Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA738080
`04/05/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
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`Opposer Information
`
`Name
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`Gilead Sciences Ireland UC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`05/25/2016
`
`IDA Business and Technology Park
`Carrigtohill, CO. Cork, 000000
`IRELAND
`
`LORI F MAYALL
`GILEAD SCIENCES INC
`333 LAKESIDE DR
`FOSTER CITY, CA 94404
`UNITED STATES
`trademarks@gilead.com, lori.mayall@gilead.com
`
`Applicant Information
`
`Application No
`
`86737225
`
`Publication date
`
`01/26/2016
`
`Opposition Filing
`Date
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`Applicant
`
`04/05/2016
`
`Opposition Peri-
`od Ends
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`05/25/2016
`
`TaiRx, Inc.
`San-Chung Rd., Nankang Business Park
`Taipei, 11560
`TAIWAN
`
`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: Agricultural biopesticides; Biological prepar-
`ations for the treatment of chronics, tumors, cancers, human diseases; Chemical preparations for
`pharmaceutical ormedical purposes, namely, for chronics,tumors, cancers, human diseases; Chemic-
`al preparations for sanitary use; Clinical medical reagents; Diagnostic preparations for medical pur-
`poses; Diagnostic preparations for medical purposes for detecting the presence of malignant, inflam-
`matory and autoimmune disorders and conditions and tissue trauma in humans; Dietary and nutrition-
`al supplements; Dietary food supplements; Dietary supplements; Dietetic foods, namely, pasta,
`crackers, etc. adapted for medical use; Food supplements; Food supplements for humans, teen-
`agers, dogs, or treating nausea, treating fatigue; Health food supplements; Herbal supplements;
`Medicinal herbal preparations; Medicinal herbs; Natural herbal supplements; Nutritional supplements;
`Pharmaceutical preparations for animal skincare; Vitamin supplements
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Registration barred by claim or issue preclusion
`
`Mayer/Berkshire Corp. v. Berkshire Fashions Inc.
`424 F.3d 1229,76 USPQ2d 1310 (Fed. Cir.
`
`

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`Mark Cited by Opposer as Basis for Opposition
`
`2005)
`
`U.S. Registration
`No.
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`4371363
`
`Registration Date
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`07/23/2013
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`Word Mark
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`Design Mark
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`SELNISA
`
`Application Date
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`11/07/2012
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`Foreign Priority
`Date
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`08/30/2012
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`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceuticals, namely antivirals; anti-inflammatories; pharmaceutical prepar-
`ations for the treatment of cardiovascular diseases and disorders; pharmaceutic-
`alpreparations for the treatment of oncological diseases and disorders; pharma-
`ceutical preparations for the treatment of respiratory diseases and disorders;
`pharmaceutical preparations for the treatment of liver diseases and disorders;
`pharmaceutical preparations for the prevention and treatment of hepatitis and
`HIV/AIDS; anti-infectives
`
`Attachments
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`85773855#TMSN.png( bytes )
`NOO re SELNITE Round 2- New.pdf(250178 bytes )
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`Certificate of Service
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`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.
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`Signature
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`/lfm/
`
`Name
`
`Date
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`LORI F MAYALL
`
`04/05/2016
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 86/737,225
`For the Trademark SELNITE
`Published in the Official Gazette on January 26, 2016
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`Opposition No.
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`
`)
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`GILEAD SCIENCES IRELAND UC,
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`Opposer,
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`TAIRX, INC.,
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`Applicant.
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`__________________________________________)
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`NOTICE OF OPPOSITION
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`Opposer Gilead Sciences Ireland UC (“Gilead” or “Opposer”), an Irish unlimited
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`
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`company, with a mailing address of IDA Business and Technology Park, Carrigtohill, CO. Cork,
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`Ireland, believes that it will be damaged by the issuance of a registration for the mark SELNITE
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`(the “SELNITE Mark” or “Applicant’s Mark”), as applied for in Application Serial No.
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`86/737,225, filed on August 26, 2015 by TaiRx, Inc., (“Applicant”). Applicant is, upon
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`information and belief, a Taiwan corporation with a mailing address of San-Chung Rd., Nankang
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`Business Park, Taipei 11560, Taiwan.
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`
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`As grounds for opposition, Gilead alleges that:
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`1.
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`Gilead is one of the world’s largest biopharmaceutical companies, dedicated to
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`discovering, developing and marketing medications to treat a variety of human diseases, ranging
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`from HIV to liver disease to cardiovascular disease and other infectious diseases.
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`2.
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`Gilead owns the U.S. registration for the mark SELNISA in connection with
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`“pharmaceuticals, namely antivirals; anti-inflammatories; pharmaceutical preparations for the
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`

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`treatment of cardiovascular diseases and disorders; pharmaceutical preparations for the treatment
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`of oncological diseases and disorders; pharmaceutical preparations for the treatment of
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`respiratory diseases and disorders; pharmaceutical preparations for the treatment of liver diseases
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`and disorders; pharmaceutical preparations for the prevention and treatment of hepatitis and
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`HIV/AIDS; anti-infectives” at Registration No. 4,371,363 and in class 5, with a priority date of
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`August 30, 2012 (“Opposer’s Mark” or the “SELNISA Mark”). A true and correct copy of its
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`registration certificate is attached hereto as Exhibit A and is incorporated by reference as though
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`fully set forth herein.
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`3.
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`On January 2, 2014, Applicant filed an intent-to-use application for the mark
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`SELNITE for: “Agricultural biopesticides; Biological preparations for the treatment of tumors
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`and cancers; Chemical preparations for pharmaceutical or medical purposes, namely, for
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`treatment of tumors and cancers; Chemical preparations for sanitary use; Clinical medical
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`reagents; Diagnostic preparations for medical purposes; Diagnostic preparations for medical
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`purposes for detecting the presence of malignant, inflammatory and autoimmune disorders and
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`conditions and tissue trauma in humans; Dietary and nutritional supplements; Dietary food
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`supplements; Dietary supplements; Dietetic foods, namely, pasta, crackers, rice and bread
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`adapted for medical use; Food supplements; Food supplements for humans, teenagers, and dogs,
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`and food supplements for treating nausea and treating fatigue; Health food supplements; Herbal
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`supplements; Medicinal herbal preparations; Medicinal herbs; Natural herbal supplements;
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`Nutritional supplements; Pharmaceutical preparations for animal skincare; Vitamin supplements”
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`in class 5 (Ser. No. 86/155,845) (“Applicant’s Jan 2014 Application for the SELNITE Mark”).
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`4.
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`Applicant’s Jan 2014 Application for the SELNITE Mark published in the
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`Official Gazette on November 18, 2014.
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`

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`5.
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`On December 19, 2014, Opposer filed a Notice of Opposition against Applicant’s
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`Jan 2014 Application for the SELNITE Mark (“Notice of Opposition”).
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`6.
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`On February 25, 2015, the Board issued a notice of default to Applicant because
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`no answer had been filed in response to Opposer’s Notice of Opposition.
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`7.
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`On April 7, 2015, the Board entered judgment by default against the Applicant,
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`sustaining Opposer’s opposition, and refusing to register the SELNITE mark because no
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`response to the notice of default was filed (the “Board’s Apr 2015 Order”). A true and correct
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`copy of the judgment is attached hereto as Exhibit B.
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`8.
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`On August 26, 2015, Applicant filed another intent-to-use application for the
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`mark SELNITE for “Agricultural biopesticides; Biological preparations for the treatment of
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`chronics, tumors, cancers, human diseases; Chemical preparations for pharmaceutical or medical
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`purposes, namely, for chronics, tumors, cancers, human diseases; Chemical preparations for
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`sanitary use; Clinical medical reagents; Diagnostic preparations for medical purposes; Diagnostic
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`preparations for medical purposes for detecting the presence of malignant, inflammatory and
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`autoimmune disorders and conditions and tissue trauma in humans; Dietary and nutritional
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`supplements; Dietary food supplements; Dietary supplements; Dietetic foods, namely, pasta,
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`crackers, etc. adapted for medical use; Food supplements; Food supplements for humans,
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`teenagers, dogs, or treating nausea, treating fatigue; Health food supplements; Herbal
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`supplements; Medicinal herbal preparations; Medicinal herbs; Natural herbal supplements;
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`Nutritional supplements; Pharmaceutical preparations for animal skincare; Vitamin supplements”
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`in class 5 (“Applicant’s Aug 2015 Application for the SELNITE Mark”).
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`

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`9.
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`Gilead is not affiliated or connected with Applicant or its goods; nor has Gilead
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`endorsed or sponsored Applicant or its goods. Applicant applied for registration of the
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`SELNITE Mark twice without the consent or agreement of Opposer.
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`COUNT I
`Applicant’s Aug 2015 Application for the SELNITE Mark Is Barred By Claim Preclusion
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`Opposer re-alleges paragraphs 1-9 as if fully set forth herein.
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`10.
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`11.
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`The SELNITE Mark is subject to Applicant’s Aug 2015 Application is identical
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`to the SELNITE mark subject to App. Ser. No. 86/155,845 and the Board’s Apr 2015 Order
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`refusing to register the SELNITE mark.
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`12.
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`The parties in this opposition are identical to the parties involved in the
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`proceeding that resulted in the Board’s Apr 2015 Order.
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`13.
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`The transactional facts which are the basis of Opposer’s claim in this proceeding
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`are identical to those that formed the basis of the prior Board proceeding, namely, the claim is
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`based upon Applicant’s attempted registration of the mark SELNITE for the same goods.
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`14.
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`Applicant’s Aug 2015 Application for the SELNITE Mark is barred by claim
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`preclusion. See Jet, Inc. v. Sewage American Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856
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`(Fed. Cir. 2000).
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`
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`COUNT II
`Likelihood of Confusion
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`15.
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`Opposer re-alleges paragraphs 1-14 as if fully set forth herein.
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`16.
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`The priority date for Opposer’s Mark is well prior to Applicant’s Aug 2015
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`Application for the SELNITE Mark or, on information and belief, any actual use of the
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`SELNITE Mark in commerce.
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`

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`17.
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`Applicant’s SELNITE Mark is similar to Opposer’s SELNISA Mark in
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`appearance, sound, sight, and commercial impression. In fact, there are only two marks at the
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`entire USPTO register that are alive in Class 5 and begin with the identical “SELNI” two
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`syllables. Those two marks are the marks at issue in this opposition. A true and correct copy of
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`the TESS results from a “SELNI$” search in class 5 at the USPTO are attached here to as Exhibit
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`C.
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`18.
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`The goods described in Applicant’s Aug 2016 Applicant for the SELNITE Mark
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`are the same as and/or related to goods identified in Opposer’s trademark registration for
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`Opposer’s Mark.
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`19.
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`Applicant’s SELNITE Mark suggests an affiliation or connection between
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`Applicant and Gilead where none exists.
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`20.
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`Gilead has no control over the nature and quality of the goods that will be offered
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`under the SELNITE Mark and the value of Gilead’s SELNISA Mark would be jeopardized by
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`the registration of the SELNITE Mark.
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`21.
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`Applicant’s Mark so resembles Opposer’s Mark as to be likely to cause confusion
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`or to cause mistake or to deceive. Thus, the SELNITE Mark is unregistrable under 15 U.S.C.
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`§1052.
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`22.
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`Registration of Applicant's Mark would be a further source of damage to Gilead
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`because it would confer upon Applicant various statutory presumptions to which it is not entitled
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`in view of Opposer's prior registration of the SELNISA Mark.
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`23.
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`On information and belief, Applicant was aware of Opposer prior to its adoption
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`of the SELNITE Mark.
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`

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`24.
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`On information and belief, Applicant was aware of Opposer’s SELNISA Mark
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`prior to its adoption of the SELNITE Mark.
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`WHEREFORE, Opposer prays that said application Serial No. 86/737,225 be rejected,
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`that no registration be issued, and that this Opposition be sustained in favor of Opposer. This
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`
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`Respectfully submitted,
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` By: /s/ Lori F. Mayall
`
` Lori F. Mayall, Esq.
`
` Gilead Sciences, Inc.
`
` 333 Lakeside Dr.
`
` Foster City, CA 94404
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` (650) 378-2184 telephone
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` (650) 578-9264 telefax
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` lori.mayall@gilead.com
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`Notice of Opposition is submitted electronically.
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`Date: April 5, 2016
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`CERTIFICATE OF TRANSMITTAL AND SERVICE
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`I hereby certify that this Notice of Opposition is being electronically transmitted in PDF
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`format to the Trademark Trial and Appeal Board through the Electronic System for Trademark
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`Trials and Appeals (ESTTA) on the date indicated below.
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`I hereby further certify that on the date indicated below, a true and correct copy of this
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`Notice of Opposition was placed in the United States Mail, postage prepaid, addressed to the
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`applicant and the correspondent for the subject application listed in the USPTO’s online database
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`as follows:
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`TaiRx, Inc.
`San-Chung Rd.
`Nankang Business Park
`Taipei 11560
`TAIWAN
`
`and
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`TaiRx, Inc.
`San Ho Rd., San-Chung Dist.,
`7F, No. 6, Lane 20, Sec. 4
`New Taipei
`Taiwan 241
`jason763@ms2.kntech.com.tw (courtesy copy sent via email)
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`Date: April 5, 2016
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` /s/ Lori F. Mayall_________
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`Lori F. Mayall
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`

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`EXHIBIT A
`EXHIBIT A
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`

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`SELNISA
`
`Reg. No. 4,371,363
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`Registered July 23, 2013
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`GILEAD SCIENCES LIMITED (IRELAND COMPANY)
`IDA BUSINESS AND TECHNOLOGY PARK
`CARRIGTOHILL, CO. CORK, IRELAND
`
`Int. Cl.: 5
`
`TRADEMARK
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`PRINCIPAL REGISTER
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`FOR: PHARIWACEUTICALS, NAMELY ANTIVIRALS; ANTI-INFLAMMATORIES; PHAR-
`MACEUTICAL PREPARATIONS FOR TIIE TREATMENT OF CARDIOVASCULAR DISEASES
`AND DISORDERS; PHARMACEUTICAL PREPARATIONS FOR THE TREATMENT OF
`ONCOLOGICAL DISEASES AND DISORDERS; PHARMACEUTICAL PREPARATIONS FOR
`THE TREATMENT OF RESPIRATORY DISEASES AND DISORDERS; PHARIWACEUTICAL
`PREPARATIONS FOR TI IE TREATMENT OF LIVER DISEASES AND DISORDERS; PIIAR-
`MACEUTICAL PREPARATIONS FOR THE PREVENTION AND TREATMENT OF HEPAT-
`ITIS AND HIV/AIDS; ANTI—INFECTIVES, IN CLASS 5 (U.S. CLS. 6, 18, 44, 46, 51 AND 5- .
`
`TIIE MARK CONSISTS OF STANDARD CIIARACTERS WITIIOUT CLAIM TO ANY PAR-
`"ICULAR FONT, STYLE, SIZE, OR COLOR.
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`PRIORITY CLAIMED UNDER SEC. 44(D) ON IRELAND APPLICATION NO. 2012/01486,
`FILED 8-30-2012, REG. NO. 247711, DATED 1-31-2013, EXPIRES 8-29-2022.
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`SER. NO. 85—773,855, FILED 11-7-2012.
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`CURTIS FRENCII. EXAMINING ATTORNEY
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`Acting Directnl’ ofthe United States Patent and Tlademalk Office
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`

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`EXHIBIT B
`EXHIBIT B
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: April 7, 2015
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`Opposition No. 91220005
`
`Gilead Sciences Ireland UC
`
`v.
`
`
`TaiRx, Inc.
`
`
`
`
`
`
`
`emy
`
`
`
`
`
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`By the Trademark Trial and Appeal Board:
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`On February 25, 2015, the Board issued a notice of default to Applicant because
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`no answer had been filed.
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`No response to the notice of default has been filed.
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`Accordingly, judgment by default is hereby entered against Applicant, the
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`opposition is sustained, and registration to Applicant is refused. See Fed. R. Civ. P.
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`55(b) and Trademark Rule 2.106(a).
`
`
`
`

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`EXHIBIT C
`EXHIBIT C
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`

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