Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA837992
`08/07/2017
`
`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
`
`JAZZ PHARMACEUTICALS, INC.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`08/06/2017
`
`3180 Porter Drive
`Palo Alto, CA 94304
`UNITED STATES
`
`Attorney informa-
`tion
`
`Tiffany A. Blofield
`Winthrop & Weinstine, P.A.
`225 SOUTH SIXTH STREET, SUITE 3500
`Minneapolis, MN 55402
`UNITED STATES
`Email: tblofield@winthrop.com, sbaird@winthrop.com, trade-
`mark@winthrop.com, ayoung@winthrop.com, cclassen@winthrop.com,
`greyes@winthrop.com
`Phone: 6126046684
`
`Applicant Information
`
`Application No
`
`87222187
`
`Publication date
`
`02/07/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`08/07/2017
`
`Novartis AG
`CH-4002
`Basel
`SWITZERLAND
`
`Opposition Peri-
`od Ends
`
`08/06/2017
`
`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: Anti-infectives; anti-inflammatories; antibac-
`terial pharmaceuticals; antibiotics; antifungal preparations; antivirals; cardiovascular pharmaceuticals;
`dermatological pharmaceutical products; inhaled pharmaceutical preparations for the prevention and
`treatment of respiratory diseases and disorders; pharmaceutical preparations acting on the central
`nervous system; pharmaceutical preparations and substances for the prevention and treatment of
`gastro-intestinal diseases; pharmaceutical preparations for the prevention and treatment of diseases
`and disorders of the autoimmune system, the metabolic system, the endocrine 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 prevention and treat-
`ment of eye diseases and conditions; pharmaceutical preparations for the prevention and treatment
`of heart rhythm disorders; pharmaceutical preparations for the prevention and treatment of immune
`system related diseases and disorders; pharmaceutical preparations for the prevention andtreatment
`of kidney diseases; pharmaceutical preparations for the prevention and treatment of diabetes; phar-
`maceutical preparations for the prevention and treatment of hypertension; pharmaceutical prepara-
`
`

`

`tions for the prevention and treatment of skin disorders; pharmaceutical preparations for use in der-
`matology; pharmaceutical preparations for use in urology; pharmaceutical products for ophthalmolo-
`gical use; pharmaceutical products forthe prevention and treatment of cancer and tumors; pharma-
`ceutical preparations for the prevention and treatment of allergies; pharmaceutical products for the
`prevention and treatment of bone diseases; pharmaceutical products for the prevention and treat-
`ment of respiratory diseases and asthma
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2249959
`
`Registration Date
`
`06/01/1999
`
`Application Date
`
`06/21/1996
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`XYREM
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`pharmaceutical preparation for the treatment of narcolepsy
`
`U.S. Registration
`No.
`
`3162633
`
`Registration Date
`
`10/24/2006
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`Printed materials concerning medicine; [ padfolios; and note cards ]
`
`U.S. Registration
`No.
`
`3162634
`
`Registration Date
`
`10/24/2006
`
`Word Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 038. First use: First Use: 2003/05/00 First Use In Commerce: 2003/05/00
`Providing on-line communications links which transfer the website user to other-
`local and global web pages; and on-linedocument delivery via a global com-
`puternetwork
`
`U.S. Registration
`No.
`
`3162635
`
`Registration Date
`
`10/24/2006
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2003/05/00 First Use In Commerce: 2003/05/00
`Providing customized on-line web pages featuring user-defined information,
`which includes on-line web links to other web sites; providing information at the
`specific request of end-users by means of telephone or global computer net-
`works
`
`U.S. Registration
`No.
`
`2423880
`
`Registration Date
`
`01/23/2001
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`10/27/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/23 First Use In Commerce: 1999/02/23
`Pharmaceutical Preparation For The Treatment Of Narcolepsy
`
`

`

`U.S. Registration
`No.
`
`2472156
`
`Registration Date
`
`07/24/2001
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`10/27/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/23 First Use In Commerce: 1999/02/23
`Pharmaceutical Preparation For The Treatment Of Narcolepsy
`
`U.S. Registration
`No.
`
`2860730
`
`Registration Date
`
`07/06/2004
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`10/17/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`Pharmaceutical preparations for the treatment of diseases of the central nervous
`system and a variety of conditions, symptoms, and diseases, namely, narco-
`lepsy[, fibromyalgia, insomnia and] [ myositis ]
`
`U.S. Registration
`No.
`
`3309255
`
`Registration Date
`
`10/09/2007
`
`Word Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1999/02/24 First Use In Commerce: 1999/02/24
`[Pain relief medication; preparation for the relief of pain;] pharmaceutical prepar-
`ations acting on the central nervoussystem; pharmaceutical preparations foruse
`in the treatment and/or management of sleep disorders, [ chronic fatigue syn-
`drome, drug and alcohol abuse, anxiety,cerebrovascular diseases,] neurologic-
`aldisorders,[ parkinson's disease, alzheimer's disease, multiple sclerosis, aut-
`ism, depression, inflammatory disorders, irritable bowel disorder, regional ileitis,
`ulcerative colitis, automimmune inflamatory disorders, endocrine disturbances,
`and diabetes; and pharmaceutical preparations for the purpose of tissue protec-
`tion including protection following hypoxia/anoxia such as in stroke, organ trans-
`plantation, organ preservation, myocardial infarction or ischemia, reperfusion-
`injury, and protection following radiation, progeria, or an increased level of intra-
`cranial pressure, e.g., due to headtrauma. ]
`
`U.S. Registration
`No.
`
`3112732
`
`Registration Date
`
`07/04/2006
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`04/13/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`

`

`Goods/Services
`
`Class 010. First use: First Use: 2003/04/01 First Use In Commerce: 2004/06/21
`Drug delivery devices
`
`U.S. Registration
`No.
`
`3162632
`
`Registration Date
`
`10/24/2006
`
`Word Mark
`
`Design Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Pre-recorded [ videotapes and ] DVDs featuring medical information [ ; decorat-
`ive magnets; and graduated rulers ]
`
`U.S. Registration
`No.
`
`2867332
`
`Registration Date
`
`07/27/2004
`
`Application Date
`
`04/18/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`XYREM SUCCESS PROGRAM
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services tophysicians regarding the safe and appro-
`priate use and distribution of medications used to treat sleep disorders; provid-
`ing medical information via telephone and in the form of written educational ma-
`terials to physicians in connection with the safe and appropriate use and distri-
`bution of medication for the treatment ofsleep disorders
`
`U.S. Registration
`No.
`
`2848521
`
`Registration Date
`
`06/01/2004
`
`Application Date
`
`05/28/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`XYREM PATIENT SUCCESS PROGRAM
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services topatients regarding the safe and appropri-
`ate use and distribution of medicationsused to treat sleep disorders; providing
`medical information via telephone and in the form of written educational materi-
`als to patients in connection with the safe and appropriate use and distribution of
`medication for the treatment of sleep disorders
`
`U.S. Registration
`No.
`
`2860906
`
`Registration Date
`
`07/06/2004
`
`Application Date
`
`05/28/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`XYREM SUCCESS PROGRAM FOR PHYSICIANS
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Providing telephone support services tophysicians regarding the safe and appro-
`priate use and distribution of medications used to treat sleep disorders; provid-
`ing medical information via telephone and in the form of written educational ma-
`terials to physicians in connection with the safe and appropriate use and distri-
`bution of medication for the treatment ofsleep disorders
`
`U.S. Registration
`No.
`
`2952351
`
`Registration Date
`
`05/17/2005
`
`Application Date
`
`07/02/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`XYREM (SODIUM OXYBATE) ORAL SOLUTION CIII
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2002/10/07 First Use In Commerce: 2002/10/07
`Pharmaceutical preparations for use in the treatment of sleep disorders
`
`U.S. Registration
`No.
`
`3162636
`
`Registration Date
`
`10/24/2006
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`XYREM
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2002/09/23 First Use In Commerce: 2002/09/23
`Medical information; providing medical information; and providing health care in-
`formation by telephone and the internet
`
`U.S. Registration
`No.
`
`5018872
`
`Registration Date
`
`08/09/2016
`
`Application Date
`
`05/28/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`XYREM CARECONNECT
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2015/08/24 First Use In Commerce: 2015/08/24
`Providing telephone support services tophysicians and patients regarding the
`safe and appropriate use and distributionof medications used to treat sleep dis-
`orders; providing medical information viatelephone and in the form of written
`educational materials to physicians and patients in connection with the safe and
`appropriate use and distribution of medication for the treatment of sleep dis-
`orders
`
`U.S. Registration
`No.
`
`5078995
`
`Registration Date
`
`11/08/2016
`
`Application Date
`
`06/24/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`XYREM CARECONNECT
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of two blue dots on either side of two gold dots connected
`bya gold line over the wording "XYREM" ina blue stylized font over the wording
`"CARECONNECT" in a gold stylized font.
`
`Class 044. First use: First Use: 2015/11/02 First Use In Commerce: 2015/11/02
`Providing healthcare information by telephone to physicians, pharmacies, pre-
`scribers, medical office staff and patientsregarding the safe and appropriate use
`and distribution of medications used to treat sleep disorders; providing medical-
`information via telephone to physicians, pharmacies, prescribers, medical office
`staff and patients in connection with the safe and appropriate use and distribu-
`tion of medication for the treatment ofsleep disorders
`
`Attachments
`
`78769623#TMSN.png( bytes )
`78769626#TMSN.png( bytes )
`78769629#TMSN.png( bytes )
`75577530#TMSN.png( bytes )
`75701032#TMSN.png( bytes )
`76327130#TMSN.png( bytes )
`78769796#TMSN.png( bytes )
`78400994#TMSN.png( bytes )
`78769619#TMSN.png( bytes )
`76397391#TMSN.png( bytes )
`76412893#TMSN.png( bytes )
`76412894#TMSN.png( bytes )
`76427104#TMSN.png( bytes )
`78769631#TMSN.png( bytes )
`86643546#TMSN.png( bytes )
`86673318#TMSN.png( bytes )
`Notice of Opposition -ZIBITRO-.pdf(1096818 bytes )
`Exhibit A.pdf(1372867 bytes )
`
`Signature
`
`/Tiffany A. Blofield/
`
`Name
`
`Date
`
`Tiffany A. Blofield
`
`08/07/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARDzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`In the matter of Application Ser. No.:zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`87/222,187
`Filed: November 1, 2016
`For the mark: ZIBITRO
`Published in the Trademark Official Gazette on February 7,2017
`
`JAZZ PHARMACEUTICALS, INC.,
`
`Opposer,zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`v.
`
`Novartis AG,
`
`Applicant.
`
`Opposition No.
`
`_
`
`NOTICE OF OPPOSITION
`
`Jazz Pharmaceuticals, Inc. ("Opposer") believes that it will be damaged by registration of
`
`the ZIBITRO mark shown in the intent-to-use Application Serial No. 87/222,187
`
`(the
`
`"Application") in International Class 5 and hereby opposes registration of the Application.
`
`The grounds for opposition are as follows:
`
`1.
`
`Novartis AG ("Applicant") seeks to register ZIBITRO ("Applicant's Proposed
`
`ZIBITRO Mark") as a trademark for:
`
`"Anti-infectives; anti-inflammatories; antibacterial pharmaceuticals; antibiotics;
`antifungal
`preparations;
`antivirals;
`cardiovascular
`pharmaceuticals;
`dermatological pharmaceutical products; inhaled pharmaceutical preparations for
`the prevention and treatment of respiratory diseases and disorders; pharmaceutical
`preparations acting on the central nervous system; pharmaceutical preparations
`and substances for the prevention and treatment of gastro-intestinal diseases;
`pharmaceutical preparations for the prevention and treatment of diseases and
`disorders of the autoimmune system, the metabolic system, the endocrine 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 prevention and treatment of eye diseases and
`
`1
`
`

`

`for the prevention and treatment of heart
`conditions; pharmaceutical preparations
`rhythm disorders; pharmaceutical preparations
`for the prevention and treatment of
`immune system related diseases and disorders; pharmaceutical
`preparations
`for
`the prevention and treatment of kidney diseases; pharmaceutical preparations
`for
`the prevention
`and treatment of diabetes; pharmaceutical
`preparations
`for the
`prevention and treatment of hypertension;
`pharmaceutical
`preparations
`for the
`prevention and treatment of 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
`and tumors;
`pharmaceutical
`preparations
`for
`the
`prevention and treatment of allergies; pharmaceutical products for the prevention
`and treatment of bone diseases; pharmaceutical
`products
`for the prevention and
`treatment of respiratory diseases and asthma," in International Class 5.
`
`2.
`
`Applicant's
`
`Proposed ZIBITRO Mark was published
`
`III the
`for oppositionzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Trademark Official Gazette on February 7, 2017. On March 9, 2017, the Board granted
`
`Opposer's request
`
`to extend the time to oppose the registration of Applicant's Proposed
`
`ZIBITRO Mark until April 8, 2017 which by rule extended to April 10, 2017. Thereafter, on
`
`April 10, 2017, the Board granted Opposer's request to extend the time to oppose the registration
`
`of Applicant's Proposed ZIBITRO Mark until June 7,2017. Further, on June 7, 2017, the Board
`
`granted a consented request to extend time to oppose the registration of Applicant's Proposed
`
`ZIBITRO Mark until August 6, 2017 which by rule extended to August 7,2017.
`
`3.
`
`Opposer is focused on improving the lives of medical patients by identifying,
`
`developing and commercializing meaningful products that address unmet medical needs and
`
`services. These include, among others, products and services for the treatment of neurological,
`
`psychiatric, cancer, and pain diseases, conditions and disorders. Through its predecessors in
`
`interest, Opposer adopted, has used, and continues to use the mark XYREM® in connection with
`
`pharmaceutical preparations related to the central nervous system, among other products and
`
`services. Applicant seeks to register its mark for the same goods-namely
`
`pharmaceutical
`
`preparations for treatment of disorders of the central nervous system-and
`
`for similar goods.
`
`2
`
`

`

`4.
`
`In addition to owning extensive and strong common law rights in the well-known
`
`and famous XYREM® mark, Opposer is the owner of numerous incontestable federal
`
`trademark
`
`registrations
`
`for or containing the XYREM® mark in connection with goods and services falling
`
`within a variety of International Classes.
`
`5.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,249,959 for the mark XYREM® in connection with "pharmaceutical
`
`preparation for the
`
`treatment of narcolepsy"
`
`in International Class 5, claiming a first use date at least as early as
`
`February 24, 1999. The Registration was issued on the Principal Register on June 1, 1999 and is
`
`incontestable. The filing date and nationwide constructive first use date for this Registration is
`
`June 21, 1996.
`
`6.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,162,633
`
`for
`
`the mark XYREM® in connection with "printed materials
`
`concerning
`
`medicine"
`
`in International Class 16, claiming a first use date at least as early as February 24,
`
`1999. The Registration was issued on the Principal Register on October 24, 2006 and is
`
`incontestable. The filing date and nationwide constructive first use date for this Registration is
`
`October 24, 2006.
`
`7.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,162,634 for the mark XYREM® in connection with "providing on-line communications
`
`links which transfer the website user to other local and global web pages; and on-line document
`
`delivery via a global computer network"
`
`in International Class 38, claiming a first use date at
`
`least as early as May 1, 2003. The Registration was issued on the Principal Register on October
`
`24, 2006 and is incontestable. The filing date and nationwide constructive
`
`first use date for this
`
`Registration is December 8, 2005.
`
`3
`
`

`

`8.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,162,635 for the mark XYREM® in connection with "providing customized on-line web
`
`pages featuring user-defined information, which includes on-line web links to other web sites;
`
`providing information at
`
`the specific request of end-users by means of telephone or global
`
`computer networks" in International Class 42, claiming a first use date at least as early as May 1,
`
`2003. The Registration was issued on the Principal Register on October 24, 2006 and is
`
`incontestable. The filing date and nationwide constructive first use date for this Registration is
`
`December 8, 2005.
`
`9.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,423,880 for
`
`the XYREM® (and Design) mark in connection with "pharmaceutical
`
`preparation for the treatment of narcolepsy"
`
`in International Class 5, claiming a first use date at
`
`least as early as February 23, 1999. The Registration was issued on the Principal Register on
`
`January 23, 2001 and is incontestable. The filing date and nationwide constructive first use date
`
`for this Registration is October 27, 1998.
`
`10.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,472,156
`
`for
`
`the mark XYREM® (and Design)
`
`in connection with "pharmaceutical
`
`preparation for the treatment of narcolepsy"
`
`in International Class 5, claiming a first use date at
`
`least as early as February 23, 1999. The Registration was issued on the Principal Register on
`
`July 24, 2001 and is incontestable. The filing date and nationwide constructive first use date for
`
`this Registration is October 27, 1998.
`
`11.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,860,730 for the mark XYREM® in connection with "pharmaceutical
`
`preparations
`
`for the
`
`treatment of diseases of the central nervous system and a variety of conditions,
`
`symptoms, and
`
`4
`
`

`

`diseases, namely, narcolepsy"
`
`in International Class 5, claiming a first use date at least as early
`
`as February 24, 1999. The Registration was issued on the Principal Register on July 6,2004 and
`
`is incontestable. The filing date and nationwide constructive first use date for this Registration is
`
`October 17, 2001.
`
`12.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,309,255 for the mark XYREM® in connection with "pharmaceutical
`
`preparations
`
`acting
`
`on the central nervous
`
`system; pharmaceutical
`
`preparations
`
`for use in the treatment
`
`and/or
`
`management of sleep disorders, neurological disorders" in International Class 5, claiming a first
`
`use date at least as early as February 24, 1999. The Registration was issued on the Principal
`
`Register on October 9, 2007. The filing date and nationwide constructive first use date for this
`
`Registration is December 8, 2005.
`
`13.
`
`In privity with its predecessors
`
`in interest, Opposer has adopted
`
`and has
`
`continuously used the XYREM® mark in connection with drug delivery devices since at least as
`
`early as April 1, 2003 and used the XYREM® mark in connection with pharmaceutical
`
`preparations
`
`since at least as early as February 1999.
`
`14.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,112,732
`
`for
`
`the mark XYREM® in connection with "drug
`
`delivery
`
`devices"
`
`in
`
`International Class 10, claiming a first use date at
`
`least as early as June 21, 2004. The
`
`Registration was issued on the Principal Register on July 4, 2006 and is incontestable. The filing
`
`date and nationwide constructive first use date for this Registration is April 13, 2004.
`
`15.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,162,632 for
`
`the mark XYREM® in connection with "pre-recorded DVDs
`
`featuring
`
`medical
`
`information,"
`
`in International Class 5, claiming a first use date at
`
`least as early aszyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`5
`
`

`

`September 23, 2002. The Registration was issued on the Principal Register on October 24, 2006.
`
`The filing date and nationwide constructive first use date for this Registration is December 8,
`
`2005.
`
`16.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,867,332 for the mark XYREM SUCCESS PROGRAM® in connection with "providing
`
`telephone support services to physicians
`
`regarding the safe and appropriate use and distribution
`
`of medications used to. treat sleep disorders; providing medical
`
`information via telephone and in
`
`the form of written educational materials
`
`to physicians
`
`in connection with the safe and
`
`appropriate
`
`use and distribution
`
`of medication
`
`for
`
`the treatment
`
`of
`
`sleep disorders"
`
`in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on July 27, 2004 and is incontestable. The
`
`filing date and nationwide constructive first use date for this Registration is April 18, 2002.
`
`17.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,848,521 for the mark XYREM PATIENT SUCCESS PROGRAM® in connection with
`
`"providing telephone
`
`support
`
`services
`
`to patients
`
`regarding the safe and appropriate use and
`
`distribution
`
`of medications
`
`used to treat sleep disorders; providing medical
`
`information
`
`via
`
`telephone and in the form of written educational materials to patients in connection with the safe
`
`and appropriate use and distribution
`
`of medication
`
`for the treatment of sleep disorders"
`
`in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on June 1, 2004 and is incontestable. The filing
`
`date and nationwide constructive first use date for this Registration is May 28,2002.
`
`18.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,860,906
`
`for
`
`the mark XYREM SUCCESS
`
`PROGRAM FOR PHYSICIANS® inzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`6
`
`

`

`connection with "providing telephone
`
`support
`
`services
`
`to physicians
`
`regarding the safe and
`
`appropriate use and distribution of medications used to treat sleep disorders; providing medical
`
`information via telephone
`
`and in the form of written educational materials
`
`to physicians
`
`in
`
`connection with the safe and appropriate use and distribution of medication for the treatment of
`
`sleep disorders" in International Class 44, claiming a first use date at least as early as September
`
`23, 2002. The Registration was issued on the Principal Register on July 6, 2004 and is
`
`incontestable. The filing date and nationwide constructive first use date for this Registration is
`
`May 28, 2002.
`
`19.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 2,952,351 for the mark XYREM (SODIUM OXYBATE) ORAL SOLUTION CIII® (and
`
`Design)
`
`in connection with "pharmaceutical
`
`preparations
`
`for use in the treatment
`
`of sleep
`
`disorders" in International Class 5, claiming a first use date at least as early as October 7, 2002.
`
`The Registration was issued on the Principal Register on May 17, 2005 and is incontestable. The
`
`filing date and nationwide constructive first use date for this Registration is July 2,2002.
`
`20.
`
`Opposer
`
`is the owner of the incontestable United States Trademark Registration
`
`No. 3,162,636 for the mark XYREM® in connection with "medical
`
`information;
`
`providing
`
`medical
`
`information;
`
`and providing health care information by telephone and the internet"
`
`in
`
`International Class 44, claiming a first use date at least as early as September 23, 2002. The
`
`Registration was issued on the Principal Register on October 24, 2006 and is incontestable. The
`
`filing date for this Registration is December 8, 2005.
`
`21.
`
`Opposer is the owner of the United States Trademark Registration No. 5,018,872
`
`for the mark XYREM CARECONNECT® in connection with "providing
`
`telephone
`
`support
`
`services to physicians
`
`and patients regarding the safe and appropriate use and distribution of
`
`7
`
`

`

`medications used to treat sleep disorders; providing medical
`
`information via telephone and in the
`
`form of written educational materials to physicians and patients in connection with the safe and
`
`appropriate
`
`use
`
`and distribution
`
`of medication
`
`for
`
`the treatment
`
`of
`
`sleep disorders"
`
`in
`
`International Class 44, claiming a first use date at
`
`least as early as August 24, 2015. The
`
`Registration was issued on the Principal Register on August 9, 2016. The filing date and
`
`nationwide constructive first use date for this Registration is May 29,2015.
`
`22.
`
`Opposer is the owner of the United States Trademark Registration No. 5,078,995
`
`& Design® in connection with "providing
`for the mark XYREM CARECONNECT (Stylized)zyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`healthcare information by telephone to physicians, pharmacies, prescribers, medical office staff
`
`and patients regarding the safe and appropriate use and distribution of medications used to treat
`
`sleep disorders; providing medical
`
`information via telephone to physicians, pharmacies,
`
`prescribers, medical office staff and patients in connection with the safe and appropriate use and
`
`distribution of medication for the treatment of sleep disorders" in International Class 44,
`
`claiming a first use date at least as early as November 2,2105. The Registration was issued on
`
`the Principal Register on November 18, 2016. The filing date and nationwide constructive first
`
`use date for this Registration is June 24, 2015.
`
`23.
`
`24.
`
`
`
`Copies of Opposer's foregoing registrations are attached hereto aszyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBAExhibit A.
`
`Opposer and its predecessors in interest have expended considerable time, effort
`
`and expense in promoting, advertising and popularizing the distinctive and famous XYREM®
`
`brand name and the goods and services offered under the XYREM® mark. Physicians, health
`
`care providers, patients, and the general public have come to know, rely upon and recognize the
`
`XYREM® mark as a strong indicator of the source of Opposer's goods and services.
`
`8
`
`

`

`25.
`
`Through its predecessors
`
`in interest, Opposer commenced use of its XYREM®
`
`mark in commerce over seventeen (17) years prior to the November 1, 2016 filing date of the
`
`Application and has constructive use of the XYREM® mark dating to June 21, 1996. Opposer
`
`has continuously used in commerce,
`
`from the dates set forth in the corresponding registrations,
`
`its XYREM® mark.
`
`26.
`
`The goods upon which Applicant seeks to apply its proposed ZIBITRO mark are
`
`identical:
`
`"pharmaceutical
`
`preparations
`
`acting on the central nervous
`
`system" and others are
`
`closely related to and/or similar to Opposer's goods and services offered under its XYREM®
`
`mark, and would travel and be promoted through the same channels of trade as the goods and
`
`services offered under Opposer's XYREM® mark.
`
`27.
`
`Applicant's proposed ZIBITRO mark so resembles Opposer's XYREM® mark as
`
`to be likely, when used on or in connection with the goods described in Paragraph 1 to cause
`
`confusion, mistake, or to deceive.
`
`28.
`
`Applicant's
`
`proposed ZIBITRO mark is highly similar
`
`to Opposer's XYREM®
`
`mark. Both marks begin with the same sound.
`
`In addition, Applicant's
`
`proposed ZIBITRO
`
`mark has an "R" the same as Opposer's XYREM® mark. These similarities
`
`stimulate recall of
`
`and likely confusion with Opposer's well-known XYREM® mark. These similarities are likely
`
`to cause Opposer's XYREM® mark and Applicant's ZIBITRO mark to appear and sound
`
`confusingly similar, especially when encountered in the marketplace.
`
`29.
`
`The likelihood of confusion that would result
`
`if Applicant's ZIBITRO mark
`
`achieved registration would be particularly damaging to Opposer, and the public as a whole,
`
`because the consequence of any likelihood of confusion is potentially quite serious in the field of
`
`pharmaceuticals
`
`and medical compositions. Given the possibly dire results of any confusionzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`9
`
`

`

`between the XYREM® mark and the proposed ZIBITRO mark, an extra measure of care should
`
`be taken to prevent any possible confusion.
`
`30.
`
`Relying on its rights in the XYREM® mark, Opposer has successfully objected to
`
`and has prevented registration
`
`of several other phonetically
`
`and visually similar proposed
`
`trademarks,
`
`including
`
`the following marks:
`
`(1) ZYRAB (Aventis-Pasteur),
`
`(2) XYNAM
`
`(Pharmacia),
`
`(3) XYVEL (Bristol-Myers
`
`Squibb),
`
`(4) ZYDEX (Matsu North America),
`
`(5)
`
`ZIDEX (Matsu North America),
`
`& Co.), (7) ZYMERIZ (Eli Lilly &
`(6) ZYMERYS (Eli LillyzyxwvutsrqponmlkjihgfedcbaZYXWVUTSRQPONMLKJIHGFEDCBA
`
`Co.), (8) XYFID (VioQuest Pharmaceuticals, Inc.), (9) ZYTAN (Kiel Laboratories, Inc.), (10)
`
`XINAN (Zhejiang Xinan Chemical Industrial Group Co., Ltd.), (11) XYBREX (Orthocon, Inc.),
`
`(12) XIREZ (Hawthorn Pharmaceuticals, Inc.), (13) ZYTOCIN (West Coast Nutritional, LLC),
`
`(14) XYRELIF (Omeros Corporation), (15) ZYRELIF (Omeros Corporation), (16) ZYSMANTE
`
`(Boehringer), (17) XYTEMZO (Bristol-Myers), (18) XYLOX (Freedom Pharmaceuticals), (19)
`
`XYLASTEM (Zeeshan Hoodboy), (20) SYMREM (Therapeutic Proteins International), (21)
`
`XIMETH (Nordic Group B.V.); (22) XELSTREM (Noven Therapeutics, LLC); (23) XYRALID
`
`(Innovus Pharmaceuticals,
`
`Inc.); (24) ZINTERIO (Glaxo Group Ltd.); (25) ZYSIVA (H.
`
`
`
`LundbeckzyxwvutsrqponmlkjihgfedcbaZYXWVUTSR