Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA796584
`01/23/2017
`
`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
`
`OSI Pharmaceuticals, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`01/22/2017
`
`1 Astellas Way
`Northbrook, IL 60062
`UNITED STATES
`
`Attorney informa-
`tion
`
`Kathleen Gallagher-Duff
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street NW
`Washington, DC 20001
`UNITED STATES
`trademarks@cov.com Phone:2026625299
`
`Applicant Information
`
`Application No
`
`86874198
`
`Publication date
`
`07/26/2016
`
`Opposition Filing
`Date
`
`01/23/2017
`
`Opposition Peri-
`od Ends
`
`01/22/2017
`
`Applicant
`
`TARVEDA THERAPEUTICS, INC.
`
`WATERTOWN, MA 02472
`UNITED STATES
`
`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: Pharmaceuticals, namely, antineoplastics,
`anti-inflammatories, anti-infectives,antibacterial pharmaceuticals, antibiotics, antifungal preparations,
`antivirals, cardiovascular pharmaceuticals, dermatological pharmaceutical products, inhaled pharma-
`ceutical preparations for the treatment of respiratory diseases and disorders, pharmaceutical prepar-
`ations and substances for the treatment of gastro-intestinal diseases, pharmaceutical preparations for
`the treatment and prevention of diseases and disorders of the auto-immune system, the metabolic
`system, the musculo-skeletal system and the genitourinary system, pharmaceutical preparationsfor
`use in hematology and in tissue andorgan transplantation, pharmaceutical preparations for the treat-
`ment of eye diseases and conditions, pharmaceutical preparations for the treatment of heart rhythm
`disorders, pharmaceutical preparations for the treatment of immune system related diseases and dis-
`orders, pharmaceutical preparations for the treatment of kidney diseases, pharmaceutical prepara-
`tions for treating diabetes, pharmaceutical preparations for treating hypertension, pharmaceutical pre-
`parations for treating skin disorders, pharmaceutical preparations for use in dermatology, pharma-
`ceutical preparations for use in urology, pharmaceutical products for ophthalmological use, pharma-
`ceutical products for theprevention and treatment of cancer, pharmaceutical products for the treat-
`ment of bone diseases, pharmaceutical productsfor treating respiratory diseases, pharmaceutical
`products for treating respiratory diseases and asthma, pharmaceuticalpreparations for the treatment
`
`

`

`of sleepdisorders and neurological disorders; nano-particles, namely, those composed ofpolymers,
`therapeutics, or excipients used for medical diagnostic purposes and for the treatment of cancer, in-
`flammation, cardiovascular disorders, central nervous system disorders, acute and chronicpain, epi-
`lepsy, insomnia, infectious diseases, diabetes, impotence, obesity, arthritis and autoimmune dis-
`orders; pharmaceuticals and medicines containing nano-particles, for use for the prevention and/or
`treatment of cancer, cardiovasculardisorders, central nervous system disorders, acute and chronic
`pain, epilepsy, insomnia, infectious diseases, diabetes,impotence, obesity, arthritis and autoimmune
`disorders, and for use as drug delivery agents consisting of substances that facilitate delivery of a
`wide range of pharmaceuticals allowing for controlled absorption and/or controlled release of an act-
`ive ingredient following administration to human and non-human animals for the treatment of cancer,
`cardiovascular disorders, central nervous system disorders, acute and chronic pain, epilepsy, insom-
`nia, infectious diseases, diabetes, impotence, obesity, arthritis and autoimmune disorders; vaccines
`incorporating nano-particles
`
`Class 042. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Pharmaceutical research and development
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2948536
`
`Registration Date
`
`05/10/2005
`
`Word Mark
`
`Design Mark
`
`TARCEVA
`
`Application Date
`
`05/04/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2004/11/23 First Use In Commerce: 2004/11/23
`Pharmaceuticals, namely, an anti-cancercompound
`
`Attachments
`
`76252353#TMSN.png( bytes )
`Notice of Opposition - TARVEDA THERAPEUTICS_.pdf(1068139 bytes )
`
`Signature
`
`/KathleenGallagher-Duff/
`
`Name
`
`Date
`
`Kathleen Gallagher-Duff
`
`01/23/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of:
`
`Serial No. 86/874198
`
`Date of Filing:
`
`January 13, 2016
`
`Mark:
`
`TARVEDA THERAPEUTICS
`
`Date of Publication:
`
`July 26,2016
`
`OSI Pharmaceuticals, LLC,
`
`Opposer,
`
`V.
`
`Opposition No.
`
`Serial No. 86/874198
`
`Tarveda Therapeutics, Inc.
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Opposer OSI Pharmaceuticals, LLC, a Delaware limited liability company located
`
`and doing business at 1 Astellas Way, Northbrook, Illinois 60062, will likely be damaged by
`
`registration of the mark TARVEDA THERAPEUTICS, shown in Serial No. 86/874198, for
`
`pharmaceuticals, namely, antineoplastics, anti-inflammatories, anti-infectives, antibacterial
`
`pharmaceuticals, antibiotics, antifungal preparations, antivirals, cardiovascular pharmaceuticals,
`
`dermatological pharmaceutical products, inhaled pharmaceutical preparations for the treatment
`
`of respiratory diseases and disorders, pharmaceutical preparations and substances for the
`
`treatment of gastro-intestinal diseases, pharmaceutical preparations for the treatment and
`
`prevention of diseases and disorders of the auto-immune system, the metabolic system, the
`
`

`

`musculo-skeletal system and the genitourinary system, pharmaceutical preparations for use in
`
`hematology and in tissue and organ transplantation, pharmaceutical preparations for the
`
`treatment of eye diseases and conditions, pharmaceutical preparations for the treatment of heart
`
`rhythm disorders, pharmaceuticalpreparations for the treatment of immune system related
`
`diseases and disorders, pharmaceutical preparations for the treatment of kidney diseases,
`
`pharmaceutical preparations for treating diabetes, pharmaceutical preparations for treating
`
`hypertension, pharmaceutical preparations for treating skin disorders, pharmaceutical
`
`preparations for use in dermatology, pharmaceutical preparations for use in urology,
`
`pharmaceutical products for ophthalmological use, pharmaceutical products for the prevention
`
`and treatment of cancer, pharmaceuticalproducts for the treatment of bone diseases,
`
`pharmaceutical products for treatingrespiratory diseases, pharmaceutical products for treating
`
`respiratory diseases and asthma, pharmaceutical preparations for the treatment of sleep disorders
`
`and neurological disorders; nano-particles, namely, those composed of polymers, therapeutics, or
`
`excipients used for medical diagnostic purposes and for the treatment of cancer, inflammation,
`
`cardiovascular disorders, central nervous system disorders, acute and chronic pain, epilepsy,
`
`insomnia, infectious diseases, diabetes, impotence, obesity, arthritis and autoimmune disorders;
`
`pharmaceuticals and medicines containing nano-particles, for use for the prevention and/or
`
`treatment of cancer, cardiovascular disorders, central nervous system disorders, acute and
`
`chronic pain, epilepsy, insomnia, infectious diseases, diabetes, impotence, obesity, arthritis and
`
`autoimmune disorders, and for use as drug delivery agents consisting of substances that facilitate
`
`delivery of a wide range of pharmaceuticals allowing for controlled absorption and/or controlled
`
`release of an active ingredient following administration to human and non-human animals for the
`
`treatment of cancer, cardiovascular disorders, central nervous system disorders, acute and
`
`-2 -
`
`

`

`chronic pain, epilepsy, insomnia, infectious diseases, diabetes, impotence, obesity, arthritis and
`
`autoimmune disorders; vaccines incorporating nano-particles, in International Class 5, and
`
`pharmaceutical research and development, in International Class 42, and hereby opposes the
`
`same.
`
`The grounds for opposition are:
`
`1.
`
`Applicant Tarveda Therapeutics, Inc. seeks registration on the Principal
`
`Register of the United States Patent and Trademark Office of the mark TARVEDA
`
`THERAPEUTICS for pharmaceuticals, namely, antineoplastics, anti-inflammatories, anti-
`
`infectives, antibacterial pharmaceuticals, antibiotics, antifungal preparations, antivirals,
`
`cardiovascularpharmaceuticals,dermatological pharmaceutical products, inhaled pharmaceutical
`
`preparations for the treatment of respiratory diseases and disorders, pharmaceutical preparations
`
`and substances for the treatment of gastro-intestinal diseases, pharmaceutical preparations for the
`
`treatment and prevention of diseases and disorders of the auto-immune system, the metabolic
`
`system, the musculo-skeletal system and the genitourinary system, pharmaceutical preparations
`
`for use in hematology and in tissue and organ transplantation, pharmaceutical preparations for
`
`the treatment of eye diseases and conditions, pharmaceutical preparations for the treatment of
`
`heart rhythm disorders, pharmaceutical preparations for the treatment of immune system related
`
`diseases and disorders, pharmaceutical preparations for the treatment of kidney diseases,
`
`pharmaceutical preparations for treating diabetes, pharmaceutical preparations for treating
`
`hypertension, pharmaceutical preparations for treating skin disorders, pharmaceutical
`
`preparations for use in dermatology, pharmaceutical preparations for use in urology,
`
`pharmaceutical products for ophthalmological use, pharmaceutical products for the prevention
`
`and treatment of cancer, pharmaceutical products for the treatment of bone diseases,
`
`- 3 -
`
`

`

`pharmaceutical products for treating respiratory diseases, pharmaceutical products for treating
`
`respiratory diseases and asthma, pharmaceutical preparations for the treatment of sleep disorders
`
`and neurological disorders; nano-particles, namely, those composed of polymers, therapeutics, or
`
`excipients used for medical diagnostic purposes and for the treatment of cancer, inflammation,
`
`cardiovascular disorders, central nervous system disorders, acute and chronic pain, epilepsy,
`
`insomnia, infectious diseases, diabetes, impotence, obesity, arthritis and autoimmune disorders;
`
`pharmaceuticals and medicines containing nano-particles, for use for the prevention and/or
`
`treatment of cancer, cardiovascular disorders, central nervous system disorders, acute and
`
`chronic pain, epilepsy, insomnia, infectious diseases, diabetes, impotence, obesity, arthritis and
`
`autoimmune disorders, and for use as drug delivery agents consisting of substances that facilitate
`
`delivery of a wide range of pharmaceuticals allowing for controlled absorption and/or controlled
`
`release of an active ingredient following administration to human and non-human animals for the
`
`treatment of cancer, cardiovascular disorders, central nervous system disorders, acute and
`
`chronic pain, epilepsy, insomnia, infectious diseases, diabetes, impotence, obesity, arthritis and
`
`autoimmune disorders; vaccines incorporating nano-particles, in International Class 5, and
`
`pharmaceutical research and development, in International Class 42.
`
`2.
`
`This Notice of Opposition is timely. Applicant's intent-to-use
`
`application for TARVEDA THERAPEUTICS (the "TARVEDA THERAPEUTICS
`
`Application") was filed January 13, 2016 and was published for opposition July 26, 2016. On
`
`August 11,2016, Opposer tunely filed with the Trademark Trial and Appeal Board and was
`
`granted a request for an extension to November 23,2016 to file a Notice of Opposition. On
`
`November 14,2016, Opposer filed with the consent of Applicant and was granted an additional
`
`- 4 -
`
`

`

`60-day extension to January 22,2017 to file a Notice of Opposition. Because January 22, 2017
`
`is a Sunday, the deadline for filing the Notice of Opposition is Monday, January 23, 2017.
`
`3.
`
`According to Applicant's website at http://www.tarveda.com/.
`
`Applicant is a biopharmaceutical company that is developing pharmaceuticalproducts to treat
`
`cancers, including small cell lung cancer, and one of its products, which is in a Phase l/2a
`
`clinical trial, is for treatment of small cell lung cancer.
`
`4.
`
`This Notice of Opposition challenges registration of the TARVEDA
`
`THERAPEUTICS mark for all goods and services listed in the TARVEDA THERAPEUTICS
`
`Application.
`
`5.
`
`Founded in 1983, Opposer is a biotechnology company primarily focused
`
`on discovery, development, and commercialization of innovative products for treatment of
`
`cancer.
`
`6.
`
`On November 23, 2004, Opposer or its predecessor in interest commenced
`
`use of its well-known pharmaceutical product TARCEVA, which is used for treatment of non-
`
`small cell lung cancer and pancreatic cancer. Opposer and/or its licensees of the TARCEVA
`
`producthave obtained regulatory approvals for the TARCEVA product in more than 100
`
`countries.
`
`7.
`
`Since its launch in 2004, the TARCEVAproduct has been advertised and
`
`promoted extensively in the United States and internationally.
`
`8.
`
`As a result of regular, extensive, and well-publicized use for over 12
`
`years, the TARCEVA mark has become well known as a mark associated with Opposer, and
`
`Opposer has acquired substantial reputation and goodwill associated with the TARCEVA mark
`
`in the UnitedStates and internationally. Health care providers, pharmacists, the pharmaceutical
`
`-5-
`
`

`

`and medical research communities, and the general public have come to know, rely upon and
`
`recognize the TARCEVAmark as a strong indicator of the source of Opposer's product.
`
`9.
`
`By adopting and using its distinctive and famous TARCEVA mark from
`
`before any date on which Applicant can rely to establish rights in the mark TARVEDA
`
`THERAPEUTICS, Opposer has acquired exclusive rights in its TARCEVA mark which are
`
`superior to any rights that Applicant has in its TARVEDA THERAPEUTICS mark.
`
`10.
`
`In addition to its well-established common law rights in the well-known
`
`and famous TARCEVA mark, Opposer owns an incontestable federal registration on the PTO's
`
`Principal Register for TARCEVA for pharmaceuticals, namely, an anti-cancer compound (Reg.
`
`No. 2,948,536). The registration, which issued May 10, 2005, is valid and subsisting and
`
`therefore is primafacie evidence of Opposer's exclusive right to use its TARCEVA mark in
`
`commerce on the goods specified in Reg. No. 2,948,536. Copies of the registration certificate
`
`and a printout of the status of such registration from the PTO's Trademark Applications and
`
`Registrations Retrieval ("TARR") database are attached as Exhibit A.
`
`11.
`
`Applicant's TARVEDA THERAPEUTICS mark so resembles Opposer's
`
`TARCEVA mark as to be likely, when used on or in connection with the good and services
`
`covered by the TARVEDA THERAPEUTICS Application, to cause consumerconfusion or
`
`mistake or to deceive consumers into believing, erroneously, that the marks and related goods are
`
`associated or affiliated with one another.
`
`12.
`
`The goods and services listed in Applicant's TARVEDA
`
`THERAPEUTICS Application are closely related to and/or similar to Opposer's goods offered
`
`under its TARCEVA mark. Opposer's TARCEVA mark is used to treat non-small celllung
`
`cancer and pancreaticcancer, and Applicant intends to use the TARVEDATHERAPEUTICS
`
`-6-
`
`

`

`mark on and in connection with pharmaceutical products, including for the treatment of cancers
`
`and in particular small cell lung cancer, and in connection with pharmaceutical research and
`
`development.
`
`13.
`
`On information and belief. Applicant's products and services covered by
`
`the TARVEDATHERAPEUTICS Application would travel and be promoted through the same
`
`channels of trade as the goods offered under Opposer'sTARCEVAmark.
`
`14.
`
`Applicant's TARVEDA THERAPEUTICS mark is confusingly similar to
`
`Opposer's TARCEVA mark. The dominant elementof Applicant's mark is the first word
`
`"Tarveda," which Applicant prominently uses by itself, without the word "Therapeutics," in its
`
`domain name TARVEDA.COM and on its website at http://www.tarveda.com .
`
`15.
`
`TARCEVA and TARVEDA are phonetically, visually, and
`
`orthographically similar. Both words contain three syllables; the first syllable in both marks has
`
`the same sound and letters"Tar"; the second syllable in both marks ~ "CE" and "VE" ~ have a
`
`similar sound that consists of two letters that begin with the similar-sounding consonants "C"
`
`and"V," respectively, followed by the letter"E," and are visually similar; and the third and last
`
`syllable in both marks ~ "VA"and "DA" —consists of two letters that begin with the similar-
`
`sounding consonants "V" and "D,"respectively, followed bythe letter "A" and are visually
`
`similar.
`
`16.
`
`Becauseof these similarities, Opposer's TARCEVA mark and Applicant's
`
`TARVEDA THERAPEUTICS mark appear and sound confusingly similar, especially when
`
`encountered in the marketplace.
`
`-7-
`
`

`

`17.
`
`The addition of the descriptive and generic term "Therapeutics" in
`
`Applicant's TARVEDA THERAPEUTICS mark does not lessen the likelihood of confusion
`
`between Opposer's mark TARCEVA and Applicant's mark TARVEDA THERAPEUTICS.
`
`18.
`
`The likelihood of confusion that would result if Applicant's TARVEDA
`
`THERAPEUTICS mark achieves federal registration would be particularly damaging to
`
`Opposer, and the public as a whole, because of the potentially serious consequence of any
`
`likelihood of confusion with respect to pharmaceutical products. Given the possibly harmful
`
`results of confusion between the marks TARCEVA and TARVEDA THERAPEUTICS and
`
`Applicant's intent to use its TARVEDA THERAPEUTICS mark to identify a pharmaceutical
`
`product to treat small cell lung cancer (emphasis added) when Opposer uses its famous
`
`TARCEVA mark to treat non-small cell lung cancer (emphasis added), a higher level of care is
`
`required to prevent confusion.
`
`19.
`
`Given the visual, phonetic, and orthographic similarities between the
`
`marks TARCEVA and TARVEDA THERAPEUTICS and the similar goods and services
`
`identified by the respective marks, those in the relevant public are likely to believe, erroneously,
`
`that the goods and services that Applicant offers and plans to offer in the United States under the
`
`TARVEDA THERAPEUTICS mark are sponsored, endorsed, or approved by Opposer, or are
`
`affiliated, coimected, or associated with Opposer, all to the detriment of Opposer and the public.
`
`20.
`
`Opposer's TARCEVA mark is famous. On information and belief, the
`
`TARCEVA mark was famous before January 13,2016, the filing date of Applicant's
`
`TARVEDA THERAPEUTICS Application.
`
`21.
`
`Applicant's mark TARVEDA THERAPEUTICS is likely to dilute the
`
`distinctive quality of Opposer's well-known and famous TARCEVA mark. Applicant seeks to
`
`-8-
`
`

`

`capitalize on the fame of Opposer's TARCEVA mark and the goodwill associated therewith, and
`
`Applicant's use and proposed registration of the TARVEDA THERAPEUTICS mark is likely to
`
`impair the distinctiveness of Opposer's famous TARCEVA mark and thereby to cause dilution
`
`by blurring of Opposer's famous TARCEVA mark.
`
`22.
`
`Opposer will be damaged by registration of the TARVEDA
`
`THERAPEUTICS mark for all goods and services covered by the TARVEDA THERAPEUTICS
`
`Application because such registration will assist and support Applicant in its confusing,
`
`misleading, and diluting use of the TARVEDA THERAPEUTICS mark and will create statutory
`
`rights in Applicant in violation and derogation of the prior and superior rights of Opposer.
`
`23.
`
`For all the foregoing reasons, registration of the TARVEDA
`
`THERAPEUTICS application should be refused under 15 U.S.C. §§ 1052(d), 1063 and 1125(c).
`
`WHEREFORE, Opposer OSI Pharmaceuticals, LLC prays that this opposition be
`
`sustained and that registration of Application Serial No. 86/874198 be denied.
`
`By:
`
`Kathleen T. Gallagher-Duff
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001-4956
`
`Neil K. Roman
`Covington & Burling LLP
`620 Eighth Avenue
`New York, NY 10018-1405
`
`Attorneys for Opposer
`OSI Pharmaceuticals, LLC
`
`January 23, 2017
`
`-9-
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of:
`
`Serial No. 86/874198
`
`Date of Filing:
`
`January 13, 2016
`
`Mark:
`
`TARVEDA THERAPEUTICS
`
`Date of Publication:
`
`July 26, 2016
`
`OSI Pharmaceuticals, LLC,
`
`Opposer,
`
`V.
`
`Opposition No.
`
`Serial No. 86/874198
`
`Tarveda Therapeutics, Inc.
`
`Applicant.
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing NOTICE OF
`
`OPPOSITION has been served this 23rd day of January, 2017 on Applicant's counsel of record
`
`by emailing said copy to docketing@dtwardlaw.com and jbryan@dtwardlaw.com and by mailing
`
`said copy via First Class Mail, postage prepaid, and properly addressed as follows:
`
`Jennifer F. Bryan, Esq.
`DTWARD, PC
`
`142A Main Street
`
`Groton, MA 01450
`
`Kathleen T. Gallagher-Duff
`Counsel for Opposer OSI Pharmaceuticals, LLC
`
`-10-
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`
`
`

`

`Int a.: 5
`
`Prior U.S. OS.: 6,18,44,46,51, and 52
`
`United States Patent and Trademark Office
`
`Registered May lo, 2005
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`TARCEVA
`
`OSI PHARMACEUTICALS,
`CORPORATION)
`58 SOUTH SERVICE ROAD - SUTTE 110
`MELVILLE, NY 11747
`
`INC.
`
`(DELAWARE
`
`FIRST USE 11-23-2004; IN COMMERCE 11-23-2004.
`
`76-252,353, FILED 54-2001.
`
`FOR: PHARMACEUTICALS, NAMELY, AN
`ANTI-CANCER COMPOUND. IN CLASS 5 (U.S.
`oi'eri^H'W.SlAiro
`
`KAREN K. BUSH, EXAMINING ATTORNEY
`
`

`

`Generated on: This page was generated by TSDR on 2017-01-19 08:53:04 EST
`
`IWarIt: TARCEVA
`
`TARCEVA
`
`Application Filing May 04, 2001
`Date:
`
`Registration Date: May 10,2005
`
`LIVE/REGISTRATION/lssued and Active
`
`The trademarl< application has been registered with the Offtce.
`
`Notice of Dec. 11,2001
`
`Allowance Date:
`
`Mark Information
`
`us Serial Number: 76252353
`
`US Registration 2948536
`
`Number:
`
`Register: Principal
`
`Marie Type: Trademaric
`
`TM5 Common Status
`Descriptor;
`
`Status: The registration has been renewed.
`
`Status Date: Aug. 08, 2014
`
`Publication Date: Sep. 18,2001
`
`Marie Literal TARCEVA
`
`Elements:
`
`Standard Character No
`
`Claim:
`
`Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`Type:
`
`Goods and Services
`
`Note: The following symbols Indicate that the registrant/owner has amended the goods/services:
`
`• Braclcets [..}indicate deleted goods/services;
`• Double parenthesis ((..)) identifyany goods/services not claimed in a Section 15 affidavit of incontestability; and
`• Asterisles *..* identify additional (new) wording in the goods/services.
`
`For: Pharmaceuticals, namely, an anti-cancer compound
`
`International 005 - Primary Class
`Clas8(e8):
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 006, 018, 044, 046, 051,052
`
`First Use: Nov. 23, 2004
`
`Use In Commerce: Nov. 23, 2004
`
`Basis Information (Case Levei)
`
`Filed Use; No
`
`Filed ITU; Yes
`
`Filed 44D; No
`
`Filed 44E; No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E; No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: OSI PHARMACEUTICALS, LLC
`
`

`

`Owner Address: 1 BIOSCIENCE PARK DRIVE
`FARMINGDALE, NEW YORK UNITED STATES 11735
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country DELAWARE
`Where Organized:
`
`Attorney/Correspondence Information
`
`Attorney Name: Kathleen T. Gallagher-Duff
`
`Docket Number: 028411.00052
`
`Attorney of Record
`
`Attorney Primary trademarks@cov.com
`Email Address:
`
`Attorney Email Yes
`Authorized:
`
`Correspondent
`
`Correspondent Kathleen T. Gallagher-Duff
`Name/Address: Covington & Burling LLP
`One CityCenter, 850 Tenth Street, N.W.
`Washington, DISTRICT OF COLUMBIA UNITED STATES 20001
`
`Phone: 202.662.5299
`
`Fax: 202.778.5299
`
`Correspondent e- trademarl<s@cov.com
`mail:
`
`Correspondent e- Yes
`mail Authorized:
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Mar. 19. 2015
`
`ATTORNEY REVOKED AND/OR APPOINTED
`
`Mar 19. 2015
`
`TEAS REVOKE/APPOINT ATTORNEY RECEIVED
`
`Aug. 09. 2014
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Aug. 08. 2014
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Aug 08. 2014
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Aug. 08. 2014
`
`TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED
`
`Jun. 27. 2014
`
`POST REGISTRATION ACTION MAILED - SEC. 8 & 9
`
`Jun. 27. 2014
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jun. 13. 2014
`
`TEAS SECTION 8 & 9 RECEIVED
`
`May 23. 2014
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`May 23. 2014
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Sep. 13. 2011
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Proceeding
`Number
`
`71378
`
`71378
`
`71378
`
`71378
`
`88888
`
`88888
`
`Sep. 13. 2011
`
`Jul. 06. 2011
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`Aug. 20. 2010
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Aug. 20. 2010
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jul. 30. 2010
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Apr. 14. 2008
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Apr. 14. 2008
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Apr. 07. 2008
`
`ATTORNEY REVOKED AND/OR APPOINTED
`
`Apr. 07. 2008
`
`TEAS REVOKE/APPOINT ATTORNEY RECEIVED
`
`May 10. 2005
`
`REGISTERED-PRINCIPAL REGISTER
`
`Feb 24. 2005
`
`LAW OFFICE REGISTRATION REVIEW COMPLETED
`
`Feb 18, 2005
`
`ASSIGNED TO LIE
`
`Feb 16,2005
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Jan. 27, 2005
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Nov 24, 2004
`
`USE AMENDMENT FILED
`
`Aug 13, 2004
`
`EXTENSION 5 GRANTED
`
`Jun. 11, 2004
`
`EXTENSION 5 FILED
`
`Dec. 10, 2004
`
`PETITION TO REVIVE-GRANTED
`
`Nov. 24,2004
`
`PAPER RECEIVED
`
`Jul. 23. 2004
`
`PETITION TO REVIVE-RECEIVED
`
`Jul. 23. 2004
`
`PAPER RECEIVED
`
`68502
`
`68502
`
`88888
`
`78413
`
`78413
`
`65362
`
`65362
`
`65362
`
`65362
`
`65294
`
`

`

`69690
`
`78756
`
`67516
`
`Jul. 14, 2004
`
`CASE FILE IN TICRS
`
`Feb. 11, 2004
`
`EXTENSION 4 GRANTED
`
`Dec. 08. 2003
`
`EXTENSION 4 FILED
`
`Feb. 06. 2004
`
`FAX RECEIVED
`
`Sep 14. 2003
`
`EXTENSION 3 GRANTED
`
`Jun 09. 2003
`
`EXTENSION 3 FILED
`
`Dec 20. 2002
`
`EXTENSION 2 GRANTED
`
`Dec 11. 2002
`
`EXTENSION 2 FILED
`
`Jul. 01,2003
`
`PETITION TO REVIVE-GRANTED
`
`Jun 09,2003
`
`PAPER RECEIVED
`
`Apr 22. 2003
`
`INCOMPLETE PETITION NOTICE MAILED
`
`Apr. 30. 2003
`
`FAX RECEIVED
`
`Jan. 10. 2003
`
`PETITION TO REVIVE-RECEIVED
`
`Apr. 11. 2003
`
`ABANDONMENT - NO USE STATEMENT FILED
`
`Jan. 10. 2003
`
`PAPER RECEIVED
`
`Jan. 13. 2003
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jun. 20. 2002
`
`EXTENSION 1 GRANTED
`
`Jun. 05. 2002
`
`EXTENSION 1 FILED
`
`Jun. 05. 2002
`
`PAPER RECEIVED
`
`May 31. 2002
`
`PAPER RECEIVED
`
`Dec. 11, 2001
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`
`Sep. 18. 2001
`
`PUBLISHED FOR OPPOSITION
`
`Aug 29. 2001
`
`NOTICE OF PUBLICATION
`
`Aug 07. 2001
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jul, 31,2001
`May 24. 2001
`
`ASSIGNED TO EXAMINER
`APPLICANT AMENDMENT PRIOR TO EXAMINATION - ENTERED
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of Section 8 - Accepted
`Continued Use:
`
`Affidavit of Section 15 - Accepted
`Incontestability:
`
`Renewal Date: May 10, 2015
`
`TM Staff and Location Information
`
`TIM Staff information • None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Aug. 08, 2014
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: CONVERSION
`
`Reel/Frame: 4571/0740
`
`Date Recorded: Jun. 28,2011
`
`Supporting assiqnment-tm-4571 -0740.pdf
`Documents:
`
`Registrant: OSI Pharmaceuticals, inc.
`
`Assignment 1 of 1
`
`Pages: 7
`
`Name: OSI PHARMACEUTICALS. INC.
`
`Execution Date: Mar. 31,2011
`
`Assignor
`
`Lagal Entity Type: CORPORATION
`
`Name: OSI PHARMACEUTICALS. LLC
`
`State or Country DELAWARE
`Wliere Organized:
`
`Assignee
`
`

`

`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country DELAWARE
`Where Organized:
`
`Address: 1 BIOSCIENCE PARK DRIVE
`FARMINGDALE, NEW YORK 11735
`
`Correspondent 081 PHARMACEUTICALS, LLC
`Name;
`
`Correspondent 1 BIOSCIENCE PARK DRIVE
`Address: ERIDELMA PASCUAL
`FARMINGDALE. NY 11735
`
`Correspondent
`
`Domestic Representative - Not Found
`
`