Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA862393
`
`Filing date:
`
`12/04/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91234098
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`DERMAVITA limited partnership
`
`TANJA PROEHL
`GREER BURNS & CRAIN LTD
`300 SOUTH WACKER DRIVE, SUITE 2500
`CHICAGO, IL 60606
`UNITED STATES
`Email: aziegler@gbc.law, tproehl@gbc.law, tmdocket@gbclaw.net
`
`Motion to Amend/Amended Answer or Counterclaim
`
`Amy C. Ziegler
`
`aziegler@gbc.law, amartin@gbc.law, tproehl@gbc.law, tmdocket@gbclaw.net
`
`/Amy C. Ziegler/
`
`12/04/2017
`
`DERMAVITA First Amended Answer and Counterclaims.pdf(196295 bytes )
`DERMAVITA First Amended Answer and Counterclaims - REDLINE.pdf(208453
`bytes )
`Exhibit 1.pdf(523174 bytes )
`Exhibit 2.pdf(510417 bytes )
`Exhibit 3_Juv Volift specimen.pdf(1466059 bytes )
`Exhibit 3a_FDA Dermal Fillers.pdf(224344 bytes )
`Exhibit 4.pdf(2277815 bytes )
`Exhibit 4a.pdf(660849 bytes )
`Exhibit 5_Juv specimen.pdf(251310 bytes )
`Exhibit 6_Juv Voluma specimen.pdf(188669 bytes )
`Exhibit 7_Ownership.pdf(438827 bytes )
`Exhibit 8_Ownership.pdf(159479 bytes )
`Exhibit 9_Ownership.pdf(171597 bytes )
`Exhibit 10_Ownership.pdf(168492 bytes )
`Exhibit 11_Ownership.pdf(165690 bytes )
`Exhibit 12_Ownership.pdf(171701 bytes )
`Exhibit 13_Ownership.pdf(227142 bytes )
`Exhibit 14_Directions for Use.pdf(224976 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial Number 79/975,292
`Published in the Official Gazette on April 11, 2017
`
`
`
`ALLERGAN, INC.,
`
`
`
`
`
`
`Opposer and Registrant,
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`DERMAVITA limited partnership
`
`
`
`
`
`
`Applicant and Petitioner
`
`
`
`
` 
` 
` 
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No.:
`
`
`
`Cancellation No.:
`Registration Nos.:
`
`
`
`
`
`
`
`
`
`
`91234098
`
`4,380,506,
`4,380,507,
`3,706,974 and
`4,481,317
`
`FIRST AMENDED ANSWER TO NOTICE OF OPPOSITION,
`AFFIRMATIVE DEFENSES AND COUNTERCLAIMS
`
`
`
`Box TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`Dear Sir or Madam:
`
`Applicant, DERMAVITA limited partnership, by and through its undersigned counsel
`hereby answers the Notice of Opposition by addressing each allegation and files affirmative
`defenses, as well as counterclaims against Opposer’s pleaded U.S. Trademark Registration Nos.
`4380506, 4380507, 3706974 and 4481317.
`
`
`
`
`ANSWER
`
`1. Opposer is a corporation organized and existing under the laws of the State of
`Delaware, with a place of business at 2525 Dupont Drive, Irvine, California 92612. Opposer is a
`
` 
`
`(cid:1005) 
`
`

`

`multi-specialty health care company and has been for many years, engaged in the development
`and commercialization of specialty pharmaceutical, biologics, medical devices and over- the-
`counter products for the ophthalmic, neurological, medical aesthetics, medical dermatology,
`breast aesthetics, urological and other specialty markets in more than 100 countries around the
`world. Since at least 2007, Opposer and its subsidiaries and predecessors-in-interest have
`continuously used JUVÉDERM-formative marks (the "JUVÉDERM Marks") in connection with
`a line of injectable dermal fillers and related services (the "JUVÉDERM Products").
`
`RESPONSE:
`
`
`Applicant lacks knowledge or information sufficient to form a belief about the truth of
`the allegations of this paragraph with regard to the Opposer’s business and therefore denies
`same. Applicant denies that since at least 2007, Opposer and its subsidiaries and predecessors-in-
`interest have continuously used JUVÉDERM-formative marks in connection with a line of
`injectable dermal fillers and related services. To the contrary, the records on the USPTO
`database show that Opposer’s pleaded trademark registrations for the marks JUVEDERM
`VOLIFT, JUVEDERM VOLBELLA and JUVEDERM VOLUMA state a date of first use of
`September 13, 2012 for the JUVEDERM VOLIFT mark, Reg. No. 4380506; February 19, 2013
`for the JUVEDERM VOLBELLA mark, Reg. No. 4380507; and December 2, 2013 for the
`JUVEDERM VOLUMA mark, Reg. No. 4481317. See Exhibit 1. This contradicts Opposer’s
`statement in paragraph 1.
`
`2. Opposer directly, and through its subsidiaries, owns all right, title and interest in and to
`the JUVÉDERM Marks, as well as the following United States registrations on the Principal
`Register:
`
`a. Registration No. 3,706,974, granted November 3, 2009, for the mark JUVEDERM in
`International Class 5 for ''pharmaceutical preparations for the treatment of glabellar lines, facial
`wrinkles, asymmetries and defects and conditions of the human skin, all to be sold and marketed
`only to licensed physicians, surgeons, and healthcare professionals."
`
`b. Registration No. 4,380,506, granted August 6, 2013, for the mark JUVEDERM
`VOLIFT in International Class 5 for "Pharmaceutical preparations for the treatment of glabellar
`
` 
`
`(cid:1006) 
`
`

`

`lines, facial wrinkles, asymmetries and defects and conditions of the human skin; biological
`dermal implants, namely, visco-supplementation solutions for filling wrinkles."
`
`c. Registration No. 4,380,507, granted August 6, 2013, for the mark JUVEDERM
`VOLBELLA in International Class 5 for "Pharmaceutical preparations for the treatment of
`glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin;
`biological dermal implants, namely, visco-supplementation solutions for filling wrinkles."
`
`d. Registration No. 4,481,317, granted February 11,2014, for the mark JUVEDERM
`VOLUMA in International Class 5 for "Pharmaceutical preparations for the treatment of
`glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin;
`biological dermal implants, namely, visco-supplementation solutions for filling wrinkles."
`
`All of these registrations are valid and subsisting and Registration Nos. 3463915 and
`3706974 have become incontestable. Copies of current printouts of information from the
`electronic database records of the USPTO showing the current status and title of these
`registrations are attached hereto as Exhibit 1 and are incorporated by reference herein as if set
`forth in full.
`
`RESPONSE:
` 
`
`Applicant lacks knowledge or information sufficient to form a belief about the truth of
`the allegations of this paragraph and therefore denies same. Further, Applicant has reason to
`believe that Opposer’s above referenced marks were not in use in the United States at the time of
`filing the required statements of use and that Opposer knowingly and with an intent to deceive
`made false use statements. The registrations were obtained based on these fraudulent statements.
`In addition, Applicant has reason to believe that Opposer is not the rightful owner of the
`registrations.
`
`
`
`3. In addition to using its JUVÉDERM Marks on and in connection with its JUVÉDERM
`Products, since long prior to the filing of the Application at issue Opposer has been providing
`advertising services for others under the JUVÉDERM Marks.
`
` 
`
`(cid:1007) 
`
`

`

`RESPONSE:
`
`
`Applicant lacks knowledge or information sufficient to form a belief about the truth of
`the allegations of this paragraph and therefore denies same.
`
`
`
`4. From a time long prior to the filing of the Application at issue, Opposer has used the
`JUVÉDERM Marks in commerce in the United States on and in connection with the foregoing
`goods, for which the mark has become famous. Moreover, by virtue of the excellence of the
`products sold under the JUVÉDERM Marks, the marks have a valuable reputation.
`
`RESPONSE:
`
`
`Applicant lacks knowledge or information sufficient to form a belief about the truth of
`the allegations of this paragraph and therefore denies same.
`
`
`
`5. Notwithstanding Opposer's long prior rights in and to the JUVÉDERM Marks, on
`information and belief, on June 17, 2015, Applicant filed an application for registration of the
`trademark "JUVEDERM'' for goods and services in two International Classes. That application
`has since been sub-divided into three separate applications. The application at issue, Application
`Serial No. 79/975,292, seeks registration of the mark "JUVEDERM'' ("Applicant's Mark") for
`"Advertising, marketing and promotion services; commercial trading services in the nature of
`direct marketing services, promotional marketing and representation services for sales to the
`public sector; providing consumer product information via the Internet; business management
`analysis, business research and business information management services" in International
`Class 35, and the application was published for opposition in the Trademark Official Gazette of
`April l1, 2017 (the ''Opposed Application").
`
`RESPONSE:
` 
`
`Applicant admits that it filed a multiclass application for registration of the trademark
`"JUVEDERM'' and that this application has since been sub-divided into three separate
`applications. Applicant admits that the application at issue, Application Serial No. 79/975,292,
`
` 
`
`(cid:1008) 
`
`

`

`seeks registration of the mark "JUVEDERM'' ("Applicant's Mark") for "Advertising, marketing
`and promotion services; commercial trading services in the nature of direct marketing services,
`promotional marketing and representation services for sales to the public sector; providing
`consumer product information via the Internet; business management analysis, business research
`and business information management services" in International Class 35, and the application as
`published for opposition in the Trademark Official Gazette of April 11, 2017. Applicant denies
`that Opposer has long prior rights in and to the JUVÉDERM Marks. To the contrary, Applicant
`has prior rights with regard to its goods and services covered by International Classes 3 and 35.
`
`
`
`
`
`FIRST CLAIM FOR RELIEF
`(Likelihood of Confusion With Registered Marks)
`
`6. Opposer repeats and realleges the allegations in preceding paragraphs 1 through 5,
`inclusive, as if fully set forth herein.
`
`RESPONSE:
`
`
`Applicant repeats and re-alleges its corresponding responses to the allegations in
`preceding paragraphs 1 through 5, inclusive, as if fully set forth herein.
`
`
`
`7. Applicant's Mark shown in the Opposed Application so resembles Opposer's registered
`JUVÉDERM Marks as to be likely, when used on or in connection with the services in the
`Opposed Application, to cause confusion, to cause mistake, or to deceive, and Applicant's Mark
`is thus unregistrable under Section 2(d) of the United States Trademark Act, 15 U.S. C. 1052(d).
`
`RESPONSE:
`
`
`Applicant denies the allegations of paragraph 7.
`
`
`
` 
`
`(cid:1009) 
`
`

`

`8. Opposer will be damaged by registration of the mark shown in the Opposed
`Application because registration will give Applicant prima facie evidence of its ownership of,
`and its exclusive nationwide right to use, a mark that is confusingly similar to Opposer's
`JUVÉDERM Marks.
`
`RESPONSE:
`
`
`
`Applicant denies the allegations of paragraph 8.
`
`
`SECOND CLAIM FOR RELIEF
`(Likelihood of Confusion With Previously-Used Trademarks)
`
`
`9. Opposer repeats and realleges the allegations in preceding paragraphs 1 through 8,
`inclusive, as if fully set forth herein.
`
`RESPONSE:
`
`
`Applicant repeats and re-alleges its corresponding responses to the allegations in
`preceding paragraphs 1 through 8, inclusive, as if fully set forth herein.
`
`
`
`10. Applicant's Mark shown in the Opposed Application so resembles Opposer's
`previously-used and not abandoned JUVÉDERM Marks as to be likely, when used on or in
`connection with the services identified in the Opposed Application, to cause confusion, to cause
`mistake, or to deceive, and Applicant's Mark is thus unregistrable under Section 2( d) of the
`United States Trademark Act, 15 U.S.C. l052(d).
`
`RESPONSE:
`
`
`Applicant denies the allegations of paragraph 10.
`
`
`
`
`
` 
`
`(cid:1010) 
`
`

`

`11. Opposer will be damaged by registration of the mark shown in the Opposed
`Application because registration will give Applicant prima facie evidence of its ownership of,
`and its exclusive nationwide right to use, a mark that is confusingly similar to Opposer's
`previously-used and not abandoned JUVÉDERM Marks.
`
`RESPONSE:
`
`
`Applicant denies the allegations of paragraph 11.
`
`
`
`
`
`THIRD CLAIM FOR RELIEF
`(Likelihood of Dilution With Previously-Registered And Used Trademarks)
`
`12. Opposer repeats and realleges the allegations in preceding paragraphs 1 through 11,
`inclusive, as if fully set forth herein.
`
`RESPONSE:
` 
`
`Applicant repeats and re-alleges its corresponding responses to the allegations in
`preceding paragraphs 1 through 11, inclusive, as if fully set forth herein.
`
`
`
`13. Opposer's JUVÉDERM Marks are famous and were famous long prior to the filing of
`the Opposed Application.
`
`RESPONSE:
`
`
`Applicant denies the allegations of paragraph 13.
`
`
`
`14. Applicant's Mark shown in the Opposed Application so resembles Opposer's
`previously-used, registered and not abandoned JUVÉDERM Marks as to be likely to blur the
`distinctiveness of Opposer's JUVÉDERM Marks, and Applicant's Mark is thus unregistrable
`under Section 43(c) of the United States Trademark Act, 15 U.S.C. 1125(c).
`
` 
`
`(cid:1011) 
`
`

`

`RESPONSE:
`
`
`Applicant denies the allegations of paragraph 14.
`
`
`
`15. Opposer will be damaged by registration of the mark shown in the Opposed
`Application because registration will give Applicant prima facie evidence of its ownership of,
`and its exclusive nationwide right to use, a mark that is likely to impair the distinctiveness of
`Opposer's famous JUVÉDERM Marks.
`
`RESPONSE:
`
`
`Applicant denies the allegations of paragraph 15.
`
`
`
`
`
`AFFIRMATIVE DEFENSES:
`
`1. The Notice of Opposition fails to state a claim upon which relief can be granted.
`
`2. Opposer lacks standing to assert the claims pled in this proceeding.
`
`3. Opposer's claims for relief are barred by the doctrine of unclean hands. Applicant
`reserves the right to assert additional affirmative defenses which may emerge up to and including
`the time of trial.
`
`
`
`
`COUNTERCLAIMS:
`
`Pursuant to 15 U.S.C. § 1064, 37 C.F.R. § 2.111(b) and TBMP § 309.03(b), Applicant
`believes that it is and will continue to be damaged by the continued registration of Opposer’s
`following pleaded registrations:
`
`
`
`
`
` 
`
`(cid:1012) 
`
`

`

`Trademark
`
`JUVEDERM
`
`Reg. No.
`
`3706974
`
`JUVEDERM
`VOLIFT
`
`4380506
`
`JUVEDERM
`VOLBELLA
`
`4380507
`
`JUVEDERM
`VOLUMA
`
`4481317
`
` 
`
`(cid:1013) 
`
`Class/Goods
`
`05: Pharmaceutical
`preparations for the treatment
`of
`glabellar lines, facial
`wrinkles, asymmetries and
`defects and
`conditions of the human skin,
`all to be sold and marketed
`only to licensed physicians,
`surgeons, and healthcare
`professionals
`
`05: Pharmaceutical
`preparations for the treatment
`of
`glabellar lines, facial
`wrinkles, asymmetries and
`defects and
`conditions of the human skin;
`biological dermal implants,
`namely, visco-
`supplementation solutions for
`filling
`wrinkles
`
`05: Pharmaceutical
`preparations for the treatment
`of
`glabellar lines, facial
`wrinkles, asymmetries and
`defects and
`conditions of the human skin;
`biological dermal implants,
`namely, visco-
`supplementation solutions for
`filling
`wrinkles
`
`05: Pharmaceutical
`preparations for the treatment
`of
`
`

`

`glabellar lines, facial
`wrinkles, asymmetries and
`defects and
`conditions of the human skin;
`biological dermal implants,
`namely, visco-
`supplementation solutions for
`filling
`wrinkles
`
`
`The four above-referenced registrations by Allergan are collectively and individually
`referred to as the “Allergan Registrations”.
`
`Applicant hereby petitions to cancel the Allergan Registrations. As grounds for
`cancellation, Applicant alleges as follows:
`
`1. Applicant and Petitioner, DERMAVITA limited partnership is a limited partnership
`formed under the laws of Lebanon, having a place of business at Spears str., Al Itihad building,
`Floor 6, Mussaitbeh, Al Sanayeh Beirut LEBANON (hereinafter “Petitioner” or “Applicant”).
`
`2. On information and belief, Opposer and Registrant, Allergan, Inc. is a corporation of
`Delaware, having an address at 2525 Dupont Drive, Irvine, California 92612 (hereinafter
`“Registrant” or “Opposer”).
`
`3. On June 17, 2015, Applicant designated the U.S. in its International Trademark
`Registration, IR No. 1266937 for the mark JUVEDERM claiming a priority date of April 30,
`2015. The U.S. application was assigned U.S. Application Serial No. 79173350 and initially
`included the following goods and services: “Cosmetics for professional use and for use by the
`
`end consumer; cosmetic creams, emulsions, lotions, liquids, solutions, milks, gels and oils for the
`
`skin (of the face, body, hands, feet, and neck), oils for cosmetic purposes; cosmetic kits, cosmetic
`
`products and preparations for skin care; cosmetic masks, cosmetics, cosmetic preparations for
`
`slimming purposes, cosmetics for exfoliation, cosmetic peelings, cosmetics for smoothing the
`
`skin; cosmetics for hair conditioning and care of the hair and scalp; cosmetic sunscreen
`
`products and preparations (emulsions, lotions, milks, gels, oils, liquids); cosmetic preparations
`
`for skin whitening, skin whitening creams, bleaching preparations (decolorants) for cosmetic
`
` 
`
`(cid:1005)(cid:1004) 
`
`

`

`purposes, cosmetics for lightening the skin, cosmetics for perfecting the complexion; anti-wrinkle
`
`cosmetics, skin rejuvenation cosmetics, skin lightening cosmetics, cosmetic preparations for skin
`
`hydration, cosmetics for toning the skin; essential oils and aromatic extracts; toiletries; cleaning
`and fragrancing preparations” in International Class 3, “Advertising, marketing and
`
`promotional services; commercial trading and consumer information services; business analysis,
`research and information services” in International Class 35 and “Human hygiene and beauty
`care; hygienic and beauty care; human hygiene and beauty care” in International Class 44.
`
`4. On October 8, 2015, an Office Action issued and partially refused registration of the
`JUVEDERM mark in U.S. Application Serial No. 79173350 for goods and services in
`International Classes 3 and 44 only based on alleged likelihood of confusion with U.S. Reg. Nos.
`4481317, 3463915, 3706974, 4380506 and 4380507. Subsequently, Applicant deleted
`International Class 44, divided out hair care products from International Class 3 goods, now U.S.
`Application Serial No. 79975300, and divided out services in International Class 35, now U.S.
`Application Serial No. 79975292 which has been published and is the subject of the instant
`opposition by Allergan, Inc.
`
`5. The alleged refusal with regard to Applicant’s International Class 3 applications,
`namely U.S. Application Serial Nos. 79173350 and 79975300, was maintained and the
`examination of both applications is currently suspended.
`
`6. At least as early as 1999, Applicant adopted the trademark JUVEDERM in Lebanon
`for at least various preparations. Subsequently, Applicant expanded its trademark portfolio for
`the mark JUVEDERM in many countries of the world, including the U.S. with an intention to
`use the mark in connection with at least various cosmetic and beauty care items and the services
`covered by the opposed Application.
`
`7. On information and belief, Registrant only registered the Allergan Registrations in
`connection with a narrow list of goods in International Class 5, such as “Pharmaceutical
`
`preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and
`
`conditions of the human skin; biological dermal implants, namely, visco-supplementation
`solutions for filling wrinkles.”
`
` 
`
`(cid:1005)(cid:1005) 
`
`

`

`8. On information and belief, Registrant did not file any U.S. trademark applications in
`International Class 3 for the mark JUVEDERM.
`
`9. On information and belief, another company called Allergan Holdings France SAS just
`recently filed U.S. trademark applications in International Class 3 for JUVEDERM VOLUX,
`Serial No. 87270389 and for the mark JUVÉDERM (stylized), Serial No. 87089516 and
`JUVÉDERM (word mark), Serial No. 87089435, well after Petitioner had already applied to
`register its JUVEDERM mark for cosmetic goods in International Class 3. See Exhibit 2.
`
`10. On information and belief, Registrant is not the rightful owner of the Allergan
`Registrations.
`
`11. On information and belief, Registrant’s “Allergan Registrations” should have never
`been registered because an appropriate use specimen was never submitted.
`
`12. On information and belief, Registrant acted in bad faith and with an intent to deceive
`when submitting the Statements of Use in the Allergan Registrations.
`
`13. Petitioner has been, and continues to be, damaged in that the Allergan Registrations
`are cited against Petitioner’s JUVEDERM application in International Class 3 as a basis for
`refusal of registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d) and are pleaded in
`this opposition proceeding.
`
`Count I – Trademark Act Section 14(3)
`Regarding All of the Allergan Registrations
`
`
`
`14. Applicant hereby re-alleges paragraphs 1-13 of the Counterclaims section as if fully
`set forth herein. Applicant further claims that Opposer abandoned the marks that are the subject
`of the Allegan Registrations with no intent to resume use of these marks under Section 14(3).
`Each of these registrations is addressed as follows:
`
` 
`
` 
`
`
`
`(cid:1005)(cid:1006) 
`
`

`

`a) JUVEDERM VOLIFT, Reg. No. 4380506
`
`15. Upon information and belief, Opposer has abandoned the JUVEDERM VOLIFT
`mark shown in Reg. No. 4380506 pursuant to Section 14(3) of the Trademark Act, 15 U.S.C. §
`1064(3).
`
`16. Upon information and belief, Opposer is not currently using the JUVEDERM
`VOLIFT mark with the goods listed in Reg. No. 4380506 in commerce in the ordinary course of
`trade.
`
`17. Upon information and belief, Opposer has discontinued use of the JUVEDERM
`VOLIFT mark with the goods listed in Reg. No. 4380506 with no intent to resume use of the
`mark. In fact, it is believed that Opposer never used the JUVEDERM VOLIFT mark in U.S.
`commerce.
`
`18. Upon information and belief, for at least the last three consecutive years, Opposer has
`not used the JUVEDERM VOLIFT mark with the goods listed in Reg. No. 4380506 in
`commerce in the ordinary course of trade, thereby constituting prima facie evidence of
`abandonment of the JUVEDERM VOLIFT mark as shown in Reg. No. 4380506 pursuant to 15
`U.SC. § 1127.
`
`19. Further, Reg. No. 4380506 was registered for the following goods in International
`Class 5: “Pharmaceutical preparations for the treatment of glabellar lines, facial wrinkles,
`
`asymmetries and defects and conditions of the human skin; biological dermal implants, namely,
`visco-supplementation solutions for filling wrinkles.”
`
`20. On information and belief, a clinical trial was performed for the product
`“JUVÉDERM VOLIFT XC,” and the product was “being studied under a U.S. Investigational
`Device Exemption (IDE) for injection to mid to deep dermis for correction of moderate to severe
`facial wrinkles and folds (such as nasolabial folds). See Exhibit 3. Per Section 201(h) of the
`Federal Food Drug & Cosmetic Act, the definition of a device is:
`
`an instrument, apparatus, implement, machine, contrivance,
`implant, in vitro reagent, or other similar or related article,
`
` 
`
`(cid:1005)(cid:1007) 
`
`

`

`including any component, part, or accessory, which is--
`
`(1) recognized in the official National Formulary, or the United
`States Pharmacopeia, or any supplement to them,
`
`(2) intended for use in the diagnosis of disease or other conditions,
`or in the cure, mitigation, treatment, or prevention of disease, in
`man or other animals, or
`
`(3) intended to affect the structure or any function of the body of
`man or other animals, and
`
`which does not achieve its primary intended purposes through
`chemical action within or on the body of man or other animals and
`which is not dependent upon being metabolized for the
`achievement of its primary intended purposes.
`
`21 U.S.C. § 321(h).
`
`21. Upon information and belief, the product “JUVÉDERM VOLIFT XC” was classified
`as a “device” under the Federal Food Drug & Cosmetic Act because Opposer had obtained a
`U.S. Investigational Device Exemption for the product. Further, the FDA notes on its website at
`FDA.gov that “[d]ermal fillers, also known as injectable implants, soft tissue fillers, or wrinkle
`fillers are medical device implants approved by a Food and Drug Administration (FDA) for use
`in helping to create a smoother and/or fuller appearance in the face, including nasolabial folds,
`cheeks and lips and for increasing the volume of the back of the hand.” See Exhibit 3a
`(emphasis added).
`
`22. By being classified as a “device,” the product “JUVÉDERM VOLIFT XC” “does not
`achieve its primary intended purposes through chemical action within or on the body of man or
`other animals and which is not dependent upon being metabolized for the achievement of its
`primary intended purposes.” 21 U.S.C. § 321(h). Additionally, “pharmaceutical” is a noun
`defined as “a drug or medicine.” Sigma-Tau Industrie Farmaceutiche Riunite S.p.A. v.
`SigmaPharm Laboratories, LLC, 2015 TTAB LEXIS 42, *57 (T.T.A.B. Nov. 12, 2015).
`
` 
`
`(cid:1005)(cid:1008) 
`
`

`

`23. More recently, the mark “JUVÉDERM” (U.S. Reg. No. 4933963) was registered by
`Allergan Holdings France in connection with the following goods in International Class 10:
`“Medical devices, namely, injection needles and medical syringes for injections into the lips and
`perioral areas.”
`
`24. Upon information and belief, Opposer never used the JUVEDERM VOLIFT mark as
`registered for the goods listed in Reg. No. 4380506 and has no intent to resume use of the mark,
`because the product “JUVÉDERM VOLIFT XC” has been classified as a “device” under the
`Federal Food Drug & Cosmetic Act allowing the investigational device to be used in a clinical
`study, and was not classified as a “drug.”
`
`25. In view of Opposer’s non-use and abandonment of the JUVEDERM VOLIFT mark
`shown in Reg. No. 4380506, Opposer is not entitled to continued registration of the mark
`pursuant to Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3), such that Reg. No.
`4380506 should be cancelled.
`
`26. For the reasons set forth above, Petitioner has been, and continues to be, damaged by
`continued registration of Reg. No. 4380506.
`
`b) JUVEDERM VOLBELLA, Reg. No. 4380507
`
`27. Upon information and belief, Opposer has abandoned the JUVEDERM VOLBELLA
`mark shown in Reg. No. 4380507 pursuant to Section 14(3) of the Trademark Act, 15 U.S.C. §
`1064(3).
`
`28. Upon information and belief, Opposer is not currently using the JUVEDERM
`VOLBELLA mark as registered with the goods listed in Reg. No. 4380507 in commerce in the
`ordinary course of trade.
`
`29. Upon information and belief, Opposer never used the JUVEDERM VOLBELLA
`mark as registered with the goods listed in Reg. No. 4380507 and has no intent to resume use of
`the mark. Opposer’s submitted specimen does not show the mark as applied for. In the instant
`case, Opposer’s specimen shows the mark as “JUVÉDERM VOLBELLA XC” (with the French
`“e acute” and the additional letters “XC”). See Exhibit 4. Opposer’s registration, on the other
`
` 
`
`(cid:1005)(cid:1009) 
`
`

`

`hand, is for the mark “JUVEDERM VOLBELLA” (with the letter “e”, not “e acute” and without
`the letters “XC”). Further, on information and belief, Opposer obtained FDA approval for the
`product “JUVÉDERM VOLBELLA XC” and not for “JUVEDERM VOLBELLA” as applied
`for. See Exhibit 4a.
`
`30. Further, Reg. No. 4380507 was registered for the following goods in International
`Class 5: “Pharmaceutical preparations for the treatment of glabellar lines, facial wrinkles,
`
`asymmetries and defects and conditions of the human skin; biological dermal implants, namely,
`visco-supplementation solutions for filling wrinkles.”
`
`31. On information and belief, Opposer obtained FDA approval for the product
`“JUVÉDERM VOLBELLA XC” as a medical device. See Exhibit 4a. By being classified as a
`“device,” the product “JUVÉDERM VOLBELLA XC” “does not achieve its primary intended
`purposes through chemical action within or on the body of man or other animals and which is not
`dependent upon being metabolized for the achievement of its primary intended purposes.” 21
`U.S.C. § 321(h). Reference is made to the arguments and citation to statutes, case law, and
`exhibits in paragraphs 20-22 of the Counterclaim Section.
`
`32. More recently, the mark “JUVÉDERM” (U.S. Reg. No. 4933963) was registered by
`Allergan Holdings France in connection with the following goods in International Class 10:
`“Medical devices, namely, injection needles and medical syringes for injections into the lips and
`perioral areas.”
`
`33. Upon information and belief, Opposer never used the JUVEDERM VOLBELLA
`mark as registered for the goods listed in Reg. No. 4380507 and has no intent to resume use of
`the mark, because the product “JUVÉDERM VOLBELLA XC” was approved by the FDA for
`use as a “device,” and not as a “drug.”
`
`34. In view of Opposer’s non-use and abandonment of the JUVEDERM VOLBELLA
`mark shown in Reg. No. 4380507, Opposer is not entitled to continued registration of the mark
`pursuant to Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3), such that Reg. No.
`380507 should be cancelled.
`
` 
`
`(cid:1005)(cid:1010) 
`
`

`

`35. For the reasons set forth above, Petitioner has been, and continues to be, damaged by
`continued registration of Reg. No. 4380507.
`
`c) JUVEDERM, Reg. No. 3706974
`
`36. Upon information and belief, Opposer has abandoned the JUVEDERM mark shown
`in Reg. No. 3706974 pursuant to Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3).
`
`37. Upon information and belief, Opposer is not currently using the JUVEDERM mark as
`registered with the goods listed in Reg. No. 3706974 in commerce in the ordinary course of
`trade.
`
`38. Upon information and belief, Opposer never used the JUVEDERM mark as registered
`with the goods listed in Reg. No. 3706974 and has no intent to resume use of the mark.
`Opposer’s submitted specimen does not show the mark as applied for. In the instant case,
`Opposer’s specimen shows the mark as “JUVÉDERM ULTRA PLUS” (with the French “e
`acute” and the additional words “ULTRA PLUS”). See Exhibit 5. Opposer’s registration, on the
`other hand, is for the mark “JUVEDERM” (with the letter “e”, not “e acute” and without the
`additional words “ULTRA PLUS”). Further, on information and belief, Opposer obtained FDA
`approval for the product “JUVÉDERM ULTRA XC AND JUVÉDERM ULTRA PLUS XC” and
`not for “JUVEDERM” as applied for. See Exhibit 4a.
`
`39. Upon information and belief, there is a separate “JUVÉDERM ULTRA” product
`(without the additional “XC”) that is not approved for commercialization in the United States by
`the FDA.
`
`40. Further, Reg. No. 3706974 was registered for the following goods in International
`Class 5: “Pharmaceutical preparations for the treatment of glabellar lines, facial wrinkles,
`
`asymmetries and defects and conditions of the human skin, all to be sold and marketed only to
`licensed physicians, surgeons, and healthcare professionals.”
`
`41. On information and belief, Opposer obtained FDA approval for the product
`“JUVÉDERM ULTRA XC AND JUVÉDERM ULTRA PLUS XC” as a medical device. See
`Exhibit 4a. By being classified as a “device,” the product “JUVÉDERM ULTRA XC AND
`
` 
`
`(cid:1005)(cid:1011) 
`
`

`

`JUVÉDERM ULTRA PLUS XC” does not achieve its primary intended purposes through
`chemical action within or on the body of man or other animals and which is not dependent upon
`being metabolized for the achievement of its primary intended purposes.” 21 U.S.C. § 321(h).
`Reference is made to the arguments and citation to statutes, case law, and exhibits in paragraphs
`20-22 of the Counterclaim Section.
`
`42. More recently, the mark “JUVÉDERM” (U.S. Reg. No. 4933963) was registered by
`Allergan Holdings France in connection with the following goods in International Class 10:
`“Medical devices, namely, injection needles and medical syringes for injections into the lips and
`perioral areas.”
`
`43. Upon information and belief, Opposer never used the JUVEDERM mark as
`registered for the goods listed in Reg. No. 3706974 and has no intent to resume use of the mark,
`because the product “JUVÉDERM ULTRA XC AND JUVÉDERM ULTRA PLUS XC” was
`approv