Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA774882
`10/05/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`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
`
`Attorney informa-
`tion
`
`10/05/2016
`
`150 Signet Drive
`Toronto, Ontario, M9L1T9
`CANADA
`
`Sheryl L. De Luca
`NIXON & VANDERHYE P.C.
`901 N. Glebe Road, 11th Floor
`Arlington, VA 22203
`UNITED STATES
`nixonptomail@nixonvan.com
`
`Applicant Information
`
`Application No
`
`86647342
`
`Publication date
`
`06/07/2016
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`10/05/2016
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`10/05/2016
`
`NONE
`
`Britannia Pharmaceuticals Limited
`200 Longwater Avenue, Green Park
`Reading, RG26GP
`UNITED KINGDOM
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: pharmaceutical preparations and sub-
`stances for the treatment of Parkinson's Disease
`
`Class 010. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: medical and surgical apparatus and instru-
`ments, namely, apparatus and instruments for injecting pharmaceutical preparations; pharmaceutical
`injectors for medical purposes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`2859839
`
`Application Date
`
`08/25/2003
`
`

`
`No.
`
`Registration Date
`
`07/06/2004
`
`Word Mark
`
`Design Mark
`
`APO
`
`Foreign Priority
`Date
`
`NONE
`
`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
`
`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
`
`U.S. Registration
`No.
`
`4989604
`
`Registration Date
`
`06/28/2016
`
`Application Date
`
`02/09/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`APOTEX CONSUMER PRODUCTS
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2013/04/00 First Use In Commerce: 2013/04/00
`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: 2013/04/00 First Use In Commerce: 2013/04/00
`Promoting the pharmaceutical products of others by advertising and marketing
`Class 042. First use: First Use: 2013/04/00 First Use In Commerce: 2013/04/00
`Drug and pharmaceutical product research and development services
`
`U.S. Application
`No.
`
`85926345
`
`Application Date
`
`05/08/2013
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`05/07/2013
`
`

`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Drug product research development services
`
`76540417#TMSN.png( bytes )
`76713573#TMSN.png( bytes )
`76713572#TMSN.png( bytes )
`86528589#TMSN.png( bytes )
`85926345#TMSN.png( bytes )
`2148-146 Notice of Opposition.pdf(711377 bytes )
`2148-146.Ex 1 Reg 2859839.pdf(146341 bytes )
`2148-146.Ex 2 Reg 1162404.pdf(127696 bytes )
`2148-146.Ex 3 Reg 4634563.pdf(2087368 bytes )
`2148-146.Ex 4 Reg 4621329.pdf(1923717 bytes )
`2148-146.Ex 5 Reg 4989604.pdf(204433 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
`
`/Sheryl L. De Luca/
`
`Name
`
`Date
`
`Sheryl L. De Luca
`
`10/05/2016
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TFHAL AND APPEAL BOARD
`
`2148-146
`
`Apotex Technologies Inc.,
`
`Opposer,
`
`v.
`
`Britannia Pharmaceuticals Limited,
`
`Applicant.
`
`~.._,«~..._.z-_./-../-._r-.../-.../'-.r‘-../
`
`ATTN: Chief Administrative Trademark Judge
`Commissioner for Trademarks
`
`PO. Box 1451
`
`Alexandria, Virginia 223134451
`
`Opposition No.
`Application No. 86/647,342
`Mark: AF’O-GO READY
`
`NOTICE OF OPPOSETION
`
`in the matter of an application for registration of the mark Al"-’O~GO READY,
`
`Seriai No. 86/647,342, filed June 1, 2615 by Britannia Pharmaceuticais Limited
`
`(hereafter "Appiicant"), which was published in the Official Gazette ofJune 7, 2016 in
`
`international Classes 5 and 10, after which Apotex Technologies inc, with an address
`
`at ‘E50 Signet Drive, Toronto, Ontario Canada i\/i9i_1T9 (hereafter “Opposer"), on July 7,
`
`2016 filed a First 30 Day Request for Extension of Time to Oppose which was granted
`
`on that same day; and on August 8, 2016 flied a 60 Day Request for Extension of Time
`
`to Oppose for Good Cause, which was granted that same day. 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 13 of the
`
`Trademark Act otJuiy 5, 1945 (15 U.S.C. §‘i063). Our payment in the amount of $600
`
`is enclosed.
`
`2646864
`
`

`
`As grounds for opposition, it is alleged that:
`
`. Opposer adopted the mark “APO” in 1975 for various medicinai and
`
`pharrnaceuticai preparations in Enternationai Class 5 and has used the mark APO
`
`for these goods in commerce since at least as early as ‘E997.
`
`. Opposer owns and reiies on incontestable U.S. Trademark Registration No.
`
`2859839 for the trademark APO for “i\/Eedicinai and pharmaceutical preparations,
`
`namely, phychotherapeutics (antidepressants, tranquiliizers); antiparkinsonians;
`
`antidiabetics; diuretics; antihypertensives; sedatives; antiemetics; antibacterials;
`
`antibiotics; antiarthritics; anti—inflammatory agents; anticonvulsants;
`
`antiarrhythrnics; uricosurics; xanthine oxidase inhibitors,” in Ciass 5.
`
`. Registration No. 2859839 was filed on August 25, 2003, issued on Juiy 6, 2004
`
`and ciaims a first date of use anywhere of March ‘I975 and first date of use in
`
`commerce of September 1997. This registration is valid, subsisting, unrevoked
`
`and uncanceiled; as such, this registration constitutes conclusive evidence of the
`
`vaiidity of the 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.
`
`Opposer’s ‘839 Registration also constitutes notice to Applicant 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
`
`‘839 Registration obtained from the PTO’s TESS database is attached hereto as
`
`Exhibit 1 and made of record.
`
`2
`
`2s4ess4
`
`

`
`4. Opposer owns and reiies on U.S. Trademark Registration No. 1162404 for the
`
`trademark APOTEX for “ivledicinal and Pharmaceuticat Preparations," in Ciass 5.
`
`5. Registration No. 1162404 was fiied on March 15, 1978 and was issued on July
`
`28, 1981. This registration is vatid, subsisting, unrevoked and uncancelied; as
`
`such, this registration constitutes prima facie evidence of the validity of the
`
`registered mark and of the registration thereof, and of Opeosers 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
`
`‘404 Registration aiso constitutes notice to Applicant of Opposer's claim of
`
`ownership of the mark shown therein as provided in Sections ‘?(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.
`
`6. Opposer owns and relies on US. Trademark Registration No. 4632563 for the
`
`“Drug product research development
`
`
`
`gig tn
`on Of Apmux €,Dr|'Ji
`
`services," in Class 42.
`
`7. Registration No. 4632563 was flied on February 25, 2013, was issued on
`
`November 4, 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 uncanceiied; as such, this registration constitutes prima facie evidence of the
`
`validity of the registered mark and ofthe registration thereof, and of Opposer’s
`
`ownership of the mark shown therein, and of Opposer’s exclusive right to use the
`
`U.)
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`2646864
`
`

`
`registered mark in commerce as provided in Section 33 of the Trademark Act.
`
`Opposer’s ‘563 Registration also constitutes notice to Applicant 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
`
`‘563 Registration obtained from the PTO’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
`
`trademark
`
`tgfiwre-fiiwtiasgtst
`
`for “Drug product research development
`
`services,” in Class 42.
`
`9. Registration No. 4621329 was filed on February 25, 2013, was issued on
`
`October 14, 20% and claims a date of first use anywhere and a date of first use
`
`in commerce of August t8, 2014. This registration is vaiid, subsisting, unrevoked
`
`and uncanceiied; 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 Applicant 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.
`
`10. Opposer is also the owner of Registration No. 4989604 for the mark APOTEX
`
`CONSUMER PRODUCTS for “Printed brochures, cataiogs and promotional
`
`4
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`2646864
`
`

`
`materiais in the nature of parnphiets and fiyers ail reiating to pharmaceutical
`
`products,” in Ciass 16; “Promoting the pharmaceutical products of others by
`
`advertising and marketing," in Class 35; and “Drug and pharmaceutical product
`
`research and development services,” in Class 42. This was filed on February 9,
`
`2015, and issued on June 28, 2016, and claims a first date of use anywhere and
`
`a first date of use in Commerce of Aprii 2013. This registration is valid,
`
`subsisting, unrevoked and uncancelled; as such, this registration constitutes
`
`prima facie evidence of the vaiidity of the 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 rriark in commerce as provided in
`
`Section 33 of the Trademark Act. Opposer’s ‘E304 Registration also constitutes
`
`notice to Appiicant of Opposer’s ciaim of ownership of the mark shown therein as
`
`provided in Sections 7(1)), 22, and 33(a) of the Trademark Act. A true and correct
`
`copy of the specifics of the ‘£504 Registration obtained from the PTO’s TESS
`
`database is attached as Exhibit 5 and made of record.
`
`11.
`
`Opposer is aiso the owner of prior pending Appiication Serial No. 85/926,345 for
`
`the mark AF’OBEOLOGiX for “Drug product research development services,” in
`
`Class 42. This was fiied on May 8, 2013.
`
`12. 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 deveioprnent services.
`
`i3.Since at least as early as December 2011, Opposer has adopted and used the
`
`marks APOPHARMA and APOPHARMA USA for pharmaceuticai preparations,
`
`5
`
`2646864
`
`

`
`namely, prescription drugs for hematological conditions where iron piays a role;
`
`neurodegenerative diseases; and immune—reiated conditions.
`
`‘I4. Since at ieast as eariy as 1997, Opposer has stamped the mark “APO" on many
`
`of its pharmaceuticai capsules and tabtets soid in the United States.
`
`t5.0pposer has approvai for and has launched Parkinson treatments using the
`
`mark “APO” including Selegiiine Capsuies (approved Dec. 4 1998) and
`
`Rivastigmine capsules (approved May 16, 2013).
`
`.
`
`i6.0n June ‘E, 2015, Applicant fiied an application for the mark APO—GO READY for
`
`“pharmaceutical preparations and substances for the treatment of Parkinson's
`
`Disease” in Ciass 5 and “medical and surgical apparatus and instruments,
`
`namely, apparatus and instruments for injecting pharmaceutical preparations;
`
`pharrnaceuticai injectors for medicai purposes” in Ciass 10 (“Appiicants Goods
`
`and Services”). The application was assigned Serial No. 86647342 and has a
`
`priority filing date of January t, 2015.
`
`17.Applicant's filing to register APO—GO READY in connection with Appiicarifs
`
`Goods and Services is without the consent or permission of Opposer.
`
`18.Applicant’s AF’O~GO READY mark of Application Serial No. 86647342 for
`
`Applicants Goods and Services so resembles Opposer‘s 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.
`
`i9.Appiicant is attempting to register the confusingly similar APO—GO READY
`
`trademark for identical and/or highly related goods in Ctasses 5 and 10 in the
`
`5
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`2646864
`
`

`
`same channeis 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.'i"he subject matter of Applicants Goods identified in Application Serial No.
`
`86647342 is in the exact same and/or highly related fields as Opposer’s goods
`
`and services under its APO and APO~derivative marks.
`
`2’i.Appiicatiori Serial No. 86647342 is based on an intent-to—use and foreign filing
`
`basis. Appiicant has not filed a statement of use in this application. Applicants
`
`priority fiting date is after Opposer’s first date of use and use in commerce of its
`
`APO and APOTEX marks of Registration Nos. 2859839, 1162404, 4632563,
`
`4621329, 4989604 and Opposer’s common law uses of APO and APOTEX
`
`marks in connection with Opposer’s goods and services.
`
`22.0n information and belief, Applicant made no use of the mark APO-GO READY
`
`of Appiication Serial No. 86647342 prior to the filing of Opposer’s Registration
`
`Nos. 2859839, 1162404, 4632563, 4621329 or 4989604 or prior to the filing of
`
`Opposers Appiication No. 85926345.
`
`23.0n information and beiief, Appiicant made no use of the mark APO—GO READY
`
`of Application Serial No. 86647342 prior to Opposer’s first date of use of
`
`Opposer’s APO and APO~Deri\/ative trademarks of Registration Nos. 2859839,
`
`1162404, 4632563, 4621329 and 4989604.
`
`24.0n information and belief, Applicant made no use of the mark APO—C-SO READY
`
`of Serial No. 86647342 prior to Opposer’s first date of use in commerce of
`
`Opposer’s APO and APO-Derivative trademarks of Registration Nos. 2859839,
`
`1162404, 4632563, 4621329 and 4989604.
`
`7
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`2646864
`
`

`
`25. Upon information and believe, the parties’ goods and services are being sold or
`
`will be sold in the same channels of trade.
`
`26. By virtue of Opposer’s prior use, advertising and sate 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, 4632563, 4621329 and 4989604 and its
`
`common iaw APO and APO—derivative marks as indications of origin in Opposer,
`
`as a consequence of which Opposer has established valuable goodwiii and
`
`exclusive rights in its APO and APO—derivative trademarks. _
`
`27.The mark APO of Registration No. 2859839, APOTEX of Registration No.
`
`1162404, APOBIOLOGIX A DIVISION OF APOTEX CORP. & design of
`
`Registration No. 4632563, APOi3iOt.OGiX & Design of Registration No.
`
`4,621,329, APOBEOLOGIX of Application No. 85926345, APOTEX CONSUMER
`
`PRODUCTS of Registration No. 4989604, and applicants APO and APO-
`
`derivative common law marks and the mark APO-GO READY of Application
`
`Serial No. 86647342 have the same or highly simiiar connotations when the
`
`marks are considered as a whole.
`
`28.The terms "APO,” “APOTEX,” “APOBIOLOGIX,” “APOPHARIVIA,” and “APO—GO
`
`READY" have similar appearances, pronunciations and connotations and
`
`_cornrnerciaI impressions.
`
`29.The mark APO of Registration No, 2859839, APOTEX of Registration No.
`
`1162404, APOBiOi..OGiX A D|ViSiON OF‘ APOTEX CORP. & design of
`
`Registration No. 4632563, APOBIOLOGIX & Design of Registration No.
`
`3
`
`2646864
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`

`
`4621329, APOBIOLOGIX of Apptication No. 85926345, APOTEX CONSUMER
`
`PRODUCTS of Registration No. 4989604, arid Opposer’s APO and APO-
`
`derivative common law marks and the mark APO—GO READY of Application
`
`Serial No. 86647342 are identical in part in that each include the identicai term
`
`APO.
`
`30.The elements (30 and READY of Applicants mark do not distinguish Applicants
`
`mark from Opposer’s APO and APO»-derivative marks.
`
`31.0pposer’s goods and services sold under its APO and APO-derivative marks and
`
`Applicants goods sold or intended to be offered under the mark APO—GO READY
`
`are virtually identical and/or highly reiated goods and services, which are or are
`
`iikely to be offered through the same or overiapping channeis oftrade to the
`
`same or overlapping classes of purchasers so that purchasers, prospective
`
`purchasers, users and others are likely to be confused, mistaken or deceived into
`
`the belief, contrary to fact, that Applicant's Goods offered under the mark APO-
`
`GO READY 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.
`
`32./Xpplicant is not iawfuily entitied to the registration which it seeks for the reason,
`
`inter alia, that the mark APO—GO READY as used or intended for use for
`
`Applicants Goods and Services so resernbies Opposer‘s previousiy used and
`
`registered marks as to be likeiy to cause confusion, to cause mistake or to
`
`deceive within the meaning of Section 2(d) of the Federai Trademark Act,
`
`thereby damaging Opposer.
`
`9
`
`2646864
`
`

`
`WE-IEREFORE, Opposer prays that the present opposition be sustained and the
`
`registration of APO-GO READY sought by Applicant be refused.
`
`Respectfully submitted,
`
`Apotex Technologies Inc.
`
`Dated:
`
`October 5, 2036
`
`By:
`
`
`' It
`»
`
`
`Sheryl De
`
`Robert Rowan, Esq.
`NIXON & VANDERHYE P.C.
`
`901 North Glebe Road, 11th Floor
`Arlington, Virginia 22201
`Tel: 7'03—8l6—4000
`
`Fax: 703—816—4100
`
`I 0
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`2648864
`
`

`
`CERTJFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing "Notice of
`Opposition" was served upon Applicant at the aédress beiow, by first cfass maii this 5th
`day of October 2016:
`
`KEMBERLY1. SHWIOMURA
`
`Harter Secrest & Emery Lip
`1600 Bausch and Lomb Pl
`
`Rochester, NY 14604-2711
`
`
`
`1 1
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`2646864
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`Status Search SN 76540417
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`EXHIBIT 1
`
`Page 1 of 3
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`issues and appreciates your patience. Please contact us at TMFeedback
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`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2016-10-05 13:08:11 EDT
`
`Mark: APO
`
`US Serial Number: 76540417
`
`Application Filing Date: Aug. 25, 2003
`
`US Registration Number: 2859839
`
`Registration Date: Jul. 06, 2004
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`
`Descriptor:
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jun. 27, 2014
`
`Publication Date: Apr. 13, 2004
`
`Mark Information
`
`Mark Literal Elements: APO
`
`Standard Character Claim: No
`
`Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note:
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`(cid:149) Brackets [..] indicate deleted goods/services;
`
`(cid:149) Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`
`(cid:149) Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Medicinal and pharmaceutical preparations, namely, phychotherapeutics (antidepressants, tranquillizers); antipar
`
`antidiabetics; [ vitamins and mineral dietary supplements; ] diuretics; antihypertensives; sedatives; antiemetics; a
`
`antiarthritics; anti-inflammatory agents; anticonvulsants; antiarrhythmics; uricosurics; xanthine oxidase inhibitors
`
`International Class(es): 005 - Primary Class
`
`U.S Class(es): 006, 018, 044, 046, 051, 05
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Mar. 1975
`
`http://tsdr.uspto.gov/
`
`Use in Commerce: Sep. 1997
`
`

`
`Status Search SN 76540417
`
`Page 2 of 3
`
`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
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: APOTEX TECHNOLOGIES, INC.
`
`Owner Address: 150 SIGNET DRIVE
`
`TORONTO, ONTARIO CANADA M9L 1T9
`
`Amended
`
`Amended
`
`Amended
`
`Amended
`
`Legal Entity Type: CORPORATION
`
`State or Country Where
`
`CANADA
`
`Organized:
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: Robert W. Adams
`
`Docket Number: 2148-69
`
`Correspondent
`
`Correspondent
`
`ROBERT W. ADAMS
`
`Name/Address:
`
`NIXON & VANDERHYE, P.C.
`
`901 NORTH GLEBE RD.
`
`11TH FLOOR
`
`ARLINGTON, VIRGINIA UNITED STATES 22203-1808
`
`Phone: 703-816-4022
`
`Fax: 703-816-4100
`
`Correspondent e-mail: fbe@nixonvan.com
`
`nixonptomail@nixonvan.com
`
`Correspondent e-mail
`
`Yes
`
`Authorized:
`
`Domestic Representative
`
`Domestic Representative
`
`Robert W. Adams
`
`Phone: 703-816-4022
`
`Name:
`
`Fax: 703-816-4100
`
`Domestic Representative e-
`
`fbe@nixonvan.com
`
`Domestic Representative e-
`
`Yes
`
`mail:
`
`mail Authorized:
`
`Prosecution History
`
`Date
`
`Jun. 27, 2014
`
`Description
`
`Proceeding Number
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-
`
`MAILED
`
`Jun. 27, 2014
`
`REGISTERED AND RENEWED (FIRST RENEWAL
`
`69471
`
`- 10 YRS)
`
`Jun. 27, 2014
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC.
`
`69471
`
`9 GRANTED
`
`Jun. 26, 2014
`
`69471
`
`http://tsdr.uspto.gov/
`
`

`
`Status Search SN 76540417
`
`Page 3 of 3
`
`Jun. 10, 2014
`
`Jul. 28, 2010
`
`Jul. 06, 2010
`
`Jul. 06, 2010
`
`Jul. 27, 2010
`
`Jul. 06, 2010
`
`Jul. 06, 2009
`
`Jul. 06, 2004
`
`Apr. 13, 2004
`
`Mar. 24, 2004
`
`Feb. 06, 2004
`
`Feb. 05, 2004
`
`CASE ASSIGNED TO POST REGISTRATION
`
`PARALEGAL
`
`TEAS SECTION 8 & 9 RECEIVED
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC.
`
`64591
`
`15 ACK.
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`64591
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`64591
`
`CASE ASSIGNED TO POST REGISTRATION
`
`64591
`
`PARALEGAL
`
`PAPER RECEIVED
`
`TEAS CHANGE OF CORRESPONDENCE
`
`RECEIVED
`
`REGISTERED-PRINCIPAL REGISTER
`
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`ASSIGNED TO EXAMINER
`
`76936
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of Continued Use: Section 8 - Accepted
`
`Affidavit of Incontestability: 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
`
`Assignment Abstract Of Title Information
`
`Conveyance
`
`Registrant: APOTEX INC.
`
`Party type
`
`Proceeding
`
`Summary
`
`Total Assignments: 1
`
`Assignment 1 of 1
`
`Proceedings
`
`Summary
`
`Number of Proceedings: 1
`
`Type of Proceeding: Opposition
`
`http://tsdr.uspto.gov/
`
`

`
`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
`
`APO
`
`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
`
`

`
`Status Search SN 73162271
`
`EXHIBIT 2
`
`Page 1 of 3
`
`1. TSDR is experiencing intermittent issues displaying certain documents. The issue is being addressed.
`
`2. The Trademark organization is beta testing a next generation examination system. As a result, there may be instances
`where Office actions have unexpected formatting or spacing issues. The Office is working on improvements to resolve these
`issues and appreciates your patience. Please contact us at TMFeedback
`
`STATUS
`
`DOCUMENTS
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2016-10-05 11:09:01 EDT
`
`Mark: APOTEX
`
`No Image exists for this case.
`
`US Serial Number: 73162271
`
`Application Filing Date: Mar. 15, 1978
`
`US Registration Number: 1162404
`
`Registration Date: Jul. 28, 1981
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`
`Descriptor:
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Aug. 19, 2011
`
`Publication Date: May 05, 1981
`
`Mark Information
`
`Mark Literal Elements: APOTEX
`
`Standard Character Claim: No
`
`Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Foreign Information
`
`Foreign Application
`
`417,984
`
`Number:
`
`Foreign Registration
`
`241,324
`
`Number:
`
`Foreign
`
`CANADA
`
`Application/Registration
`
`Country:
`
`Goods and Services
`
`Note:
`
`Foreign Application Filing
`
`Nov. 23, 1977
`
`Date:
`
`Foreign Registration Date: Mar. 21, 1980
`
`Foreign Expiration Date: Mar. 21, 1995
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`(cid:149) Brackets [..] indicate deleted goods/services;
`
`(cid:149) Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`
`http://tsdr.uspto.gov/
`
`

`
`Status Search SN 73162271
`
`Page 2 of 3
`
`(cid:149) Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Medicinal and Pharmaceutical Preparations
`
`International Class(es): 005 - Primary Class
`
`U.S Class(es): 018
`
`Class Status: ACTIVE
`
`Basis: 44(e)
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: No
`
`Filed 44D: Yes
`
`Filed 44E: Yes
`
`Filed 66A: No
`
`Currently Use: No
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: Yes
`
`Currently 66A: No
`
`Amended
`
`Amended
`
`Amended
`
`Amended
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: APOTEX TECHNOLOGIES, INC.
`
`Owner Address: 150 SIGNET DRIVE
`
`TORONTO, ONTARIO CANADA M9L 1T9
`
`Legal Entity Type: CORPORATION
`
`State or Country Where
`
`CANADA
`
`Organized:
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: Robert A. Rowan
`
`Docket Number: 2148-107
`
`Attorney Primary Email
`
`nixonptomail@nixonvan.com
`
`Attorney Email Authorized: Yes
`
`Address:
`
`Correspondent
`
`Correspondent
`
`Robert A. Rowan
`
`Name/Address:
`
`Nixon & Vanderhye, P.C.
`
`901 North Glebe Rd., 11th Floor
`
`Arlington, VIRGINIA UNITED STATES 22203-1808
`
`Phone: 703-816-4000
`
`Fax: 703-816-4100
`
`Correspondent e-mail: nixonptomail@nixonvan.com
`
`Correspondent e-mail
`
`Yes
`
`Authorized:
`
`Domestic Representative
`
`Domestic Representative
`
`Robert W. Adams
`
`Phone: 703-816-4022
`
`Name:
`
`Fax: 703-816-4100
`
`Domestic Representative e-
`
`fbe@nixonvan.com
`
`Domestic Representative e-
`
`Yes
`
`mail:
`
`mail Authorized:
`
`Prosecution History
`
`http://tsdr.uspto.gov/
`
`

`
`Status Search SN 73162271
`
`Page 3 of 3
`
`Date
`
`Sep. 30, 2016
`
`Aug. 19, 2011
`
`Description
`
`Proceeding Number
`
`TEAS SECTION 15 RECEIVED
`
`REGISTERED AND RENEWED (SECOND
`
`67603
`
`RENEWAL - 10 YRS)
`
`Aug. 19, 2011
`
`REGISTERED - SEC. 8 (10-YR)
`
`67603
`
`ACCEPTED/SEC. 9 GRANTED
`
`Aug. 11, 2011
`
`REGISTERED - COMBINED SECTION 8 (10-
`
`67603
`
`Aug. 11, 2011
`
`Aug. 10, 2011
`
`Aug. 10, 2011
`
`YR) & SEC. 9 FILED
`
`PAPER RECEIVED
`
`ATTORNEY REVOKED AND/OR APPOINTED
`
`TEAS REVOKE/APPOINT ATTORNEY
`
`RECEIVED
`
`Aug. 10, 2011
`
`TEAS WITHDRAWAL OF ATTORNEY
`
`Mar. 16, 2009
`
`Oct. 17, 2001
`
`Oct. 17, 2001
`
`RECEIVED-FIRM RETAINS
`
`CASE FILE IN TICRS
`
`REGISTERED AND RENEWED (FIRST
`
`RENEWAL - 10 YRS)
`
`REGISTERED - SEC. 8 (10-YR)
`
`ACCEPTED/SEC. 9 GRANTED
`
`Jul. 27, 2001
`
`REGISTERED - COMBINED SECTION 8 (10-
`
`Sep. 20, 1988
`
`Aug. 29, 1988
`
`YR) & SEC. 9 FILED
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED
`
`RESPONSE RECEIVED TO POST REG.
`
`ACTION
`
`Feb. 23, 1988
`
`POST REGISTRATION ACTION MAILED -
`
`Jul. 27, 1987
`
`Jul. 28, 1981
`
`May 05, 1981
`
`SEC. 8
`
`REGISTERED - SEC. 8 (6-YR) FILED
`
`REGISTERED-PRINCIPAL REGISTER
`
`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 - Click to Load
`
`Proceedings - Click to Load
`
`http://tsdr.uspto.gov/
`
`

`
`Int. Cl.: 5
`
`Prior U.S. Cl.: 18
`
`United States Patent and Trademark Office
`
`Reg. No. 1,162,404
`Registered Jul. 28, 1981
`
`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
`
`1 4/. saznnvxmssg-1‘..;;x—L
`
`

`
`Status Search SN 76713573
`
`EXHIBIT 3
`
`Page 1 of 4
`
`1. TSDR is experiencing intermittent issues displaying certain documents. The issue is being addressed.
`
`2. The Trademark organization is beta testing a next generation examination system. As a result, there may be instances
`where Office actions have unexpected formatting or spacing issues. The Office is working on improvements to reso