Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`
`ESTTA856407
`
`11/06/2017
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91236955
`Defendant
`Resdevco Ltd.
`MAKLÃ#RY Ã#S TÃ#RSA Ã#GYVÃ#DI IRODA
`BAJCSY-ZSILINSZKY Ã#T 48 2 EM
`BUDAPEST, H-1054
`HUNGARY
`Answer
`dr. Apollonia Kosa
`apollonia.kosa@avocat.hu, kosa.apollonia@upcmail.hu
`/dr. Apollonia Kosa/
`11/06/2017
`Answer to opposition.pdf(280915 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's email
`Signature
`Date
`Attachments
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Jazz Pharmaceuticals, Inc. V. Resdevco Ltd.
`
`Opposition No. 91236955
`
`subject: ANSWER
`
`Plaintiff Jazz Pharmaceuticals, Inc. has filed an opposition No. 91236955 against Resdevco
`Ltd. and its application for the registration of trademark ’Xylijoint’.
`
`’Likehood of confusion” and ‘Dilution by blurring’ are designated in the opposition as
`grounds thereof.
`
`1, the undersigned dr. Apollonia Kosa, as commissioned representative and correspondent of
`the applicant Resdevco Ltd. hereby file an answer to opposition no. 91236955.
`
`Defendant hereby denies both likehood of confusion and dilution by blurring, according
`to arguments set forth below. Dilution by blurring might be a consequence of likehood of
`confusion,
`therefore arguments of denial shall be based on detailing the difference
`between the two marks.
`
`Comparison of marks
`
`The spelling of the applied—for mark of the defendant ,,Xylijoint” differs in several letters
`from that of the registered mark of the plaintiff ,,Xyrem”, only the first two letters are the
`same. The mark ,,Xylijoint” contains the prefix ,,xyli-” in its first part, that refers to xylitol, a
`water-solvent chemical material with various effects, and also known as a sweetener, an
`alternative for sugar
`(https://en.wikipedia.org/wiki/Xyl_it_ol). The mark also contains a
`posterior constituent
`,,-joint” that refers to parts of the human body. Whereas the mark
`,,Xyrem" contains two letters in the first part: ,,xy-” that can refer to numerous things and is
`abstract; and contains the suffix .,—rem” in the second part of the word. that has no meaning.
`The wordpart ..—rem" might refer to the abbreviation REM (rapid eye movement) but this
`association might be generated if a consumer gathers detailed information on the product
`itself(https://www.xyrem.com/)
`
`The difference in the spelling provides a definite difference in vision of the words, therefore
`the average consumer shall immediately distinguish the marks from another.
`
`significantly from the
`The sound (pronunciation) of the mark ..Xylijoint” differs
`pronunciation ofthe mark ,,Xyrem”, namely the word ,,Xylijoint" is longer and the latter part
`thereof (,,joint”) is pronounced {d30int} in the English speech area of the world, whereas the
`latter part of Xyrem (,,rem) is pronounced {rem}. In addition to that, the first part of the mark
`,,Xylijoint” is two letters longer than that of ,,Xyrem” — ,,xyli” vs. ,,xy”.
`
`The completely different pronunciation sound of the marks provides a significant difference
`between the two marks‘ recognition by the potencial customers.
`
`

`

`Difference ofthe two marks also emerges from the connotation of,,Xylijoint”, as both ,,Xyli”
`and ,Joint” has a well circumscribable meaning.
`
`Comparison of goods
`
`Mem 1https://www.xyrem.coLn_/)
`
`The plaintiffs product ~ Xyrem sodium oxybate oral solution ~ is used to treat two common
`symptoms of narcolepsy: excessive daytime sleepiness and cataplexy. It was approved by
`FDA in 2002 and prescribed for more than 60,000 patients in the US.
`
`Because of the serious risks associated with Xyrem, it is available only through a restricted
`distribution program called the XYREM REMS Program.
`In addition, Xyrem is only
`available through the central Certified Pharmacy, the only pharmacy in the United States that
`is permitted to fill the Xyrem prescription and send it directly to patients.
`
`The ,.Getting Xyrem” part of he website (http_s://www.xyrem.com/getting-xyrem#putting-
`safety-first) discribes the method of gaining a prescription thereof. It is evident that Xyrem is
`not available in drugstores or any other commercial places open to the public. Therefore it is
`not sold to any average consumer who might mistake it to any product. Xyrem is only taken
`by those who suffer from narcolepsy, and the distribution thereof is under strict control.
`
`it is
`As the first step of getting Xyrem is the enrollment in the XYREM REMS Program,
`impossible for a special (narcoleptic) patient (comsumer) to confuse Xyrem with any other
`drug and/or medical device.
`
`Xylijoint
`
`is planned to be merchandised under the applied mark —
`that
`The defendant’s product
`Xylijoint A is a type of pharmaceutical preparations, namely an anti—irritant and anti-
`inflammatory solution for injections to treat arthritis and arthrosis.
`
`Xylijoint is planned to be sold solely in drugstores (pharmacies). If later a specific drug will
`be added. than a legal prescription of selling the product in pharmacies will prevail.
`
`Consumption under control
`
`Potential consumers of both Xyrem and Xylijoint gather information about the product from
`their specialist in case of a medical examination, or in connection with their regular treatment
`or therapy. Consumers shall only buy the designated product if they are convinced by their
`therapist and presume that it will help their problem. Therefore they are unlikely to search for
`other similar products on the market — their decision will already be made by the moment of
`entering the drug store. In addition tot hat, Xyrem might only be bought upon prescription.
`
`in
`As both products are recommended by specialists, average consumers will only get
`connection with them after a consultation. There’s no chance for any doctors, pharmacists or
`any other therapists to cofuse Xyrem with Xylijoint, as they all specialise in their special
`medical field and have detailed information on drugs and devices thereof. Therefore, patients
`will definitely not mix the two products. not even if they have both health problems that are
`treated by them.
`
`

`

`Summary and conclusions
`
`As a result of the comparison of the plaintiff’s and the defendant’s marks, the following
`conclusions can be drawn.
`
`0 The two marks ~ Xyrem and Xylijoint — diverge from each other in spelling and also
`in sound.
`
`0 The main and most importat ingredients of the two marks differ from each other.
`
`is developed for the treatment of narcolepsy, whereas the
`0 The plaintiff 5 product
`defendant’s product
`is intended to heal arthrosis and/or arthritis (a difference in
`medical purpose).
`
`0 The use ofthe goods is different as the plaintiffs product is az oral solution, while the
`defendant’s product is a solution for injection.
`
`0 Both products are advertised and merchandised through its specialists.
`
`o The potential consumers gain detailed information on the designated product before
`buying, therefore no confusion might emerge.
`
`Sincerely,
`
`we
`
`dr. Apollonia Kosa
`commissioned representative and correspondent of
`Resdevco Ltd.
`
`P.O.B. 3338. Jerusalem, 91033 Israel
`
`