Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA734484
`03/18/2016
`
`ESTTA Tracking number:
`
`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
`
`Apotex Technologies Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`03/23/2016
`
`150 Signet Drive
`Toronto, ON M9L1T9
`CANADA
`
`Attorney informa-
`tion
`
`Sheryl De Luca
`Nixon & Vanderhye P.C.
`901 N. Glebe Road, 11th Floor
`Arlington, VA 22203
`UNITED STATES
`nixonptomail@nixonvan.com, sld@nixonvan.com, rar@nixonvan.com
`
`Applicant Information
`
`Application No
`
`86683619
`
`Publication date
`
`11/24/2015
`
`Opposition Filing
`Date
`
`Applicant
`
`03/18/2016
`
`Opposition Peri-
`od Ends
`
`03/23/2016
`
`Microdermis Corporation
`103 Carnegie Center, Suite 300
`Princeton, NJ 08540
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 2015/04/22 First Use In Commerce: 2015/06/06
`All goods and services in the class are opposed, namely: Topical first aid cream
`
`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.
`
`2859839
`
`Registration Date
`
`07/06/2004
`
`Word Mark
`
`APO
`
`Application Date
`
`08/25/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1975/03/00 First Use In Commerce: 1997/09/00
`Medicinal and pharmaceutical preparations, namely, phychotherapeutics
`(antidepressants, tranquillizers); antiparkinsonians; antidiabetics; [ vitamins and
`mineral dietary supplements; ] diuretics; antihypertensives; sedatives; antiemet-
`ics; antibacterials; antibiotics; antiarthritics; anti-inflammatory agents; anticon-
`vulsants; antiarrhythmics; uricosurics; xanthine oxidase inhibitors
`
`U.S. Registration
`No.
`
`1162404
`
`Registration Date
`
`07/28/1981
`
`Application Date
`
`03/15/1978
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`APOTEX
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Medicinal and Pharmaceutical Preparations
`
`U.S. Registration
`No.
`
`4632563
`
`Registration Date
`
`11/04/2014
`
`Application Date
`
`02/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX A DIVISION OF APOTEX CORP.
`
`Description of
`Mark
`
`The mark consists of the stylized figure of a human being to the left of a stylized
`rendering of the word "ApoBiologix"with the letters "A" and "B" presented in ini-
`tial caps and the remaining letters presented in lower case lettering. Beneath
`separated by a horizontal line the length of the wording and flush to the right is
`the wording "A Division of Apotex Corp." in a smaller font with the letters "A",
`"D", and "C" in the wording featured in initial caps and the remaining letters in
`lower case.
`
`Goods/Services
`
`Class 042. First use: First Use: 2014/08/18 First Use In Commerce: 2014/08/18
`Drug product research development services
`
`

`
`U.S. Registration
`No.
`
`4621329
`
`Registration Date
`
`10/14/2014
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Application Date
`
`02/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`The mark consists of the stylized figure of a human being to the left of a stylized
`rendering of the word "ApoBiologix"with the letters "A" and "B" presented in ini-
`tial caps and the remaining letters presented in lower case lettering.
`
`Class 042. First use: First Use: 2014/08/18 First Use In Commerce: 2014/08/18
`Drug product research development services
`
`85926345
`
`Application Date
`
`05/08/2013
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Foreign Priority
`Date
`
`05/07/2013
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Drug product research development services
`
`86528589
`
`Application Date
`
`02/09/2015
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`APOTEX CONSUMER PRODUCTS
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`Printed brochures, catalogs and promotional materials in the nature of pamph-
`lets and flyers all relating to pharmaceutical products
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Promoting the pharmaceutical products of others by advertising and marketing
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Drug and pharmaceutical product research and development services
`
`U.S. Application
`No.
`
`86560396
`
`Application Date
`
`03/11/2015
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Foreign Priority
`Date
`
`03/05/2015
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations namely, pharmaceuticals for hemopoetic growth
`factors used for stimulating white blood cellproduction and for the treatment of
`proliferative disorders, namely, angiogenicdisorders including cancer
`
`76540417#TMSN.png( bytes )
`76713573#TMSN.png( bytes )
`76713572#TMSN.png( bytes )
`85926345#TMSN.png( bytes )
`86528589#TMSN.png( bytes )
`86560396#TMSN.png( bytes )
`2148-140.notice of opposition.pdf(294432 bytes )
`Exhibit 1 - Reg. No. 2859839_.pdf(50523 bytes )
`
`

`
`Exhibit 2 - Reg. No. 1162404_.pdf(38066 bytes )
`Exhibit 3 - Reg. No. 4634563_.pdf(1998489 bytes )
`Exhibit 4 - Reg. No. 4621329_.pdf(1837715 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
`
`/Sheryl De Luca/
`
`Sheryl De Luca
`
`03/18/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`2148-140
`
`Apotex Technologies inc.,
`
`Opposer,
`
`v.
`
`Mi-orodermis Corporation,
`
`Appiicant.
`
`‘-o..d‘-u../\.../‘-o_/‘-u...4‘-_.o"'-u_d‘-u./‘-_/
`
`ATTN: Chief Administrative Trademark Judge
`Commissioner for Trademarks
`
`P.O. Box i45t
`
`Alexandria, Virginia 223134451
`
`_
`Opposition No.
`Application No, 86/683,619
`Mark: APOCREME
`
`NOTICE OF OPPOSITION
`
`in the matter of an appiication for registration of the mark APOCREME, Serial
`
`No. 86/683,619, fiied Juiy 8, 2035 by Mioroderrnis Corporation (hereafter "Appiicant"),
`
`which was published in the Officiai Gazette of November 24, 2015 in international Class
`
`5, Apotex Technologies Inc., with an address at 150 Signet Drive, Toronto, Ontario
`
`Canada iVI9LtT9 (hereafter “Opposer"), believes that it will be damaged by the
`
`registration of the mark shown in the above—identified application and hereby opposes
`
`same under the provisions of Section t3 of the Trademark Act of.Juiy 5, 1945 (15
`
`U.S.C. §tO63). Our payment in the amount of $300 is ericiosed.
`
`As grounds for opposition, it is aileged that:
`
`1. Opposer adopted the mark “APO" in 1975 for various medicinal and
`
`pharmaceutical preparations in lnternationai Class 5 and has used the mark APO
`
`for these goods in commerce since at ieast as early as 1997.
`
`2466204
`
`

`
`2. Opposer owns and reiies on incontestable U.S. Trademark Registration No.
`
`2859839 for the trademark APO for “Medicinal and pharmaceutical preparations,
`
`namely, phychotherapeutics (antidepressants, tranquiilizers); antiparklnsonians;
`
`anticiiabetics; diuretics; antihypertensives; sedatives; antiernetics; antibacterials;
`
`antibiotics; antiarthritics; anti—infiammatcry agents; anticonvulsants;
`
`antiarrhythmics; uricosurics; xanthine oxidase inhibitors,” in Ciass 5.
`
`3. Registration No. 2859839 was filed on August 25, 2903, issued on July 6, 2004
`
`and ciaims a first date of use anywhere of March 1975 and first date of use in
`
`commerce of September 1997. This registration is valid, subsisting, unrevoked
`
`and nncancelied; as such, this registration constitutes conclusive evidence of the
`
`validity of the registered mark and of the registration‘ thereof, and of Opposer’s
`
`ownership of the mark shown therein, and of Opposer's exclusive right to use the
`
`registered mark in commerce as provided in Section 33 of the Trademark Act.
`
`Oppcser’s ‘839 Registration aisc constitutes notice to Appiicant of Opposer’s
`
`ciaim of ownership of the mark shown therein as provided in Sections 7(b), 22,
`
`and 33(a) of the Trademark Act. A true and correct copy of the specifics of the
`
`‘839 Registration obtained from the PTO’s TESS database is attached hereto as
`
`Exhibit 1 and made of record.
`
`4. Opposer owns and reiies on US. Trademark Registration No. 1162404 for the
`
`trademark APOTEX for “ivledicinal and Pharmaceutical Preparations," in Ctass 5.
`
`5. Registration No. 1152404 was filed on l\/iarch 15, 1978 and was issued on July
`
`28, ‘£981. This registration is vaiid, subsisting, unrevoked and uncanceiled; as
`
`such, this registration constitutes prime facie evidence of the validity of the
`
`2
`
`2600395
`
`

`
`registered mark and of the registration thereof, and of Opposer’s ownership of
`
`the mark shown therein, and of Opposer’s exciusive right to use the registered
`
`mark in commerce as provided in Section 33 of the Trademark Act. Opposefs
`
`‘-404 Registration also constitutes notice to Appiicant of Opposer’s claim of
`
`ownership of the mark shown therein as provided in Sections 7(b), 22, and 33(a)
`
`of the Trademark Act. A true and correct copy of the specifics of the ‘404
`
`Registration obtained from the PTO's TESS database is attached as Exhibit 2
`
`and made of record.
`
`_ Opposer owns and relies on US. Trademark Registration No. 4632563 for the
`
`trademark
`
`
`W‘;
`
`for “Drug product research development
`
`services," in Ctass 42.
`
`. Registration No. 4632563 was filed on February 25, 2013, was issued on
`
`November It, 2014 and ciairns a date of first use anywhere and a date of first use
`
`in commerce of August 18, 2014. This registration is vaiid, subsisting, unrevoked
`
`and uncanceiied; as such, this registration constitutes prima facie evidence of the
`
`vaitdity of the registered mark and of the registration thereof, and of Opposer’s
`
`ownership of the rriark shown therein,'and of Opposer’s exciusive right to use the
`
`registered mark in commerce as provided in Section 33 of the Trademark Act.
`
`Opposer’s ‘563 Registration aiso constitutes notice to Appiicant of Opposer’s
`
`ciaim of ownership of the mark shown therein as provided in Sections 7(b), 22,
`
`and 33(a) of the Trademark Act. A true and correct copy of the specifics of the
`
`3
`
`zsoosss
`
`

`
`‘563 Registration obtained from the F’TO's TESS database is attached as Exhibit
`
`3 and made of record.
`
`8. Opposer owns and relies on U.S. Trademark Registration No. 4621329 for the
`
`N
`,,,,
`ck
`‘*j"“‘g&$%fisiw§e@srs
`
`trademark
`
`for “Drug product research development
`
`services," in Class 42.
`
`9. Registration No. 4621329 was filed on February 25, 2013, was issued on
`
`October 14, 2014 and ciaims a date of first use anywhere and a date of first use
`
`in commerce of August 18, 2014. This registration is vaiid, subsisting, unrevoked
`
`and uncancelled; as such, this registration constitutes prima facfe evidence of the
`
`validity of the registered mark and of the registration thereof, and of Opposer's
`
`ownership of the mark shown therein, and of Opposer’s exclusive right to use the
`
`registered mark in commerce as provided in Section 33 of the Trademark Act.
`
`Opposer’s ‘329 Registration also constitutes notice to Appiicant of Opposer’s
`
`claim of ownership of the mark shown therein as provided in Sections 7(b), 22,
`
`and 33(a) of the Trademark Act. A true and correct copy of the specifics of the
`
`‘329 Registration obtained from the PTO’s TESS database is attached as Exhibit
`
`4 and made of record.
`
`‘i0. Opposer is also the owner of prior pending Application Seriai No._85926345 for
`
`the mark APOBiOLOGlX for “Drug product research deveiopment services,” in
`
`Class 42. This was filed on May 8,2013.
`1t.Opposer is aiso the owner of prior pending Application Serial No. 86528589 for
`
`the mark APOTEX CONSUMER PRODUCTS for “Printed brochures, catalogs
`
`and prornotionai materiais in the nature of pamphiets and fiyers all reiating to
`
`4
`
`2500395
`
`

`
`pharmaceutical products," in Class 16; “Promoting the pharmaceuticai products
`
`of others by advertising and marketing," in Class 35; and “Drug and
`
`pharmaceuticai product research and deveioprnent services,” in Ciass 42. This
`
`was fiied on February 9, 2015.
`
`12. Opposer is also the owner of prior pending Application Seriai No. 86580396 for
`
`the mark APOBiOLOGiX for “Pharmaceutical preparations namely,
`
`pharmaceuticals for hemopoetic growth factors used for stimulating white blood
`
`celi production and for the treatment of proiiferative disorders, namely,
`
`angiogenic disorders including cancer,” in Ciass 5. This was filed on March 11,
`
`2015.
`
`13, In addition to its federai rights, Opposer has common law rights in its APO and
`
`APO—derivative marks in connection with medicinal and pharmaceutical
`
`preparations and drug product research development services.
`
`14. Since at ieast as eariy as September t4, 2012, Opposer has adopted and used
`
`the mark APOTEX on the packing of its irniquimooi cream 5% soid as a
`
`pharmaceutical product in the United States.
`
`15. Since at least as eariy as 1997, Opposer has aiso stamped the mark_“APO” on
`
`many of its pharrnaceuticai capsules and tablets sold in the United States.
`
`16.0n July .6, 2015, Appiicant flied an appiication for the mark APOCREME for
`
`“topical first aid cream” (“Applicants Goods”). The application was assigned
`
`Seriai No. 86/683,619.
`
`17.Appiicant’s filing to register APOCREME in connection with Applicants Goods is
`
`without the consent or permission of Opposer.
`
`5
`
`2600395
`
`

`
`18.AppEicant‘s APOCREME mark of Application Seriai No. 86/683,619 for
`
`AppEicant’s Goods so resernbtes Opposefs APO and APO—derivative trademarks
`
`as to be iikely to cause confusion, mistake or deception within the meaning of
`
`Section 2(d) of the Trademark Act.
`
`19.Appiicarit is attempting to register the confusingly simiiar APOCREME trademark
`
`for ideriticai and/or highty related goods in Class 5 in the same channels of trade
`
`to the same targeted customers as those of Opposer for its APO and APO-
`
`derivative marks for Opposer’s products and services.
`
`20.Tne subject matter of Appticarits Goods identified in Application Seriat No.
`
`86/683,619 is in the exact same and/or nighiy related fields as Opposer’s goods
`
`and services under Ets APO and APO-derivative marks.
`
`2t.Application Serial No. 86/683,619 is based on a use in commerce fritng basis.
`Appiicanfs alteged first date of use ofAprit 22, 2015 and first date of use in
`
`commerce of June 6, 2015, is well after Opposer’s first date of use and use in
`
`commerce of its APO and APOTEX marks of Registration Nos. 2859839, 1162404,
`
`4632563, 4621329 and Opposer’s common law uses of APO and APOTEX marks in
`
`connection with Opposer’s goods and services.
`
`22. On information and beiief, Appiicarit rriacie no use of the mark APOCREME of
`
`Application Serial No. 86/683,619 prior to the filing of Opposer’s Registration
`
`Nos. 2859839, 1162404, 4634563 or 4621329 or prior to the fifing of Opposer’s
`
`Apptication Nos. 85926345, 86528589 or 86560396.
`
`23.0n information and belief, Applicant made no use of the mark APOCREME of
`
`Apptication Serial No. 86/683,619 prior to Opposer’s first date of use of
`
`6
`
`2690395
`
`

`
`Opposer’s APO and APO—Derivative trademarks of Registration Nos. 2859839,
`
`1162404, 4634563 and 4621329.
`
`24. On information and beiief, Applicant made no use of the mark APOCREME of
`
`Seriai No. 86/683,619 prior to Opposer’s first date of use in commerce of
`
`Opposer’s APO and APO—Derivative trademarks of Registration Nos. 2859839,
`
`1162404, 4634563 and 4621329.
`
`25.The parties’ goods are sold in the same channels oftrade.
`
`26. By virtue of Op;ooser’s prior use, advertising and sale of goods and services
`
`under its APO and APO—derivate trademarks, and its maintenance of high quality
`
`standards reiating thereto, the public has come to recognize the trademarks of
`
`Registration Nos. 2859839, 1162404, 4634563 and 4621329 and its common law
`
`APO and APO—derivative marks as indications of origin in Opposer, as a
`
`consequence of which Opposer has established valuabie goodwili and exclusive
`
`rights in its APO and APO-derivative trademarks.
`
`2"/The mark APO of Registration No. 2859839, APOTEX of Registration No.
`
`1162404, APOBiOLOGlX A D|V|SiON OF APOTEX CORP. & design of
`
`Registration No. 4632563, AF’OB|OLOGiX & Design of Registration No.
`
`4,621,329, APOBlOLOG|X of Appiication No. 85926345, APOTEX CONSUMER
`
`PRODUCTS of Application No. 86528589, APOBiOLOGiX ofApp1ication No.
`
`86566396, and appiicanfs APO and APO—derivative common law marks and the
`
`mark APOCREME of Appiication Serial No. 86/683,619 have the same or highly
`
`similar connotations when the marks are considered as a whoie
`
`'7
`
`2600395
`
`

`
`28.The terms “APO,” “APOTEX,” “AF’OBiOLOGlX” and “APOCREi\/iE" have similar
`
`appearances, pronunciations and connotations and commercial impressions.
`
`29.The mark APO of Registration No. 2859839, APOTEX of Registration No.
`
`1182404, APOBIOLOGEX A DIVISION OF APOTEX CORP. & design of
`
`Registration No. 4632563, APOBlOi_OGiX & Design of Registration No.
`
`4,621,329, APOBIOLOGEX of Appiication No. 85926345, APOTEX CONSUMER
`
`PRODUCTS of Application No. 86528589 APOBIOLOGIX of Appiication No.
`
`88580396, and Opposer’s APO and APO-derivative common law marks and the
`
`mark APOCREME of Application Serial No. 86/683,619 are identical in part in
`
`that each inciude the identical term APO.
`
`30.The element CREME of Applicants mark is a descriptive word for Applicant's
`
`type of goods and does not distinguish Appiicants mark from Opposefs APO and
`
`APO~derivative marks.
`
`3i.Opposer's goods and services soid under its APO and APO~derivative marks and
`
`Applicants goods sold or offered under the mark APOCREME are virtually
`
`identical and/or highly related goods and services, which are or are likeiy to be
`
`offered through the same or overiapping channels of trade to the same or
`
`overlapping classes of purchasers so that purchasers, prospective purchasers,
`
`users and others are likeiy to be confused, mistaken or deceived into the belief,
`
`contrary to fact, that Applicant's Goods offered under the mark APOCREME
`
`emanate from and/or are in some way sponsored or approved by Opposer or are
`
`otherwise related to Opposer’s goods under its APO and APO—derivative marks,
`
`thereby damaging Opposer.
`
`3
`
`2600395
`
`

`
`32.
`
`Applicant is not iawtuity entitted to the registration which it seeks for the reason,
`
`inter afia, that the mark APOCRENIE as used or intended for use for A;opEicant's
`
`Goods so resembtes Opposer‘s previousiy used and registered marks as to be
`
`tikeiy to cause confusion, to cause mistake or to deceive within the meaning of
`
`Section 2(d) of the Federai Trademark Act, thereby damaging Opposer.
`
`WHEREFORE, Opposer prays that the present opposition be sustained and the
`
`registration of APOCREME sought by Apptioant he refused.
`
`Dated:
`
`Respectfutiy submitted,
`
`Apotex TechnoEogies Inc.
`
`By:
`
`
`
`
`'3" .
`.. -
`
`
`Sheryi D
`uca, Esq.
`
`Robert Rowan, Esq.
`NEXON & VANDERHYE RC.
`
`901 North Gtebe Road, 11th Fioor
`Artington, Virginia 2220?
`Tet: 703-816-4000
`
`Fax: 703-816-4100
`
`2500395
`
`

`
`CERTIFICATE OF SERVICE
`
`3 hereby certify that a true and correct copy ofthe foregoing "Notice of
`Opposition“ was served upon Appiicant at the address beiow, by first class mai! this
`18th day of March 2016:
`
`JAMES E. ROSINE
`
`Kenyon & Kenyon Lip
`1 Broadway
`New York, NY 10004-1007
`
` \
`
`Sheryi De Luca
`
`10
`
`2630395
`
`

`
`EXHIBIT 1
`
`Generated on: This page was generated by TSDR on 2016-03-18 15:19:50 EDT
`
`Mark: APO
`
`US Serial Number: 76540417
`
`US Registration
`Number:
`
`2859839
`
`Register: Principal
`
`Mark Type: Trademark
`
`Status: The registration has been renewed.
`
`Status Date: Jun. 27, 2014
`
`Publication Date: Apr. 13, 2004
`
`Mark Literal
`Elements:
`
`APO
`
`Standard Character
`Claim:
`
`No
`
`Application Filing
`Date:
`
`Aug. 25, 2003
`
`Registration Date: Jul. 06, 2004
`
`Mark Information
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note: The following symbols indicate that the(cid:160)registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Medicinal and pharmaceutical preparations, namely, phychotherapeutics (antidepressants, tranquillizers); antiparkinsonians;
`antidiabetics; [ vitamins and mineral dietary supplements; ] diuretics; antihypertensives; sedatives; antiemetics; antibacterials;
`antibiotics; antiarthritics; anti-inflammatory agents; anticonvulsants; antiarrhythmics; uricosurics; xanthine oxidase inhibitors
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Mar. 1975
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`Use in Commerce: Sep. 1997
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: APOTEX TECHNOLOGIES, INC.
`
`Owner Address: 150 SIGNET DRIVE
`TORONTO, ONTARIO M9L 1T9
`CANADA
`
`Legal Entity Type: CORPORATION
`
`State or Country CANADA
`
`

`
`Attorney/Correspondence Information
`
`Where Organized:
`
`Attorney Name: Robert W. Adams
`
`Docket Number: 2148-69
`
`Attorney of Record
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`ROBERT W. ADAMS
`NIXON & VANDERHYE, P.C.
`901 NORTH GLEBE RD.
`11TH FLOOR
`ARLINGTON, VIRGINIA 22203-1808
`UNITED STATES
`
`Phone: 703-816-4022
`
`Fax: 703-816-4100
`
`Correspondent e-
`mail:
`
`fbe@nixonvan.com nixonptomail@nixonvan.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic
`Representative
`Name:
`
`Robert W. Adams
`
`Fax: 703-816-4100
`
`Domestic
`Representative e-
`mail:
`
`fbe@nixonvan.com
`
`Domestic Representative
`
`Phone: 703-816-4022
`
`Domestic
`Representative e-
`mail Authorized:
`
`Yes
`
`Prosecution History
`
`Date
`
`Description
`
`Jun. 27, 2014
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Jun. 27, 2014
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Jun. 27, 2014
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jun. 26, 2014
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jun. 10, 2014
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Jul. 28, 2010
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Jul. 06, 2010
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Jul. 06, 2010
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Jul. 27, 2010
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jul. 06, 2010
`
`PAPER RECEIVED
`
`Jul. 06, 2009
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jul. 06, 2004
`
`REGISTERED-PRINCIPAL REGISTER
`
`Apr. 13, 2004
`
`PUBLISHED FOR OPPOSITION
`
`Mar. 24, 2004
`
`NOTICE OF PUBLICATION
`
`Feb. 06, 2004
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Feb. 05, 2004
`
`ASSIGNED TO EXAMINER
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of
`Continued Use:
`
`Affidavit of
`Incontestability:
`
`Section 8 - Accepted
`
`Section 15 - Accepted
`
`Renewal Date: Jul. 06, 2014
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Jun. 27, 2014
`
`Proceeding
`Number
`
`69471
`
`69471
`
`69471
`
`64591
`
`64591
`
`64591
`
`64591
`
`76936
`
`

`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 3198/0369
`
`Date Recorded: Nov. 22, 2005
`
`Supporting
`Documents:
`
`assignment-tm-3198-0369.pdf
`
`Assignment 1 of 1
`
`(cid:160)
`
`Registrant: APOTEX INC.
`
`Pages: 4
`
`Assignor
`
`Name: APOTEX, INC.
`
`Execution Date: Nov. 18, 2005
`
`Legal Entity Type: CORPORATION
`
`Name: APOTEX TECHNOLOGIES, INC.
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`CANADA
`
`Assignee
`
`State or Country
`Where Organized:
`
`CANADA
`
`Address: 150 SIGNET DRIVE
`TORONTO, ONTARIO, CANADA M9L 1T9
`
`Correspondent
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`ROBERT W. ADAMS
`
`901 NORTH GLEBE ROAD
`11TH FLOOR
`ARLINGTON, VA 22203-1808
`
`Domestic
`Representative
`Name:
`
`ROBERT W. ADAMS
`
`Domestic
`Representative
`Address:
`
`901 NORTH GLEBE ROAD
`11TH FLOOR
`ARLINGTON, VA 22203-1808
`
`Domestic Representative
`
`

`
`Int. CL: 5
`
`Prior U.S. Cls.: 6, 18, 44, 46, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,859,839
`Registered July 6, 2004
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`APOTEX INC. (CANADA CORPORATION)
`150 SIGNET DRIVE
`TORONTO, ONTARIO, CANADA M9L 1T9
`
`FOR: MEDICINAL AND PHARMACEUTICAL
`PREPARATIONS, NAMELY PHYCHOTHERAPEU-
`TICS (ANTIDEPRESSANTS, TRANQUILLIZERS);
`ANTIPARKINSONIANS; ANTIDIABETICS; VITA-
`MINS AND MINERAL DIETARY SUPPLEMENTS;
`DIURETICS; ANTIHYPERTENSIVES; SEDATIVES;
`ANTIEMETICS; ANTIBACTERIALS; ANTIBIOTICS;
`
`ANTIARTHRITICS; ANTI-INFLAMMATORY
`AGENTS; ANTICONVULSANTS; ANTIARRHYTH-
`MICS; URICOSURICS; XANTHINE OXIDASE INHI-
`BITORS, IN CLASS 5 (US. CLS. 6, 18,4-1,46, 51 AND
`52).
`
`FIRST USE 3-0-1975; IN COMMERCE 9-0-1997.
`
`SER. NO. 76-540,417, FILED 8-25-2003.
`
`GWEN STOKOLS, EXAMINING ATTORNEY
`
`

`
`EXHIBIT 2
`
`Generated on: This page was generated by TSDR on 2016-03-18 15:21:36 EDT
`
`Mark: APOTEX
`
`US Serial Number: 73162271
`
`US Registration
`Number:
`
`1162404
`
`Register: Principal
`
`Mark Type: Trademark
`
`Status: The registration has been renewed.
`
`Status Date: Aug. 19, 2011
`
`Publication Date: May 05, 1981
`
`Application Filing
`Date:
`
`Mar. 15, 1978
`
`Registration Date: Jul. 28, 1981
`
`Mark Information
`
`Mark Literal
`Elements:
`
`APOTEX
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Foreign Information
`
`417,984
`
`241,324
`
`Foreign
`Application
`Number:
`
`Foreign
`Registration
`Number:
`
`Foreign
`Application/Registration
`Country:
`
`CANADA
`
`Foreign
`Application Filing
`Date:
`
`Nov. 23, 1977
`
`Foreign
`Registration Date:
`
`Mar. 21, 1980
`
`Foreign Expiration
`Date:
`
`Mar. 21, 1995
`
`Goods and Services
`
`Note: The following symbols indicate that the(cid:160)registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Medicinal and Pharmaceutical Preparations
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 44(e)
`
`U.S Class(es): 018
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Currently Use: No
`
`Amended Use: No
`
`

`
`Filed ITU: No
`
`Filed 44D: Yes
`
`Filed 44E: Yes
`
`Filed 66A: No
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: Yes
`
`Currently 66A: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: APOTEX TECHNOLOGIES, INC.
`
`Owner Address: 150 SIGNET DRIVE
`TORONTO, ONTARIO M9L 1T9
`CANADA
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`CANADA
`
`Attorney/Correspondence Information
`
`Attorney Name: Robert W. Adams
`
`Docket Number: 2148-107
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`fbe@nixonvan.com
`
`Correspondent
`Name/Address:
`
`Robert W. Adams
`Nixon & Vanderhye, P.C.
`901 North Glebe Rd., 11th Floor
`Arlington, VIRGINIA 22203-1808
`UNITED STATES
`
`Phone: 703-816-4022
`
`Correspondent e-
`mail:
`
`fbe@nixonvan.com
`
`Domestic
`Representative
`Name:
`
`Robert W. Adams
`
`Fax: 703-816-4100
`
`Domestic
`Representative e-
`mail:
`
`fbe@nixonvan.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Fax: 703-816-4100
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative
`
`Phone: 703-816-4022
`
`Domestic
`Representative e-
`mail Authorized:
`
`Yes
`
`Prosecution History
`
`Date
`
`Description
`
`Aug. 19, 2011
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Aug. 19, 2011
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Aug. 11, 2011
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Aug. 11, 2011
`
`PAPER RECEIVED
`
`Aug. 10, 2011
`
`ATTORNEY REVOKED AND/OR APPOINTED
`
`Aug. 10, 2011
`
`TEAS REVOKE/APPOINT ATTORNEY RECEIVED
`
`Aug. 10, 2011
`
`TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS
`
`Mar. 16, 2009
`
`CASE FILE IN TICRS
`
`Oct. 17, 2001
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Oct. 17, 2001
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jul. 27, 2001
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Sep. 20, 1988
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED
`
`Aug. 29, 1988
`
`RESPONSE RECEIVED TO POST REG. ACTION
`
`Feb. 23, 1988
`
`POST REGISTRATION ACTION MAILED - SEC. 8
`
`Jul. 27, 1987
`
`REGISTERED - SEC. 8 (6-YR) FILED
`
`Jul. 28, 1981
`
`REGISTERED-PRINCIPAL REGISTER
`
`Proceeding
`Number
`
`67603
`
`67603
`
`67603
`
`

`
`May 05, 1981
`
`PUBLISHED FOR OPPOSITION
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of
`Continued Use:
`
`Section 8 - Accepted
`
`Renewal Date: Jul. 28, 2011
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Aug. 19, 2011
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 3198/0369
`
`Date Recorded: Nov. 22, 2005
`
`Supporting
`Documents:
`
`assignment-tm-3198-0369.pdf
`
`Assignment 1 of 1
`
`(cid:160)
`
`Registrant: APOTEX INC.
`
`Pages: 4
`
`Assignor
`
`Name: APOTEX, INC.
`
`Execution Date: Nov. 18, 2005
`
`Legal Entity Type: CORPORATION
`
`Name: APOTEX TECHNOLOGIES, INC.
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`CANADA
`
`Assignee
`
`State or Country
`Where Organized:
`
`CANADA
`
`Address: 150 SIGNET DRIVE
`TORONTO, ONTARIO, CANADA M9L 1T9
`
`Correspondent
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`ROBERT W. ADAMS
`
`901 NORTH GLEBE ROAD
`11TH FLOOR
`ARLINGTON, VA 22203-1808
`
`Domestic
`Representative
`Name:
`
`ROBERT W. ADAMS
`
`Domestic
`Representative
`Address:
`
`901 NORTH GLEBE ROAD
`11TH FLOOR
`ARLINGTON, VA 22203-1808
`
`Domestic Representative
`
`

`
`Int. Cl.: 5
`
`Prior U.S. Cl.: 18
`V
`United States Patent and Trademark Office
`
`Reg. No. 1,162,404
`Registered Jul. 23, 1931
`
`TRADEMARK
`
`Principal Register
`
`APOTEX
`
`Apotex Inc. (Canada corporation)
`406 Ormont Dr.
`‘
`Weston, Ontario, M9L 1N9, Canada
`
`For: MEDICINAL AND PHARMACEUTICAL
`PREPARATIONS, in CLASS 5 (U.S. C]. 18).
`Priority claimed under Sec. 44(d) on Canada
`application No. 417,984, filed Nov. 23, 1977, Reg. No.
`241,324, dated Mar. 21, 1980, expires Mar. 21, 1995.
`
`Ser. No. 162,271, filed Mar. 15, 1978.
`
`ROY H. NEILSON, Primary Examiner
`
`

`
`EXHIBIT 3
`
`Generated on: This page was generated by TSDR on 2016-03-18 15:23:07 EDT
`
`Mark: APOBIOLOGIX A DIVISION OF APOTEX CORP.
`
`US Serial Number: 76713573
`
`US Registration
`Number:
`
`4632563
`
`Register: Principal
`
`Mark Type: Service Mark
`
`Application Filing
`Date:
`
`Feb. 25, 2013
`
`Registration Date: Nov. 04, 2014
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Nov. 04, 2014
`
`Publication Date: Jul. 02, 2013
`
`Notice of
`Allowance Date:
`
`Aug. 27, 2013
`
`Mark Information
`
`Mark Literal
`Elements:
`
`APOBIOLOGIX A DIVISION OF APOTEX CORP.
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`The mark consists of the stylized figure of a human being to the left of a stylized rendering of the word "ApoBiologix" with the letters "A"
`and "B" presented in initial caps and the remaining letters presented in lower case lettering. Beneath separated by a horizontal line the
`length of the wording and flush to the right is the wording "A Division of Apotex Corp." in a smaller font with the letters "A", "D", and "C"
`in the wording featured in initial caps and the remaining letters in lower case.
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Disclaimer: "A DIVISION OF" AND "CORP."
`
`Design Search
`Code(s):
`
`02.01.33 - Grotesque men formed by letters, numbers, punctuation or geometric shapes; Stick figures
`04.07.03 - Geometric figures or combinations of geometric figures representing a person; Geometric figures representing a person;
`Geometric shapes forming a person; Person formed by geometric shapes
`26.01.21 - Circles that are totally or partially shaded.
`26.17.09 - Bands, curved; Lines, curved; Curved line(s), band(s) or bar(s); Bars, curved
`26.17.12 - Angles (geometric); Chevrons
`26.17.13 - Overlined words or letters; Letters or words underlined and/or overlined by one or more strokes or lines; Underlined words
`or letters
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`1162404, 2859839 and others
`
`Goods and Services
`
`Note: The following symbols indicate