP-000321 –324, LUP-000374 – 377, LUP-000439
`
`– 444, LUP-000643 – 646, LUP-000673 – 686, LUP-000744, LUP-000775 – 778,
`
`LUP-001353 – 1356, LUP-001377 – 1385, LUP-001479 – 1480, LUP-001484 –
`
`1486, LUP-002457 – 2458, LUP-002543 – 2545, LUP-002553 – 2558, LUP-
`
`002566 – 2567, LUP-002574 – 2577), are attached hereto as Exhibit GG. The
`
`responsive documents relate to the products identified by Opposer in response to
`
`Applicant’s Interrogatory No. 7, which is discussed in Paragraph B above.
`
`Opposer produced thousands of documents responsive to this request, including
`
`examples of product packaging, package inserts, and documents related to the
`
`FDA approval of each of the products identified in response to Interrogatory No.
`
`
`
`6
`
`

`

`7. Exhibit GG contains a representative sample of the product packaging
`
`produced in response to this document request. The parties have stipulated to the
`
`admissibility of these documents. Dkt. 40.
`
`D. Opposer filed the Affidavit of Dave Berthold in Support of Opposer’s Motion for
`
`Summary Judgment (“Berthold SJ Affidavit”) and supporting exhibits during Opposer’s
`
`testimony period. Dkt. 27-28. The parties had stipulated that the Berthold SJ Affidavit is
`
`admissible for all purposes, Dkt. 26, and Applicant has even included this affidavit in its
`
`own Notice of Reliance. In addition to reliance upon the Berthold SJ Affidavit in its case-
`
`in-chief, the Berthold SJ Affidavit is also relied upon by Opposer in rebuttal since it is
`
`relevant to Opposer’s corporate history and structure, including the relationship between
`
`Opposer and Lupin Limited, as well as the meaning and commercial connotation of
`
`Opposer’s mark. The Berthold SJ Affidavit, therefore, serves to rebut Applicant’s
`
`introduction of third-party registrations for other “Lupin” marks, including one
`
`registration owned by Opposer’s ultimate corporate parent, Lupin Limited.
`
`E. Portions of the discovery deposition of Peter Lipsky, M.D., were introduced in Opposer’s
`
`Notice of Reliance, and the transcript was attached as Exhibit K thereto. 4 Opposer further
`
`designates the following portions in rebuttal to Applicant’s Notice of Reliance. This
`
`testimony is relevant to and is offered in evidence for the purposes of demonstrating:
`
`a. 24:19 – 25:9, 26:9 – 27:3, 42:18 – 20: Applicant’s channels of trade, including Dr.
`
`Lipsky’s contacts in the pharmaceutical industry. The Affidavit of Dr. Peter
`
`Lipsky (“Lipsky Affidavit”) appended as Exhibit 4 to Applicant’s Notice of
`
`Reliance states that “Ampel also does not work directly with any manufacturers of
`
`
`4 Only certain portions were filed under seal, but the entire (redacted) transcript was filed in the public version of
`Lupin’s Notice of Reliance.
`
`
`
`7
`
`

`

`generic pharmaceuticals.” This testimony should be considered in conjunction
`
`with Exhibits Y and Z to Opposer’s Notice of Reliance as well as portions of the
`
`deposition of Applicant’s Rule 30(b)(6) representative regarding Dr. Lipsky’s
`
`patents, the entirety of which has been introduced through Opposer’s Notice of
`
`Reliance.5
`
`b. 64:22 – 65:21: history and origin of patient partner programs, Applicant’s
`
`channels of trade and classes of consumers (65:22 – 66:5, which were designated
`
`in Opposer’s Notice of Reliance, also should be considered for these purposes).
`
`This testimony should be considered in rebuttal to Paragraphs 8 and 9 of the
`
`Lipsky Affidavit, which discuss Applicant’s patient partner program, because this
`
`rebuttal testimony concerns not only Applicant’s patient partner program, but also
`
`Dr. Lipsky’s prior patient partner program, as well as patient partner programs in
`
`a broader context. This evidence is relevant to show the intended consumer group
`
`for the services covered by Ampel’s application.
`
`c. 71:15 – 72:9 and Deposition Exhibit 3. This testimony and exhibit are relevant to
`
`Applicant’s relationships with pharmaceutical companies, in rebuttal to testimony
`
`in the Lipsky Affidavit regarding Applicant’s relationships with pharmaceutical
`
`companies and Exhibit B thereto. According to the Lipsky Affidavit, Exhibit B to
`
`that affidavit is a website screenshot demonstrating Ampel’s use of its claimed
`
`
`5 Applicant has moved to exclude Exhibits Y and Z, among other documents. Dkt. 36. Exhibits Y and Z consist of
`publicly-available documents from the file history of a U.S. patent on which Dr. Lipsky is a named inventor, as well
`as website printouts of Mylan, the assignee of the patent and a generic pharmaceutical company. The patent was
`assigned in 2015, when Dr. Lipsky was employed with Applicant. These documents contradict both the Lipsky
`Affidavit and the cited testimony of Dr. Lipsky. As these documents were never in the possession, custody, or
`control of Opposer, but rather were located through the research of Opposer’s attorneys, Opposer was not required
`to produce these documents at all, and they should not be excluded. The documents relating to Dr. Lipsky’s patent
`are admissible as official records of the USPTO, TBMP § 704.07, and the web printout is admissible as internet
`material. TBMP § 704.08(b).
`
`
`
`8
`
`

`

`LUPPIN mark. Opposer notes that a copy of Ampel’s website produced by Ampel
`
`and discussed during Dr. Lipsky’s deposition lists various pharmaceutical
`
`companies as “Clients and Collaborators” on the same page that the LUPPIN
`
`program is discussed. This list is not included in the website screenshots included
`
`as Exhibit B to the Lipsky Affidavit. Opposer submits that Exhibit 3 to the Lipsky
`
`Deposition should, in fairness, be considered in its entirety to show Applicant’s
`
`relationships with pharmaceutical companies. The Lipsky Deposition was
`
`attached as Exhibit K to Opposer’s Notice of Reliance. Deposition Exhibit 3 is
`
`attached hereto as Exhibit HH.
`
`d. 83:10 – 84:5: Applicant’s claimed “Lu” family of marks. In paragraph 4 of the
`
`Lipsky Affidavit, Applicant discusses in the cited testimony Ampel’s claimed
`
`“Lu” family of marks, including LuPRO.
`
`e. 132:3 – 15, 137:16 – 138:6 and Deposition Exhibit 6. As noted above, the Lipsky
`
`transcript was attached as Exhibit K to Opposer’s Notice of Reliance. Deposition
`
`Exhibit 6 is attached hereto as Exhibit II. Paragraph 11 of the Lipsky Affidavit
`
`references Applicant’s network of “academic medical centers.” Applicant has
`
`attempted to differentiate between Applicant’s and Opposer’s channels of trade,
`
`particularly relating to hospitals and medical centers. Opposer includes this
`
`testimony and exhibit which provide further information regarding Applicant’s
`
`network and should be considered in fairness in connection with evidence
`
`regarding Applicant’s network of “academic medical centers.”
`
`F. Portions of the discovery deposition of Amrie Grammer, PhD, were introduced in
`
`Opposer’s Notice of Reliance, and the relevant portions of the transcript were attached as
`
`
`
`9
`
`

`

`Exhibit L thereto. Opposer submits that the following portions should be considered in
`
`rebuttal to the documents and evidence presented by Applicant in its Notice of Reliance.
`
`The testimony cited below is relevant to, and is offered in evidence for the following
`
`reasons:
`
`a. 59:17 – 60:22, 62:20 – 65:2 and Exhibit 13: The testimony set forth in the Lipsky
`
`Affidavit, as well as the testimony and Exhibit 6 from Dr. Lipsky’s deposition
`
`discussed above at Section E.e. above should be considered in fairness in
`
`connection with the deposition testimony of Amrie Grammer regarding the
`
`LuCIN clinical investigator network. Such evidence provides a further
`
`explanation of the nature of Applicant’s network and rebuttal to the testimony that
`
`there is no overlap in the channels of trade between Applicant and Opposer.
`
`Exhibit 13 was introduced as Exhibit L-13 to Opposer’s Notice of Reliance.
`
`G. LUP-002371, produced by Opposer and introduced by Applicant in Exhibit 5 to
`
`Applicant’s Notice of Reliance. The parties have stipulated to the admissibility of this
`
`document. Dkt. 40.6 This document rebuts Applicant’s position that the parties’
`
`respective channels of trade do not overlap, as it demonstrates that Opposer advertises to
`
`Johns Hopkins School of Medicine, where at least one member of Applicant’s clinical
`
`investigator network is located. This should be considered in conjunction with Deposition
`
`Exhibit 13 (Trial Exhibit L-13) and the testimony of Amrie Grammer at 62:20 – 65:2,
`
`discussed above.
`
`H. A true and correct copy of the statement of use filed in support of Application Ser. No.
`
`85/161,714 (Reg. No. 4,475,508), obtained from the USPTO Trademark Status and
`
`
`6 The parties stipulated to the admissibility and genuineness of this and other documents, but have reserved
`objections on other grounds for trial.
`
`
`
`10
`
`

`

`Document Retrieval system, attached hereto as Exhibit JJ. While the file histories of
`
`third-party registrations are of limited probative value, TBMP 704.03(b)(1)(B), Applicant
`
`has placed the use of this mark at issue by introducing the registration in its Notice of
`
`Reliance. This document is relevant by showing the strength of Opposer’s mark and
`
`consumer perception and use as a source identifier of other marks containing the word
`
`“Lupin.”7
`
`I. A true and correct copy of the Notice of Opposition filed in Opposition No. 91201582,
`
`entitled Lupin Pharmaceuticals, Inc. v. Guerlain S.A., obtained from the Trademark Trial
`
`and Appeal Board Inquiry System, is attached hereto as Exhibit KK. The application at
`
`issue in this opposition matured to Reg. No. 4,475,508, which Applicant introduced in its
`
`Notice of Reliance. This document is relevant to the strength of Opposer’s mark and
`
`Opposer’s enforcement efforts, as well as to the commercial impression of marks
`
`containing the word “Lupin.”
`
`J. True and correct copies of internet materials referencing the fictional character “Arsene
`
`Lupin” are attached hereto as Exhibit LL. 37 C.F.R. § 2.122(e); TBMP § 704.08(b).
`
`These are relevant to demonstrate the connotation and commercial impression of the
`
`claimed mark ARSENE LUPIN, in rebuttal to Applicant’s reliance on Reg. No.
`
`
`7 Applicant has moved to strike numerous documents produced by Opposer on the ground that the documents were
`not produced in a timely manner, including, inter alia, third-party trademark registrations. Dkt. 36. It is telling that
`Applicant has now itself introduced third-party trademark registrations that Applicant never produced at all. Such
`documents would have been responsive to Opposer’s Document Request No. 26: “All documents and things upon
`which Applicant intends to rely to prove the Affirmative Defenses listed in Applicant’s Answer to Notice of
`Opposition and Affirmative Defenses dated March 24, 2016.” Applicant responded, “there are no documents
`responsive to this request that have mot (sic) otherwise been produced.” The third-party registrations produced by
`Opposer were the same or similar type of documents Opposer had previously produced during discovery and were
`no surprise to Applicant. On the other hand, Applicant’s Notice of Reliance was the first time that Applicant had
`ever indicated its intention to rely on such evidence. It is disingenuous for Applicant to seek to exclude the third-
`party registrations relied upon by Opposer while at the same time itself notifying Opposer now for the first time of
`its intention to rely on the very same type of public records.
`
`
`
`11
`
`

`

`4,475,508, which Applicant claims “bear[s] on the relative strength of weakness of
`
`Opposer’s mark and whether consumers may look to other source identifiers in
`
`distinguishing goods and services provided under marks containing the word ‘Lupin.’”:
`
`a. https://en.wikipedia.org/wiki/maurice_leblanc, accessed on October 24, 2018
`
`relating to the French author who created the “fictional gentleman thief and
`
`detective Arsene Lupin”;
`
`b. https://www.amazon.com/Extraordinary-Adventures-Arsene-Lupin-Gentleman-
`
`Burglar/dp/1470179814, accessed on October 24, 2018 showing the offering for
`
`sale of literature entitled “The Extraordinary Adventures of Arsene Lupin,
`
`Gentleman Burglar” on the amazon.com website;
`
`c. https://www.nytimes.com/1932/02/27/archives/john-and-lionel-barrymore-
`
`engage-in-a-battle-of-wits-in-a-film.html, accessed on October 24, 2018, a digital
`
`reprint of a 1932 article entitled John and Lionel Barrymore Engage in a Battle of
`
`Wits in a Film Version of “Arsene Lupin”, NEW YORK TIMES, Feb. 27, 1932;
`
`d. https://www.amazon.com/Guerlain-ARSENE-LUPIN-VOYOU-
`
`Parfum/dp/B004DILWES/ref=sr_1_1_a_it?ie=UTF8&qid=1540398085&sr=8-
`
`1&keywords=arsene+lupin+perfume, accessed on October 24, 2018, indicating
`
`the offering for sale of ARSENE LUPIN perfume by Guerlain at nearly $400 for a
`
`100 ml bottle.
`
`K. True and correct copies of internet materials referencing “Lupin the Third” are attached
`
`hereto as Exhibit MM. 37 C.F.R. § 2.122(e); TBMP § 704.08(b). These are relevant to
`
`demonstrate the connotation and commercial impression of the mark LUPIN THE
`
`THIRD, in rebuttal to Applicant’s reliance on Reg. Nos. 4,683,190 and 4,673,445, which
`
`
`
`12
`
`

`

`Applicant claims “bear[s] on the relative strength or weakness of Opposer’s mark and
`
`whether consumers may look to other source identifiers in distinguishing goods and
`
`services provided under marks containing the word ‘Lupin.’”:
`
`a. https://www.lupin-3rd.net/en/, accessed on October 24, 2018, relating to a
`
`Japanese manga featuring “Lupin III, grandson of the infamous phantom thief
`
`Lupin”;
`
`b. https://www.netflix.com/title/70050576, accessed on October 24, 2018, relating to
`
`a Japanese anime series featuring the Lupin III fictional character;
`
`c. https://www.imdb.com/title/tt4129452/, accessed on October 24, 2018, relating to
`
`a Japanese anime series featuring the Lupin III fictional character;
`
`d. https://www.amazon.com/Lupin-3rd-Complete-
`
`First/dp/B00IZHPOCE/ref=sr_1_5?ie=UTF8&qid=1539811156&sr=8-
`
`5&keywords=lupin+the+third, accessed on October 24, 2018, relating to a
`
`Japanese anime series featuring the Lupin III fictional character.
`
`e. https://en.wikipedia.org/wiki/Lupin_the_Third, accessed on November 13, 2018,
`
`relating to the character Lupin the Third in anime and manga.
`
`L. A true and correct copy of Respondent’s Responses to Opposer’s Third Set of Requests
`
`for Production of Documents, including Ampel’s response to Request No. 6, which is
`
`attached hereto as Exhibit NN. In the Affidavit of Dr. Peter Lipsky identified as Exhibit 4
`
`to Applicant’s Notice of Reliance, Applicant presented evidence regarding certain
`
`conferences where Applicant “promoted the LuPPiN program.” Exhibit NN is relevant as
`
`to the issue of the number of attendees at such conferences, particularly Applicant’s
`
`failure to produce any documentation regarding the number and identity of any attendees,
`
`
`
`13
`
`

`

`and is, therefore, relevant to the scope and extent of Applicant’s promotion and use of its
`
`mark as well as Applicant’s channels of trade.
`
`M. True and correct copies of the Petition for Cancellation filed in Opposition No.
`
`92052316, Lupin Pharmaceuticals, Inc. v. Australis Foods Pty Ltd, and Request to
`
`Dismiss Cancellation Proceedings, obtained from the Trademark Trial and Appeal Board
`
`Inquiry System, are attached hereto as Exhibit OO. TBMP §§ 704.07-08; 37 C.F.R. §
`
`2.122(e)(1). These documents are relevant to show: (i) the strength of Opposer’s mark;
`
`(ii) Opposer’s vigilance in enforcing its rights in the LUPIN mark; (iii) Applicant’s
`
`failure to demonstrate a crowded field of “Lupin” marks; and (iv) in rebuttal to
`
`Applicant’s attempts, through introducing third-party registrations, to demonstrate that
`
`Opposer’s mark is weak.
`
`N. True and correct copies of the certificate of registration, TSDR current status, and
`
`assignment of Reg. No. 3738119 for the mark LUPIN8 are attached hereto as Exhibit PP.
`
`TBMP §§ 704.07-08; 37 C.F.R. § 2.122(e)(1). This registration was assigned to
`
`Opposer’s ultimate corporate parent, Lupin Ltd., pursuant to the Petition for Cancellation
`
`discussed at Paragraph M above. These documents are relevant to show: (i) the strength
`
`of Opposer’s mark; (ii) Opposer’s vigilance in enforcing its rights in the LUPIN mark;
`
`(iii) Applicant’s failure to demonstrate a crowded field of “Lupin” marks; and (iv) in
`
`rebuttal to Applicant’s attempts, through introducing third-party registrations, to
`
`demonstrate that Opposer’s mark is weak.8
`
`
`8 Opposer acknowledges that records of cancelled registrations are generally of very little probative value, except to
`demonstrate that the registration issued. Opposer submits that, in this instance, the assignment of the registration to
`Opposer’s parent company and its subsequent cancellation are relevant to the lack of competing marks and,
`therefore, to the strength of Oppsoer’s LUPIN mark.
`
`
`
`14
`
`

`

`Dated: November 26, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/thomas h curtin/
`Thomas H. Curtin
`
`
`
`
`Robert L. Powley
`Thomas H. Curtin
`Suzanna M. M. Morales
`POWLEY & GIBSON, P.C.
`304 Hudson Street, Suite 305
`New York, NY 10013
`Telephone: (212) 226-5054
`Facsimile: (212) 226-5085
`
`Attorneys for Opposer
`LUPIN PHARMACEUTICALS, INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`15
`
`
`
`
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial No. 86509184
`For the Mark: LUPPIN
`Published in the Official Gazette on August 18, 2015
`-----------------------------------------------------x
`
`
`
`
`
`
`:
`LUPIN PHARMACEUTICALS, INC.,
`:
`
`
`
`
`
`
`:
`
`Opposer,
`
`
`:
`
`
`
`
`
`:
`-against-
`
`
`:
`
`
`
`
`:
`
`
`AMPEL, LLC,
`
`
`
`:
`
`
`
`
`
`
`:
`
`
`Applicant.
`
`
`:
`
`
`
`
`
`
`:
`-----------------------------------------------------x
`
`
`
`Opposition No. 91226322
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
` I
`
` hereby certify that on this 26th day of November, 2018, a true and correct copy of the
`foregoing Opposer’s Notice of Reliance in Rebuttal and exhibits thereto was served on counsel
`of record for the Applicant via email, to:
`
`
`Patrick Asplin
`pca@lplaw.com, asb@lplaw.com
`Lenhart Pettit
`P.O. Box 2057
`Charlottesville, VA 22902
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/suzanna m m morales/
`An Attorney for Opposer
`
`
`
`
`
`16
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial No. 86509184
`For the Mark: LUPPIN
`Published in the Official Gazette on August 18, 2015
`-----------------------------------------------------x
`
`
`
`
`
`
`:
`LUPIN PHARMACEUTICALS, INC.,
`:
`
`
`
`
`
`
`:
`
`
`Opposer,
`
`
`:
`
`
`
`
`
`
`:
`-against-
`
`
`:
`
`
`
`
`:
`
`
`AMPEL, LLC,
`
`
`
`:
`
`
`
`
`
`
`:
`
`
`Applicant.
`
`
`:
`
`
`
`
`
`
`:
`-----------------------------------------------------x
`
`Opposition No. 91226322
`
`
`
`EXHIBIT DD
`
`TO
`
`OPPOSER’S NOTICE OF RELIANCE IN REBUTTAL
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`LUPIN PHARMACEUTICALS, INC,
`
`Proceeding No. 91226322
`
`Application Serial No .: 86/5 091 84
`
`
`
`
`
`
`V.
`
`AMPEL, LLC,
`
`Opposer,
`
`Applicant.
`
`OPPOSER’S FIRST AMENDED RESPONSES TO
`
`APPLICANT’S FIRST SET OF INTERROGATORIES
`
`Pursuant to Fed. R. CiV. P. 26 and 33, Opposer, Lupin Pharmaceuticals, Inc,
`
`(“Opposer”), by and through its undersigned attorneys, hereby submits the following first
`
`amended responses to Applicant Ampel, LLC’s (“Applicant”) First Set of Interrogatories to
`
`Opposer (“Interrogatories”) as follows. Opposer reserves the right to supplement, amend or
`
`correct these responses based upon information that may become know: through additional
`
`discovery or any other means.
`
`GENERAL RESPONSES AND OBJECTIONS
`
`The following first amended responses hereby incorporate the General Responses and
`
`Objections set forth in Opposer’s Responses and Objections to Applicant’s First Set of Requests
`
`for the Production of Documents and Things to Opposer, served concurrently herewith. The
`
`individuals identified herein as current employees of Opposer and can be reached through
`
`Powley & Gibson, P.C.
`
`

`

`
`
`
`
`
`
`The foregoing individuals can be reached through Opposer’s attorneys, Powley & Gibson.
`
`INTERROGATORY NO. 4: Identify and describe in detail the nature and scop