Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA749655
`06/01/2016
`
`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
`
`JAZZ PHARMACEUTICALS, INC.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`06/01/2016
`
`3180 Porter Drive
`Palo Alto, CA 94304
`UNITED STATES
`
`Attorney informa-
`tion
`
`Tiffany A. Blofield
`Winthrop & Weinstine, P.A.
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`UNITED STATES
`tblofield@winthrop.com, sbaird@winthrop.com, sbell@winthrop.com, trade-
`mark@winthrop.com, ayoung@winthrop.com, greyes@winthrop.com
`Phone:6126046684
`
`Applicant Information
`
`Application No
`
`86753639
`
`Publication date
`
`02/02/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`06/01/2016
`
`Opposition Peri-
`od Ends
`
`06/01/2016
`
`XIRMA, INC.
`6500 Boeing Dr, Ste. T-3
`El Paso, TX 79925
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 2013/08/01 First Use In Commerce: 2013/09/13
`All goods and services in the class are opposed, namely: Antibiotic ointments; Multipurpose medic-
`ated antibiotic cream, analgesic balm and mentholated salve
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2249959
`
`Registration Date
`
`06/01/1999
`
`Application Date
`
`06/21/1996
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`XYREM
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`pharmaceutical preparation for the treatment of narcolepsy
`
`U.S. Registration
`No.
`
`2423880
`
`Registration Date
`
`01/23/2001
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`10/27/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/23 First Use In Commerce: 1999/02/23
`Pharmaceutical Preparation For The Treatment Of Narcolepsy
`
`U.S. Registration
`No.
`
`2472156
`
`Registration Date
`
`07/24/2001
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`10/27/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/23 First Use In Commerce: 1999/02/23
`Pharmaceutical Preparation For The Treatment Of Narcolepsy
`
`U.S. Registration
`No.
`
`2860730
`
`Registration Date
`
`07/06/2004
`
`Word Mark
`
`XYREM
`
`Application Date
`
`10/17/2001
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`Pharmaceutical preparations for the treatment of diseases of the central nervous
`system and a variety of conditions, symptoms, and diseases, namely, narco-
`lepsy[, fibromyalgia, insomnia and] [ myositis ]
`
`U.S. Registration
`No.
`
`3309255
`
`Registration Date
`
`10/09/2007
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`Pain relief medication; preparation forthe relief of pain; pharmaceutical prepara-
`tions acting on the central nervous system; pharmaceutical preparations for use
`in the treatment and/or management ofsleep disorders, [ chronic fatigue syn-
`drome, drug and alcohol abuse, anxiety, cerebrovascular diseases,] neurological
`disorders, parkinson's disease [, alzheimer's disease, multiple sclerosis, autism,
`depression, inflammatory disorders, irritable bowel disorder, regional ileitis, ul-
`cerative colitis, automimmune inflamatory disorders, endocrine disturbances,and
`diabetes; and pharmaceutical preparations for the purpose of tissue protection
`including protection following hypoxia/anoxia such as in stroke, organ transplant-
`ation, organ preservation, myocardial infarction or ischemia, reperfusion injury,
`and protection following radiation, progeria, or an increased level of intracranial
`pressure, e.g., due to head trauma. ]
`
`U.S. Registration
`
`2867332
`
`Application Date
`
`04/18/2002
`
`

`
`No.
`
`Registration Date
`
`07/27/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`XYREM SUCCESS PROGRAM
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services tophysicians regarding the safe and appro-
`priate use and distribution of medications used to treat sleep disorders; provid-
`ing medical information via telephone and in the form of written educational ma-
`terials to physicians in connection with the safe and appropriate use and distri-
`bution of medication for the treatment ofsleep disorders
`
`U.S. Registration
`No.
`
`2848521
`
`Registration Date
`
`06/01/2004
`
`Application Date
`
`05/28/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`XYREM PATIENT SUCCESS PROGRAM
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services topatients regarding the safe and appropri-
`ate use and distribution of medicationsused to treat sleep disorders; providing
`medical information via telephone and in the form of written educational materi-
`als to patients in connection with the safe and appropriate use and distribution of
`medication for the treatment of sleep disorders
`
`U.S. Registration
`No.
`
`2860906
`
`Registration Date
`
`07/06/2004
`
`Application Date
`
`05/28/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`XYREM SUCCESS PROGRAM FOR PHYSICIANS
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services tophysicians regarding the safe and appro-
`priate use and distribution of medications used to treat sleep disorders; provid-
`ing medical information via telephone and in the form of written educational ma-
`terials to physicians in connection with the safe and appropriate use and distri-
`
`

`
`bution of medication for the treatment ofsleep disorders
`
`U.S. Registration
`No.
`
`2952351
`
`Registration Date
`
`05/17/2005
`
`Application Date
`
`07/02/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`XYREM (SODIUM OXYBATE) ORAL SOLUTION CIII
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2002/10/07 First Use In Commerce: 2002/10/07
`Pharmaceutical preparations for use in the treatment of sleep disorders
`
`U.S. Registration
`No.
`
`3112732
`
`Registration Date
`
`07/04/2006
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`04/13/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2003/04/01 First Use In Commerce: 2004/06/21
`Drug delivery devices
`
`U.S. Registration
`
`3162636
`
`Application Date
`
`12/08/2005
`
`

`
`No.
`
`Registration Date
`
`10/24/2006
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Medical information; providing medical information; and providing health care in-
`formation by telephone and the internet
`
`75577530#TMSN.png( bytes )
`75701032#TMSN.png( bytes )
`76327130#TMSN.png( bytes )
`78769796#TMSN.png( bytes )
`76397391#TMSN.png( bytes )
`76412893#TMSN.png( bytes )
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`76427104#TMSN.png( bytes )
`78400994#TMSN.png( bytes )
`78769631#TMSN.png( bytes )
`Notice of Opposition XIRMA.pdf(5082960 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
`
`/Tiffany A. Blofield/
`
`Name
`
`Date
`
`Tiffany A. Blofield
`
`06/01/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARDzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`In the matter of Application Ser. No.: 86/753,639
`Filed: September 11, 2015
`For the mark: XIRMA
`Published in the Trademark Official Gazette on February 2,2016
`
`JAZZ PHARMACEUTICALS, INC.,
`
`Opposer,
`
`v.
`
`XIRMA, INC.,
`
`Applicant.
`
`Opposition No.
`
`_
`
`NOTICE OF OPPOSITION
`
`Jazz Pharmaceuticals, Inc. ("Opposer") believes that it will be damaged by registration of
`
`the XIRMA mark shown in the Application Serial No. 86/753,639 (the "Application") in
`
`International Class 5 and hereby opposes registration of the Application.
`
`The grounds for opposition are as follows:
`
`1.
`
`Xirma, Inc. ("Applicant") seeks to register XIRMA ("Applicant's Proposed
`
`XIRMA Mark") as a trademark for "Antibiotic ointments; Multipurpose medicated antibiotic
`
`cream, analgesic balm and mentholated salve," in International Class 5.
`
`2.
`
`Applicant's Proposed XIRMA Mark was published for opposition in the
`
`Trademark Official Gazette on February 2, 2016. On March 3, 2016, the Board granted
`
`Opposer's request to extend the time to oppose the registration of Applicant's Proposed XIRMA
`
`Mark until Saturday, April 2, 2016. Thereafter, on April 1, 2016, the Board granted Opposer'szyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`1
`
`

`
`consented request
`
`to extend the time to oppose the registration of Applicant's Proposed XIRMA
`
`Mark until June 1,2016.
`
`3.
`
`Opposer
`
`is focused on improving the lives of medical patients by identifying,
`
`developing and commercializing meaningful products
`
`that address unmet medical needs and
`
`services. These include, among others, products and services for the treatment of neurological,
`
`psychiatric,
`
`cancer, and pain diseases, conditions and disorders.
`
`Through its predecessors
`
`in
`
`interest, Opposer adopted, has used, and continues to use the mark XYREM® in connection with
`
`pharmaceutical
`
`preparations
`
`related to the central nervous
`
`system, among other products and
`
`services.
`
`Applicant seeks to register its mark for the same or similar goods-namely
`
`pharmaceutical preparations for treatment of disorders of the central nervous system.
`
`4.
`
`In privity with its predecessors in interest, Opposer has adopted and has
`
`continuously used the XYREM® mark in connection with pharmaceutical preparations since at
`
`least as early as February 1999.
`
`5.
`
`In addition to owning extensive and strong common law rights in the well-known
`
`and famous XYREM® mark, Opposer is the owner of numerous incontestable federal trademark
`
`registrations for or containing the XYREM® mark in connection with goods and services falling
`
`within a variety of International Classes.
`
`6.
`
`Opposer is the owner of the incontestable United States Trademark Registration
`
`No. 2,249,959 for the mark XYREM® in connection with "pharmaceutical preparation for the
`
`treatment of narcolepsy" in International Class 5, claiming a first use date at least as early as
`
`February 24, 1999. The Registration was issued on the Principal Register on June 1, 1999 and is
`
`incontestable. The filing date and nationwide constructive first use date for this Registration is
`
`June 21, 1996.
`
`2
`
`

`
`7.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,423,880
`
`for
`
`the XYREM® (and Design) mark in connection with "pharmaceutical
`
`preparation for the treatment of narcolepsy"
`
`in International Class 5, claiming a first use date at
`
`least as early as February 23, 1999. The Registration was issued on the Principal Register on
`
`January 23, 2001 and is incontestable. The filing date and nationwide constructive first use date
`
`for this Registration is October 27, 1998.
`
`8.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,472,156
`
`for
`
`the mark XYREM® (and Design)
`
`in connection with "pharmaceutical
`
`preparation for the treatment of narcolepsy"
`
`in International Class 5, claiming a first use date at
`
`least as early as February 23, 1999. The Registration was issued on the Principal Register on
`
`July 24, 2001 and is incontestable. The filing date and nationwide constructive first use date for
`
`this Registration is October 27, 1998.
`
`9.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,860,730 for the mark XYREM® in connection with "pharmaceutical preparations
`
`for the
`
`treatment of diseases of the central nervous system and a variety of conditions,
`
`symptoms, and
`
`diseases, namely, narcolepsy"
`
`in International Class 5, claiming a first use date at least as early
`
`as February 24, 1999. The Registration was issued on the Principal Register on July 6, 2004 and
`
`is incontestable. The filing date and nationwide constructive first use date for this Registration is
`
`October 17,2001.
`
`10.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,309,255 for the mark XYREM® in connection with "pharmaceutical
`
`preparations
`
`acting
`
`on the central nervous
`
`system; pharrnaceutical
`
`preparations for use in the treatment and/or
`
`management of sleep disorders, neurological disorders" in International Class 5, claiming a first
`
`3
`
`

`
`use date at least as early as February 24, 1999. The Registration was issued on the Principal
`
`Register on October 9, 2007. The filing date and nationwide constructive first use date for this
`
`Registration is December 8, 2005.
`
`11.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,867,332 for the mark XYREM SUCCESS PROGRAM® in connection with "providing
`
`telephone support services to physicians regarding the safe and appropriate use and distribution
`
`of medications used to treat sleep disorders; providing medical
`
`information via telephone and in
`
`the form of written educational materials
`
`to physicians
`
`in connection with the safe and
`
`appropriate
`
`use
`
`and distribution
`
`of medication
`
`for
`
`the treatment
`
`of
`
`sleep disorders"
`
`in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on July 27, 2004 and is incontestable. The
`
`filing date and nationwide constructive first use date for this Registration is April 18, 2002.
`
`12.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,848,521 for the mark XYREM PATIENT SUCCESS PROGRAM® in connection with
`
`"providing telephone
`
`support
`
`services to patients
`
`regarding the safe and appropriate use and
`
`distribution
`
`of medications
`
`used to treat sleep disorders; providing medical
`
`information
`
`via
`
`telephone and in the form of written educational materials to patients in connection with the safe
`
`and appropriate use and distribution
`
`of medication
`
`for the treatment of sleep disorders"
`
`in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on June 1, 2004 and is incontestable. The filing
`
`date and nationwide constructive first use date for this Registration is May 28, 2002.
`
`13.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,860,906 for the mark XYREM PHYSICIAN SUCCESS PROGRAM® in connection with
`
`4
`
`

`
`"providing telephone support services to physicians
`
`regarding the safe and appropriate use and
`
`distribution
`
`of medications used to treat sleep disorders; providing medical
`
`information
`
`via
`
`telephone and in the form of written educational materials to physicians
`
`in connection with the
`
`safe and appropriate use and distribution of medication for the treatment of sleep disorders"
`
`in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on July 6, 2004 and is incontestable. The filing
`
`date and nationwide constructive first use date for this Registration is May 28,2002.
`
`14.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,952,351 for the mark XYREM (SODIUM OXYBATE) ORAL SOLUTION CIII® (and
`
`Design)
`
`in connection with "pharmaceutical
`
`preparations
`
`for use in the treatment of sleep
`
`disorders" in International Class 5, claiming a first use date at least as early as October 7, 2002.
`
`The Registration was issued on the Principal Register on May 17, 2005 and is incontestable. The
`
`filing date and nationwide constructive first use date for this Registration is July 2, 2002.
`
`15.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,112,732
`
`for
`
`the mark XYREM® in connection with "drug
`
`delivery
`
`devices"
`
`in
`
`International Class 10, claiming a first use date at
`
`least as early as June 21, 2004. The
`
`Registration was issued on the Principal Register on July 4, 2006 and is incontestable. The filing
`
`date and nationwide constructive first use date for this Registration is April 13, 2004.
`
`16.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,162,636 for the mark XYREM® in connection with "medical
`
`information;
`
`providing
`
`medical
`
`information;
`
`and providing health care information by telephone and the internet"
`
`in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`5
`
`

`
`Registration was issued on the Principal Register on October 24, 2006 and is incontestable. The
`
`filing date for this Registration is December 8, 2005.
`
`17.
`
`Copies of Opposer's
`
`foregoing incontestable registrations
`
`are attached hereto aszyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Exhibit A.
`
`18.
`
`Opposer and its predecessors
`
`in interest have expended considerable time, effort
`
`and expense in promoting, advertising and popularizing the distinctive and famous XYREM®
`
`brand name and the goods and services offered under the XYREM® mark. Physicians, health
`
`care providers, patients, and the general public have come to know, rely upon and recognize the
`
`XYREM® mark as a strong indicator of the source of Opposer's goods and services.
`
`19.
`
`Through its predecessors
`
`in interest, Opposer commenced use of its XYREM®
`
`mark in commerce over sixteen (16) years prior to the September 11, 2015 filing date of the
`
`Application and has constructive use of the XYREM® mark dating to June 21, 1996. Opposer
`
`has continuously used in commerce,
`
`from the dates set forth in the corresponding registrations,
`
`its XYREM® mark.
`
`20.
`
`The goods upon which Applicant
`
`seeks to apply its proposed XIRMA mark are
`
`closely related to and/or similar
`
`to Opposer's goods and services offered under
`
`its XYREM®
`
`mark, and would travel and be promoted through the same channels of trade as the goods and
`
`services offered under Opposer's XYREM® mark.
`
`21.
`
`Attached
`
`as Exhibit B is a representative
`
`sample of use-based
`
`third party
`
`registrations
`
`showing marks where antibiotic ointments, antibiotic creams, or analgesic balms are
`
`offered along with pharmaceutical preparations
`
`for treating the nervous system by a single entity
`
`and under the same name and mark.
`
`6
`
`

`
`22.
`
`Applicant's proposed XIRMA mark so resembles Opposer's XYREM® mark as
`
`to be likely, when used on or in connection with the goods described in Paragraph 1 to cause
`
`confusion, mistake, or to deceive.
`
`23.
`
`Applicant's
`
`proposed XIRMA mark is highly similar
`
`to Opposer's XYREM®
`
`In addition, Applicant's
`mark. Both marks begin with the letter "X" followed by a vowel sound.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`proposed XIRMA mark has an "ROOand an "M," as found in Opposer's XYREM® mark. They
`
`have the same "RM" sound for those letters. These similarities stimulate recall of and likely
`
`confusion with Opposer's well-known XYREM® mark. These similarities are likely to cause
`
`Opposer's XYREM® mark and Applicant's XIRMA mark to appear and sound confusingly
`
`similar, especially when encountered in the marketplace.
`
`24.
`
`Applicant's
`
`specimen filed in connection with the Application shows that
`
`"XIRM" is in the same font and size on the product with the "A" being in a different font and
`
`smaller size. A copy of the Specimen submitted with the Application is attached hereto for your
`
`convenience as ExhibitzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`c.
`
`25.
`
`Because of the smaller and different font for the "A" in the Specimen, consumers
`
`will see the "MOOas the ending of the mark thereby enhancing the likelihood of confusion
`
`between the marks.
`
`26.
`
`The likelihood of confusion that would result
`
`if Applicant's XIRMA mark
`
`achieved registration would be particularly damaging to Opposer, and the public as a whole,
`
`because the consequence of any likelihood of confusion is potentially quite serious in the field of
`
`pharmaceuticals and medical compositions. Given the possibly dire results of any confusion
`
`between the XYREM® mark and the proposed XIRMA mark, an extra measure of care should
`
`be taken to prevent any possible confusion.
`
`7
`
`

`
`27.
`
`Relying on its rights in the XYREM® mark, Opposer has successfully objected to
`
`and has prevented registration
`
`of several other phonetically
`
`and visually similar proposed
`
`trademarks,
`
`including the following marks:
`
`(1) ZYRAB (Aventis-Pasteur),
`
`(2) XILEP (Novartis
`
`AG), (3) XYNAM (Pharmacia),
`
`(4) XYVEL (Bristol-Myers Squibb), (5) ZYDEX (Matsu North
`
`America),
`
`(6) ZIDEX (Matsu North America),
`
`& Co.), (8) ZYMERIZ
`(7) ZYMERYS (Eli LillyzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`(Eli Lilly & Co.), (9) XYFID (VioQuest Pharmaceuticals, Inc.), (10) ZYTAN (Kiel Laboratories,
`
`Inc.), (11) XINAN (Zhejiang Xinan Chemical Industrial Group Co., Ltd.), (12) XYBREX
`
`(Orthocon, Inc.), (13) XIREZ (Hawthorn Pharmaceuticals, Inc.), (14) ZYTOCIN (West Coast
`
`Nutritional, LLC), (15) XYRELIF (Omeros Corporation), (16) ZYRELIF (Omeros Corporation),
`
`(17) ZYSMANTE (Boehringer), (18) XYTEMZO (Bristol-Myers), (19) XYLOX (Freedom
`
`Pharmaceuticals), (20) XYLASTEM (Zeeshan Hoodboy), and (21) SYMREM (Therapeutic
`
`Proteins
`
`International), 25) XIMETH (Nordic Group B.V.);
`
`(26) XELSTREM (Noven
`
`Therapeutics, LLC); (27) XYRALID (Innovus Pharmaceuticals, Inc.); (28) ZINTERIO (Glaxo
`
`Group Ltd.); and (29) ZYSIVA (H. LundbeckzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`A/S aktieselskap).
`
`28.
`
`Given the clear visual and phonetic similarities between the marks in question and
`
`the similar goods offered under the respective marks, those in the relevant public are likely to
`
`mistakenly believe that
`
`the goods Applicant plans to offer in the United States under the
`
`proposed XIRMA mark are sponsored, endorsed or approved by Opposer, or are in some way
`
`affiliated, connected or associated with Opposer, all to the detriment of Opposer. Registration of
`
`this Application should therefore be refused under 15 U.S.C. §1052(d) and 1063.
`
`29.
`
`Opposer's XYREM® mark is famous. Upon information and belief, XYREM®
`
`was famous prior to Applicant's choice to use the XIRMA mark. Further, XYREM® was
`
`8
`
`

`
`famous as early as of the date that Applicant
`
`filed the Application for the XIRMA mark on
`
`September 11, 2015.
`
`In addition to being confusingly similar, Applicant's proposed XIRMA mark is
`30.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`likely to dilute the distinctive quality of Opposer's well-known and famous XYREM® mark.
`
`Registration of Applicant's XIRMA mark should, therefore, be refused not only under 15 U.S.C.
`
`§1052(d), but also under 15 U.S.C. § 1125(c).
`
`31.
`
`Registration of the proposed XIRMA mark would additionally be a source of
`
`damage to Opposer as it would confer upon the Applicant various statutory presumptions to
`
`which it is not entitled in view of Opposer's prior use and registration of the XYREM® mark.
`
`WHEREFORE, Opposer respectfully requests that the Trademark Trial and Appeal
`
`Board sustain its opposition, refuse registration of Application Serial No. 86/753,639 and grant
`
`any other relief that may be just and equitable.
`
`Dated: JunezyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`1,2016
`
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`(612) 604-6400 (Telephone)
`(612) 604-6800 (Facsimile)
`Attorneys for Opposer
`Jazz Pharmaceuticals, Inc.
`
`9
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`861753,639
`the matter of Application Ser. No.:zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`InzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Filed: September 11, 2015
`For the mark: XIRMA
`Published in the Trademark Official Gazette on February 2,2016
`
`JAZZ PHARMACEUTICALS,
`
`INC.,
`
`Opposer,
`
`v.
`
`XIRMA, INC.,
`
`Applicant.
`
`Opposition No.
`
`_
`
`CERTIFICATE OF SERVICE BY FIRST CLASS MAIL
`
`Tiffany A. Blofield declares that on the 15t day of June, 2016, she mailed by United States
`
`mail, first class postage thereon prepaid, a true and correct copy of:
`
`• Notice of Opposition
`
`in the above-captioned
`
`action to the last known address listed in the United States Patent and
`
`Trademark Office TSDRdatabase,
`
`to-wit:
`
`Xirma, Inc.
`6500 Boeing Dr, Ste. T-3
`El Paso, Texas 79925zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`11985835vl
`
`10
`
`

`
`Exhibit A
`Exhibit A
`
`

`
`Int. Cl.: 5
`
`Prior U.S. CIs.: 6, 18, 44, 46, 51, and 52
`United States Patent and Trademark Office
`
`Reg. No. 2,249,959
`Registered June 1, 1999
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`XYREM
`
`ORPHAN MEDICAL,
`PORATION)
`13911RIDGEDALE DRIVE
`MINNETONKA, MN 55305
`
`INC. (MINNESOTA COR-
`
`FIRST USE
`2-24-1999.
`
`2-24-1999;
`
`IN COMMERCE
`
`SN 75-123,252, FILED 6-21-1996.
`
`PREPARATION
`FOR: PHARMACEUTICAL
`FOR THE TREATMENT OF NARCOLEPSY,
`IN
`CLASS 5 (U.S. CLS. 6, 18, 44, 46, 51 AND 52).
`
`LEIGH CAROLINE CASE, EXAMINING AT-
`TORNEY
`
`

`
`Int. Cl.: 5
`
`Prior U.S. CIs.: 6, 18, 44, 46, 51, and 52
`Reg. No. 2,423,880
`and Trademark Office
`United States PatentzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Registered Jan. 23, 2001
`
`TRADEMARK '
`PRINCIPAL REGISTER
`
`ORPHAN MEDICAL, INC. (MINNESOTACORPORA-
`TION)
`13911RIDGEDALEDRIVE
`MINNETONKA,MN 55305
`
`FOR: PHARMACEUTICAL PREPARATION FOR
`THE TREATMENT OF NARCOLEPSY, IN CLASS 5
`(U.S. CLS. 6, 18,44,46,51 AND 52).
`FIRST USE 2-23-1999; IN COMMERCE2-23-1999.
`THE MARK IN THE· DRAWING IS LINED FOR
`THE COLORS BLUE, YELLOW, AND GRAY. THE
`AREA TO THE LEFT OF AND SURROUNDINGTHE
`LETTER "X" CONSISTS OF GRADIENTS OF THE
`
`COLOR YELLOW, REPRESENTEDBY THE COARS-
`ER AND FINER CROSS-HATCHLINING. THE WORD
`MARK. "XYREM"
`IS LINED FOR THE COLOR
`BLUE. THE AREAS BEHIND THE WORK MARK
`"XYREM" ARE LINED FOR THE COLOR GRAY
`TO INDICATEA "DROP SHADOW." THE LINE AT
`THE BOTTOM OF THE MARK IS YELLOW, BUT
`CANNOT BE LINED AS SUCH BECAUSE OF ITS
`SLIGHTDIMENSION.
`
`SN 75-577,530, FILED 10-27-1998.
`
`JEFF DEFORD,EXAMININGATTORNEY
`
`

`
`Int.zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`CI.: 5zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Prior U.S. Cis.: 6, 18, 44, 46, 51, and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,472,156zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`Registered July 24, 2001
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ORPHAN MEDICAL,. INC.
`PORATION)
`13911RIDGEDALE DRIVE
`MINNETONKA, MN 55305
`
`(MINNESOTA COR-
`
`FIRST USE 2-23-1999;IN COMMERCE 2-23-1999.
`
`SN 75-701,032,FILED 10-27-1999.
`
`FOR: PHARMACEUTICAL PREPARATION FOR
`THE TREATMENT OF NARCOLEPSY, IN CLASS 5
`(U.S. CJ;_S.6, 18,44, 46, 51 AND 52).
`
`BARNEY CHARLON, EXAMINING ATTORNEY
`
`

`
`Int. Cl.: 5
`
`Prior U.S. CIs.: 6, 18, 44, 46, 51, and 52
`
`United States Patent
`
`and Trademark Office
`
`Reg. No. 2,860,730
`Registered July 6, 2004
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`XYREMzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`ORHAN MEDICAL,
`PORATION)
`13911RIDGEDALE DRIVE, STE. 250
`MINNETONKA, MN 55305
`
`INC.
`
`(DELAWARE COR-
`
`FOR: PHARMACEUTICAL PREPARATIONS FOR
`THE TREATMENT OF DISEASES OF THE CEN-
`TRAL NERVOUS SYSTEM AND A VARIETY OF
`CONDITIONS,
`SYMPTOMS, AND DISEASES,
`NAMELY, NARCOLEPSY, FIBROMYALGIA,
`IN-
`SOMNIA AND MYOSITIS, IN CLASS 5 (U.S. CLS. 6,
`18,44,46,51 AND 52).
`
`FIRST USE 2-24-1999;IN COMMERCE 2-24-1999.
`
`OWNER OF U.S. REG. NOS. 2,249,959,2,423,880,
`AND 2,472,156.
`
`SN 76-327,130,FILED 10-17-2001.
`
`LEIGH CAROLINE CASE, EXAMINING ATTOR-
`NEY
`
`

`
`Int. Cl.: 5
`
`Prior U.S. as.: 6, 18, 44, 46, 51, and 52
`
`United States Patent
`
`and Trademark Office
`
`Reg. No. 3,309,255
`Registered Oct. 9, 2007
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`XYREMzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`ORPHAN MEDICAL,
`PORATION)
`3180 PORTER DRIVE
`PALO ALTO, CA 94304
`
`INC.
`
`(DELAWARE COR·
`
`FOR: PAIN RELIEF MEDICATION; PREPARA·
`TION FOR THE RELIEF OF PAIN; PHARMACEU·
`TICAL PREPARATIONS
`ACTING ON THE
`CENTRAL NERVOUS SYSTEM; PHARMACEUTI·
`CAL PREPARATIONS FOR USE IN THE TREAT·
`MENT AND/OR MANAGEMENT OF SLEEP
`DISORDERS, CHRONIC FATIGUE SYNDROME,
`DRUG AND ALCOHOL ABUSE, ANXIETY, CERE·
`BROVASCULARDISEASES, NEUROLOGICAL DIS·
`ORDERS, PARKINSON'S DISEASE, ALZHEIMER'S
`DISEASE, MULTIPLE SCLEROSIS, AUTISM, DE·
`PRESSION, INFLAMMATORY DISORDERS, IRRI·
`TABLE BOWEL DISORDER, REGIONAL ILEITIS,
`ULCERATIVE COLITIS, AUTOMIMMUNE INFLA·
`MATORY DISORDERS, ENDOCRINE DISTURBAN·
`CES, AND DIABETES; AND PHARMACEUTICAL
`PREPARATIONS FOR THE PURPOSE OF TISSUE
`PROTECTION INCLUDING PROTECTION FOL·
`
`SUCH AS IN
`LOWING HYPOXIA/ANOXIA
`STROKE, ORGAN TRANSPLANTATION, ORGAN
`PRESERVATION, MYOCARDIALINFARCTION OR
`ISCHEMIA, REPERFUSION INJURY, AND PRO·
`TECTION FOLLOWING RADIATION, PROGERIA,
`OR AN INCREASED LEVEL OF INTRACRANIAL
`PRESSURE, E.G., DUE TO HEAD TRAUMA, IN
`CLASS 5 (U.S. CLS. 6, 18,44,46,51 AND 52).
`
`FIRST USE 2.24·1999; IN COMMERCE 2·24·1999.
`
`THE MARK CONSISTS OF STANDARD CHAR·
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`o\VNER OF u.s. REG. NOS. 2,249,959, 2,867,332,
`AND OTHERS.
`
`SN 78·769,796, FILED 12·8·2005.
`
`KYLE PEETE, EXAMINING ATTORNEY
`
`

`
`Int. Cl.: 44
`
`Prior U.S. as.: 100 and 101
`
`United States Patent
`
`and Trademark Office
`
`Reg. No. 2,867,332
`Registered July 27, 2004
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`XYREM SUCCESS PROGRAMzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`(DELAWARE COR-
`
`FIRST USE 9-23-2002;IN COMMERCE 9-23-2002.
`
`OWNER OF U.S. REG. NOS. 2,249,959,2,423,880,
`AND 2,472,156.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "PROGRAM", APART FROM THE
`MARK AS SHOWN.
`
`SN 76-397,391,FILED 4-18-2002.
`
`LEIGH CAROLINE CASE, EXAMINING ATTOR-
`NEY
`
`INC.
`
`ORPHAN MEDICAL,
`PORATION)
`13911RIDGEDALE DRIVE
`STE, 250
`MINNETONKA, MN 55402
`
`FOR: PROVIDING TELEPHONE SUPPORT SER-
`VICES TO PHYSICIANS REGARDING THE SAFE
`AND APPROPRIATE USE AND DISTRIBUTION OF
`MEDICATIONS USED TO TREAT SLEEP DISOR-
`DERS; PROVIDING MEDICAL INFORMATION VIA
`TELEPHONE AND IN THE FORM OF WRITTEN
`EDUCATIONAL MATERIALS TO PHYSICIANS IN
`CONNECTION WITH THE SAFE AND APPROPRI-
`ATE USE AND DISTRIBUTION OF MEDICATION
`FOR THE TREATMENT OF SLEEP DISORDERS, IN
`CLASS44 (U.S. CLS. 100AND 101).
`
`

`
`Int. Cl.: 44
`
`Prior U.S. Os.: 100 and 101
`
`United States Patent
`
`and Trademark Office
`
`Reg. No. 2,848,521
`Registered June 1, 2004
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`XYREM PATIENT SUCCESS PROGRAMzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`ORPHAN MEDICAL,
`PORATION)
`13911RIDGEDALE DRIVE, STE. 250
`MINNETONKA, MN 55305
`
`INC.
`
`(DELAWARE COR-
`
`FOR: PROVIDING TELEPHONE SUPPORT SER-
`VICES TO PATIENTS AND PHYSICIANS REGARD-
`ING THE SAFE AND APPROPRIATE USE AND
`DISTRIBUTION OF MEDICATIONS USED TO
`TREAT SLEEP DISORDERS; PROVIDING MEDI-
`CAL INFORMATION VIA TELEPHONE AND IN
`THE FORM OF WRITTEN EDUCATIONAL MATE-
`RIALS TO PHYSICIANS AND PATIENTS IN CON-
`NECTION WITH THE SAFE AND APPROPRIATE
`USE AND DISTRIBUTION OF MEDICATION FOR
`THE TREATMENT OF SLEEP DISORDERS,
`IN
`CLASS 44 (U.S. CLS. 100AND 101).
`
`FIRST USE 9-23-2002;IN COMMERCE 9-23-2002.
`
`OWNER OF U.S. REG. NOS. 2,249,959,2,423,880,
`AND 2,472,156.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "PROGRAM", APART FROM THE
`MARK AS SHOWN.
`
`SN 76-412,893,FILED 5-28-2002.
`
`LEIGH CAROLINE CASE, EXAMINING ATTOR-
`NEY
`
`

`
`Int. CI.: 44
`
`Prior U.S. as.: 100 and 101
`
`United States Patent
`
`and Trademark Office
`
`Reg. No. 2,860,906
`Registered July 6, 2004
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`XYREM PHYSICIAN SUCCESS PROGRAMzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`ORPHAN MEDICAL,
`PORATION)
`13911RIDEGALEDRIVE, STE. 250
`MINETONKA, MN 55305
`
`INC.
`
`(DELAWARE COR-
`
`FOR: PROVIDING TELEPHONE SUPPORT SER-
`VICES TO PHYSICIANS REGARDING THE SAFE
`AND APPROPRIATE USE AND DISTRIBUTION OF
`MEDICATIONS USED TO TREAT SLEEP DISOR-
`DERS; PROVIDING MEDICAL INFORMATION VIA
`TELEPHONE AND IN THE FORM OF WRITTEN
`EDUCATIONAL MATERIALS TO PHYSICIANS IN
`CONNECTION WITH THE SAFE AND APPROPRI-
`ATE USE AND DISTRIBUTION OF MEDICATION
`FOR THE TREATMENT OF SLEEP DISORDERS, IN
`CLASS 44 (U.S. CLS. 100AND 101).
`
`FIRST USE 9-23-2002;IN COMMERCE 9-23-2002.
`
`OWNER OF U.S. REG. NOS. 2,249,959,2,423,880,
`AND 2,472,156.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "PROGRAM", APART FROM THE
`MARK AS SHOWN.
`
`SN 76-412,894,F