`
`ESTTA Tracking number:
`
`ESTTA829740
`
`Filing date:
`
`06/28/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91234098
`
`Party
`
`Correspondence
`Address
`
`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
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Answer and Counterclaim
`
`Tanja Proehl
`
`tproehl@gbclaw.net
`
`/Tanja Proehl/
`
`06/28/2017
`
`Answer and Counterclaims.pdf(214711 bytes )
`Exhibit 1.pdf(503028 bytes )
`Exhibit 2.pdf(490053 bytes )
`Exhibit 3_Juv Volift specimen.pdf(1445729 bytes )
`Exhibit 4.pdf(2256134 bytes )
`Exhibit 4a.pdf(606536 bytes )
`Exhibit 5_Juv specimen.pdf(231078 bytes )
`Exhibit 6_Juv Voluma specimen.pdf(168439 bytes )
`Exhibit 7_Ownership.pdf(418710 bytes )
`
`Registrations Subject to the filing
`
`Registration No.
`
`4380506
`
`Registration date
`
`08/06/2013
`
`Registrant
`
`Allergan, Inc.
`2525 Dupont Drive
`Irvine, CA 92612
`UNITED STATES
`Email: hinchey_susan@allergan.com
`
`Goods/Services Subject to the filing
`
`Class 005. First Use: 2012/09/13 First Use In Commerce: 2012/09/13
`All goods and services in the class are requested, namely: Pharmaceutical preparations for the treat-
`ment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin;
`biological dermal implants, namely, visco-supplementation solutions for filling wrinkles
`
`Registration No.
`
`3706974
`
`Registration date
`
`11/03/2009
`
`Registrant
`
`ALLERGAN, INC.
`2525 DUPONT DRIVE
`IRVINE, CA 92612
`UNITED STATES
`
`Goods/Services Subject to the filing
`
`Class 005. First Use: 2000/12/31 First Use In Commerce: 2004/08/31
`All goods and services in the class are requested, namely: Pharmaceutical preparations for the treat-
`ment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin, all
`
`
`
`to be sold andmarketed only to licensed physicians, surgeons, and healthcare professionals
`
`Grounds for Cancellation
`
`Abandonment
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Registration No.
`
`4380507
`
`Registration date
`
`08/06/2013
`
`Registrant
`
`Allergan, Inc.
`2525 Dupont Drive
`Irvine, CA 92612
`UNITED STATES
`Email: hinchey_susan@allergan.com
`
`Goods/Services Subject to the filing
`
`Class 005. First Use: 2013/02/19 First Use In Commerce: 2013/02/19
`All goods and services in the class are requested, namely: Pharmaceutical preparations for the treat-
`ment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin;
`biological dermal implants, namely, visco-supplementation solutions for filling wrinkles
`
`Registration No.
`
`4481317
`
`Registration date
`
`02/11/2014
`
`Registrant
`
`Allergan, Inc.
`2525 Dupont Drive
`Irvine, CA 92612
`UNITED STATES
`Email: hinchey_susan@allergan.com
`
`Goods/Services Subject to the filing
`
`Class 005. First Use: 2013/12/02 First Use In Commerce: 2013/12/02
`All goods and services in the class are requested, namely: Pharmaceutical preparations for the treat-
`ment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin;
`biological dermal implants, namely, visco-supplementation solutions for filling wrinkles
`
`
`
`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.: 91234098
`
`
`Cancellation No.:
`Registration Nos.: 4,380,506,
`
`
` 4,380,507,
`
`
` 3,706,974 and
`
`
` 4,481,317
`
`
`
`
`
`
`ANSWER TO NOTICE OF OPPOSTION,
`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
`
`multi-specialty health care company and has been for many years, engaged in the development
`
`
`
`(cid:1005)
`
`
`
`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
`
`
`
`(cid:1006)
`
`
`
`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 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.
`
`
`
`(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. 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.
`
`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.
`
`
`
`
`
`(cid:1008)
`
`
`
`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,
`
`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 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.
`
`
`
`(cid:1009)
`
`
`
`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.
`
`
`
`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.
`
`
`
`
`
`
`
`
`
`(cid:1010)
`
`
`
`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.
`
`
`
`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.
`
`
`
`
`
`(cid:1011)
`
`
`
`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).
`
`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,
`
`
`
`(cid:1012)
`
`
`
`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.
`
`
`
`1.
`
`2.
`
`3.
`
`AFFIRMATIVE DEFENSES
`
`The Notice of Opposition fails to state a claim upon which relief can be granted.
`
`Opposer lacks standing to assert the claims pled in this proceeding.
`
`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:
`
`Trademark
`
`Reg. No. Class/Goods
`
`JUVEDERM
`
`3706974 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
`
`
`
`(cid:1013)
`
`
`
`
`
`JUVEDERM
`
`4380506 05: Pharmaceutical preparations for the treatment of
`
`VOLIFT
`
`glabellar lines, facial wrinkles, asymmetries and defects and
`
`conditions of the human skin; biological dermal implants,
`
`namely, visco-supplementation solutions for filling
`
`wrinkles
`
`
`
`JUVEDERM
`
`4380507 05: Pharmaceutical preparations for the treatment of
`
`VOLBELLA
`
`glabellar lines, facial wrinkles, asymmetries and defects and
`
`
`
`conditions of the human skin; biological dermal implants,
`
`namely, visco-supplementation solutions for filling
`
`wrinkles
`
`
`
`JUVEDERM
`
`4481317 05: Pharmaceutical preparations for the treatment of
`
`VOLUMA
`
`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:
`
`
`
`(cid:1005)(cid:1004)
`
`
`
`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 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
`
`
`
`(cid:1005)(cid:1005)
`
`
`
`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 cosmetic 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:1006)
`
`
`
`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
`
`Applicant hereby re-alleges paragraphs 1-13 of the Counterclaims section as if fully
`
`14.
`
`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:1007)
`
`
`
`
`
`a)
`
`15.
`
`JUVEDERM VOLIFT, Reg. No. 4380506
`
`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.
`
`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.
`
`20.
`
`For the reasons set forth above, Petitioner has been, and continues to be, damaged
`
`by continued registration of Reg. No. 4380506.
`
`
`
`
`
`(cid:1005)(cid:1008)
`
`
`
`b)
`
`21.
`
`JUVEDERM VOLBELLA, Reg. No. 4380507
`
`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).
`
`22. 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.
`
`23. 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
`
`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.
`
`24.
`
`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. 4380507
`
`should be cancelled.
`
`25.
`
`For the reasons set forth above, Petitioner has been, and continues to be, damaged
`
`by continued registration of Reg. No. 4380507.
`
`
`
`
`
`(cid:1005)(cid:1009)
`
`
`
`c)
`
`26.
`
`JUVEDERM, Reg. No. 3706974
`
`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).
`
`27. 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.
`
`28. 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.
`
`29.
`
`In view of Opposer’s non-use and abandonment of the JUVEDERM mark shown
`
`in Reg. No. 3706974, 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. 3706974 should be
`
`cancelled.
`
`30.
`
`For the reasons set forth above, Petitioner has been, and continues to be, damaged
`
`by continued registration of Reg. No. 3706974.
`
`
`
`
`
`
`
`(cid:1005)(cid:1010)
`
`
`
`d)
`
`31.
`
`JUVEDERM VOLUMA, Reg. No. 4481317
`
`Upon information and belief, Opposer has abandoned the JUVEDERM VOLUMA
`
`mark shown in Reg. No. 4481317 pursuant to Section 14(3) of the Trademark Act, 15 U.S.C. §
`
`1064(3).
`
`32. Upon information and belief, Opposer is not currently using the JUVEDERM
`
`VOLUMA mark as registered with the goods listed in Reg. No. 4481317 in commerce in the
`
`ordinary course of trade.
`
`33. Upon information and belief, Opposer never used the JUVEDERM VOLUMA
`
`mark as registered with the goods listed in Reg. No. 4481317 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 VOLUMA XC” (with the French “e
`
`acute” and the additional letters “XC”). See Exhibit 6. Opposer’s registration, on the other hand,
`
`is for the mark “JUVEDERM VOLUMA” (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 VOLUMA XC” and not for “JUVEDERM VOLUMA” as applied for. See Exhibit
`
`4a.
`
`34.
`
`In view of Opposer’s non-use and abandonment of the JUVEDERM VOLUMA
`
`mark shown in Reg. No. 4481317, 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. 4481317
`
`should be cancelled.
`
`35.
`
`For the reasons set forth above, Petitioner has been, and continues to be, damaged
`
`by continued registration of Reg. No. 4481317.
`
`
`
`
`
`(cid:1005)(cid:1011)
`
`
`
`COUNT II – Section 1(a) and (c)
`Regarding All of the Allergan Registrations
`
`Applicant hereby re-alleges paragraphs 1-35 of the Counterclaims section as if fully
`
`36.
`
`set forth herein. Applicant further claims that Opposer filed false Statements of Use in connection
`
`with all of the Allergan Registrations under Section 1(a) and (c). Each of the Allergan
`
`Registrations is addressed as follows:
`
`
`
`a)
`
`37.
`
`JUVEDERM VOLIFT, Reg. No. 4380506
`
`On September 15, 2010, Opposer filed an application for the mark JUVEDERM
`
`VOLIFT based on an intent to use 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” in International Class 5.
`
`38.
`
`On April 05, 2013, Opposer submitted a Statement of Use and declared that the
`
`mark JUVEDERM VOLIFT was first used at least as early as September 13, 2012 and first used
`
`in commerce at least as early as September 13, 2012, and is now in use in such commerce in
`
`connection with “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” in International Class 5.
`
`39.
`
`On information and belief, Opposer’s declaration was false in that, as of September
`
`13, 2012, Opposer had not actually offered the recited goods in commerce and therefore had not
`
`used the mark in commerce.
`
`40.
`
`On information and belief, Opposer never obtained FDA approval of the
`
`JUVEDERM VOLIFT product.
`
`
`
`(cid:1005)(cid:1012)
`
`
`
`41.
`
`Further, Opposer’s submitted use specimen does not show the mark as applied for.
`
`In an intent to use based application, the drawing of the mark must be a substantially exact
`
`representation of the mark as used or as intended to be used on or in connection with the
`
`goods. This means that the mark as shown in the drawing must be substantially the exact same
`
`mark as shown in the specimen of use. In the instant case, Opposer’s specimen shows the mark
`
`as “JUVÉDERM VOLIFT XC” (with the French “e acute” and the letters “XC”). See Exhibit 3.
`
`Opposer’s registration on the other hand is for the mark “JUVEDERM VOLIFT” (with the letter
`
`“e”, not “e acute” and without the letters “XC”). Both let
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ ChargeStill Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site