Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA848679
`09/27/2017
`
`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
`Granted to Date
`of previous ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Jazz Pharmaceuticals, Inc.
`09/27/2017
`
`3180 Porter Drive
`Palo Alto, CA 94304
`UNITED STATES
`
`TIFFANY A BLOFIELD
`WINTHROP & WEINSTINE PA
`225 S 6TH ST STE 3500
`MINNEAPOLIS, MN 55402
`UNITED STATES
`Email: tblofield@winthrop.com, sbaird@winthrop.com, trade-
`mark@winthrop.com, cclassen@winthrop.com, ayoung@winthrop.com,
`greyes@winthrop.com
`Phone: 6126046684
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`79198407
`09/27/2017
`
`1324177
`
`Eurozyto GmbH
`Limburger StraÃ#e 50
`61462 Königstein
`FED REP GERMANY
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`
`05/30/2017
`09/27/2017
`
`10/26/2016
`
`Goods/Services Affected by Opposition
`
`Class 001. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Chemicals used in industry, in particular for
`manufacturing pharmaceutical preparations and medicines
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Pharmaceutical preparations and medi-
`cines in the nature of special-purpose solutions for parental nutrition and for cytostatics
`Class 010. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Containers for medical use, namely,
`pouches specially designed for administering parenteral nutrition and for administering cytostatic
`drugs
`
`

`

`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2249959
`
`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.
`Registration Date
`
`2423880
`
`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.
`Registration Date
`
`2472156
`
`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.
`Registration Date
`
`2860730
`
`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.
`Registration Date
`
`3309255
`
`10/09/2007
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`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
`[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.
`Registration Date
`
`3112732
`
`07/04/2006
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`04/13/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2003/04/01 First Use In Commerce: 2004/06/21
`Drug delivery devices
`
`U.S. Registration
`No.
`Registration Date
`
`3162633
`
`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.
`Registration Date
`
`3162634
`
`10/24/2006
`
`Word Mark
`Design Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`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.
`Registration Date
`
`3162635
`
`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.
`Registration Date
`
`3162632
`
`10/24/2006
`
`Word Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`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 ]
`
`2867332
`
`Application Date
`
`04/18/2002
`
`07/27/2004
`
`Foreign Priority
`Date
`XYREM SUCCESS PROGRAM
`
`NONE
`
`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
`
`2848521
`
`Application Date
`
`05/28/2002
`
`06/01/2004
`
`Foreign Priority
`Date
`XYREM PATIENT SUCCESS PROGRAM
`
`NONE
`
`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
`
`

`

`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`medication for the treatment of sleep disorders
`
`2860906
`
`Application Date
`
`05/28/2002
`
`07/06/2004
`
`Foreign Priority
`Date
`XYREM SUCCESS PROGRAM FOR PHYSICIANS
`
`NONE
`
`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
`
`2952351
`
`Application Date
`
`07/02/2002
`
`05/17/2005
`
`Foreign Priority
`Date
`XYREM (SODIUM OXYBATE) ORAL SOLUTION CIII
`
`NONE
`
`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.
`Registration Date
`
`3162636
`
`10/24/2006
`
`Word Mark
`
`XYREM
`
`Application Date
`
`12/08/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`Registration Date
`
`5078995
`
`11/08/2016
`
`Word Mark
`Design Mark
`
`XYREM CARECONNECT
`
`Application Date
`
`06/24/2015
`
`Foreign Priority
`Date
`
`NONE
`
`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
`
`U.S. Registration
`No.
`Registration Date
`
`5018872
`
`08/09/2016
`
`Word Mark
`
`XYREM CARECONNECT
`
`Application Date
`
`05/28/2015
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`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
`
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`76427104#TMSN.png( bytes )
`78769631#TMSN.png( bytes )
`86673318#TMSN.png( bytes )
`86643546#TMSN.png( bytes )
`Notice of Opposition ZYTOTUBE.pdf(47940 bytes )
`Exhibit A.pdf(649758 bytes )
`Exhibit B.pdf(2321316 bytes )
`Exhibit C.pdf(2228489 bytes )
`Exhibit D.pdf(760745 bytes )
`
`Signature
`Name
`Date
`
`/Tiffany A. Blofield/
`TIFFANY A BLOFIELD
`09/27/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Ser. No.: 79/198,407
`Filed: October 26, 2016
`For the mark: ZYTOTUBE
`Published in the Trademark Official Gazette on May 30, 2017
`__________________________________________
`
`JAZZ PHARMACEUTICALS, INC.,
`
`Opposer,
`
`v.
`
`EUROZYTO GmbH,
`
`Opposition No. _________________
`
`Applicant.
`___________________________________________
`
`NOTICE OF OPPOSITION
`
`Jazz Pharmaceuticals, Inc. (“Opposer”) believes that it will be damaged by registration of
`
`the ZYTOTUBE mark shown in the Application Serial No. 79/198,407 (the “Application”) filed
`
`under 66A in International Class 5 and hereby opposes registration of the Application.
`
`The grounds for opposition are as follows:
`
`1.
`
`Resdevco, Ltd. (“Applicant”) seeks to register ZYTOTUBE (“Applicant’s
`
`Proposed ZYTOTUBE Mark”) as a trademark for:
`
`•
`
`•
`
`•
`
`for manufacturing
`in particular
`industry,
`in
`“Chemicals used
`pharmaceutical preparations and medicines,” in International Class 1;
`
`Pharmaceutical preparations and medicines in the nature of special-
`purpose solutions for parental nutrition and for cytostatics,”
`in
`International Class 5; and
`
`“Containers for medical use, namely, pouches specially designed for
`administering parenteral nutrition and for administering cytostatic drugs,”
`in International Class 10.
`
`1
`
`

`

`2.
`
`Applicant’s Proposed ZYTOTUBE Mark was published for opposition in the
`
`Trademark Official Gazette on May 30, 2017. Opposer filed a request to extend time to oppose
`
`the Opposition on June 29, 2017. Thereafter, the Board granted Opposer’s request to extend the
`
`time to oppose the registration of Applicant’s Proposed ZYTOTUBE Mark until July 29, 2017
`
`which by rule extended to July 31, 2017. Opposer filed a request to extend the time to Oppose
`
`on July 31, 2017. Thereafter, on August 11, 2017, the Board granted Opposer’s request to
`
`extend the time to oppose the registration of Applicant’s Proposed ZYTOTUBE Mark until
`
`September 27, 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.
`
`4.
`
`Applicant seeks to register its mark for similar goods as Opposer in the same
`
`International Classes 5 and 10 where Opposer has its XYREM® registrations.
`
`5.
`
`Applicant also seeks to register its mark for closely related to and/or similar goods
`
`in International Class 1 to those in the registrations held by Opposer. The goods in the
`
`Application in International Class 1 are also within the zone of expansion for those included in
`
`Opposer’s XYREM® registrations set forth below.
`
`6.
`
`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
`
`2
`
`

`

`registrations for or containing the XYREM® mark in connection with goods and services falling
`
`within a variety of International Classes.
`
`7.
`
`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.
`
`8.
`
`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.
`
`9.
`
`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.
`
`10.
`
`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
`
`3
`
`

`

`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.
`
`11.
`
`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.
`
`12.
`
`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 April 1, 2003. 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.
`
`13.
`
`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
`
`December 5, 2005.
`
`4
`
`

`

`14.
`
`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.
`
`15.
`
`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.
`
`16.
`
`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 as
`
`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.
`
`17.
`
`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
`
`5
`
`

`

`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.
`
`18.
`
`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.
`
`19.
`
`Opposer is the owner of the incontestable United States Trademark Registration
`
`No. 2,860,906 for the mark XYREM SUCCESS PROGRAM FOR PHYSICIANS® in
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`connection with “providing telephone support services to physicians regarding the safe and
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`appropriate use and distribution of medications used to treat sleep disorders; providing medical
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`information via telephone and in the form of written educational materials to physicians in
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`connection with the safe and appropriate use and distribution of medication for the treatment of
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`sleep disorders” in International Class 44, claiming a first use date at least as early as September
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`23, 2002. The Registration was issued on the Principal Register on July 6, 2004 and is
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`incontestable. The filing date and nationwide constructive first use date for this Registration is
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`May 28, 2002.
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`20.
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`Opposer is the owner of the incontestable United States Trademark Registration
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`No. 2,952,351 for the mark XYREM (SODIUM OXYBATE) ORAL SOLUTION CIII® (and
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`Design) in connection with “pharmaceutical preparations for use in the treatment of sleep
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`disorders” in International Class 5, claiming a first use date at least as early as October 7, 2002.
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`The Registration was issued on the Principal Register on May 17, 2005 and is incontestable. The
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`filing date and nationwide constructive first use date for this Registration is July 2, 2002.
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`21.
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`Opposer is the owner of the incontestable United States Trademark Registration
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`No. 3,162,636 for the mark XYREM® in connection with “medical information; providing
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`medical information; and providing health care information by telephone and the internet” in
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`International Class 44, claiming a first use date at least as early as September 23, 2002. The
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`Registration was issued on the Principal Register on October 24, 2006 and is incontestable. The
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`filing date for this Registration is December 8, 2005.
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`22.
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`Opposer is the owner of the United States Trademark Registration No. 5,018,872
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`for the mark XYREM CARECONNECT® in connection with “providing telephone support
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`services to physicians and patients regarding the safe and appropriate use and distribution of
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`medications used to treat sleep disorders; providing medical information via telephone and in the
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`form of written educational materials to physicians and patients in connection with the safe and
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`appropriate use and distribution of medication for the treatment of sleep disorders” in
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`International Class 44, claiming a first use date at least as early as August 24, 2015. The
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`Registration was issued on the Principal Register on August 9, 2016. The filing date and
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`nationwide constructive first use date for this Registration is May 28, 2015.
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`23.
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`Opposer is the owner of the United States Trademark Registration No. 5,078,995
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`for the mark XYREM CARECONNECT (Stylized) & Design® in connection with “providing
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`healthcare information by telephone to physicians, pharmacies, prescribers, medical office staff
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`and patients regarding the safe and appropriate use and distribution of medications used to treat
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`sleep disorders; providing medical information via telephone to physicians, pharmacies,
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`prescribers, medical office staff and patients in connection with the safe and appropriate use and
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`distribution of medication for the treatment of sleep disorders” in International Class 44,
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`claiming a first use date at least as early as November 2, 2015. The Registration was issued on
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`the Principal Register on November 18, 2016. The filing date and nationwide constructive first
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`use date for this Registration is June 24, 2015.
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`24.
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`Copies of Opposer’s foregoing registrations are attached hereto as Exhibit A.
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`25.
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`In privity with its predecessors in interest, Opposer has adopted and has
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`continuously used the XYREM® mark in connection with pharmaceutical preparations since at
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`least as early as February 1999 and adopted and has continuously used the XYREM® mark in
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`connection with drug delivery devices since at least as early as April 1, 2003.
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`26.
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`Opposer and its predecessors in interest have expended considerable time, effort
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`and expense in promoting, advertising and popularizing the distinctive and famous XYREM®
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`brand name and the goods and services offered under the XYREM® mark. Physicians, health
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`care providers, patients, and the general public have come to know, rely upon and recognize the
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`XYREM® mark as a strong indicator of the source of Opposer’s goods and services.
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`27.
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`Through its predecessors in interest, Opposer commenced use of its XYREM®
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`mark in commerce over sixteen (16) years prior to the October 26, 2016 date of the Application
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`and has constructive use of the XYREM® mark dating to June 21, 1996. Opposer has
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`continuously used in commerce, from the dates set forth in the corresponding registrations, its
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`XYREM® mark.
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`28.
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`The goods upon which Applicant seeks to apply its proposed ZYTOTUBE mark
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`are closely related to and/or similar to Opposer’s goods and services offered under its XYREM®
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`mark, and would travel and be promoted through the same channels of trade as the goods and
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`services offered under Opposer’s XYREM® mark.
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`29.
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`Further, Applicant’s goods are within the zone of expansion of goods that are
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`provided under the XYREM® mark.
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`30.
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`There are
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`third party applications and registrations
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`that
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`include both
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`pharmaceuticals for the treatment of “central nervous system” and “cytostatics” as goods or
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`services that are live on the Principal Register. For your convenience, we include examples from
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`the applications and registrations on the Principal Register as Exhibit B.
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`31.
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`There are third party applications and registrations that include both “containers”
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`and “syringes” or “drug delivery devices” in International Class 10. For your convenience, we
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`include examples from the applications and registrations on the Principal Register as Exhibit C.
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`32.
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`There are third party applications and registrations that include both “chemicals”
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`in International Class 1 and pharmaceuticals to treat diseases or disorders of the “central nervous
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`system” in International Class 5. For your convenience, we include examples from the
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`applications and registrations on the Principal Register as Exhibit D
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`33.
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`Applicant’s proposed ZYTOTUBE mark so resembles Opposer’s XYREM®
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`mark as to be likely, when used on or in connection with the goods described in Paragraph 1 to
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`cause confusion, mistake, or to deceive.
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`34.
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`Applicant’s proposed ZYTOTUBE mark
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`is highly similar
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`to Opposer’s
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`XYREM® mark. Both marks begin with the first syllable having the same sound. Further, both
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`marks have “Y” as the second letter. These similarities stimulate recall of and likely confusion
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`with Opposer’s well-known XYREM® mark.
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`35.
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`These similarities are likely to cause Opposer’s XYREM® mark and Applicant’s
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`ZYTOTUBE mark to appear and sound confusingly similar, especially when encountered in the
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`marketplace.
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`36.
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`The likelihood of confusion that would result if Applicant’s ZYTOTUBE mark
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`achieved registration would be particularly damaging to Opposer, and the public as a whole,
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`because the consequence of any likelihood of confusion is potentially quite serious in the field of
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`pharmaceuticals and medical compositions. Given the possibly dire results of any confusion
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`between the XYREM® mark and the proposed ZYTOTUBE mark, an extra measure of care
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`should be taken to prevent any possible confusion.
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`37.
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`Relying on its rights in the XYREM® mark, Opposer has successfully objected to
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`and has prevented registration of several other phonetically and visually similar proposed
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`trademarks, including the following marks: (1) ZYRAB (Aventis-Pasteur), (2) XYNAM
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`(Pharmacia), (3) XYVEL (Bristol-Myers Squibb), (4) ZYDEX (Matsu North America), (5)
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`ZIDEX (Matsu North America), (6) ZYMERYS (Eli Lilly & Co.), (7) ZYMERIZ (Eli Lilly &
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`Co.), (8) XYFID (VioQuest Pharmaceuticals, Inc.), (9) ZYTAN (Kiel Laboratories, Inc.), (10)
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`XINAN (Zhejiang Xinan Chemical Industrial Group Co., Ltd.), (11) XYBREX (Orthocon, Inc.),
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`(12) XIREZ (Hawthorn Pharmaceuticals, Inc.), (13) ZYTOCIN (West Coast Nutritional, LLC),
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`(14) XYRELIF (Omeros Corporation), (15) ZYRELIF (Omeros Corporation), (16) ZYSMANTE
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`(Boehringer), (17) XYTEMZO (Bristol-Myers), (18) XYLOX (Freedom Pharmaceuticals), (19)
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`XYLASTEM (Zeeshan Hoodboy), (20) SYMREM (Therapeutic Proteins International), (21)
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`XIMETH (Nordic Group B.V.); (22) XELSTREM (Noven Therapeutics, LLC); (23) XYRALID
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`(Innovus Pharmaceuticals, Inc.); (24) ZINTERIO (Glaxo Group Ltd.); (25) ZYSIVA (H.
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`Lundbeck A/S aktieselskap), (26) XIRMA (Xirma Inc.); (27) ZYNEV (Praza LLC Ltd.); (28)
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`ZYEXXA (Portola Pharmaceuticals, Inc.); and (29) ZITRUST (Glaxo Group Limited).
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`38.
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`Given the visual and phonetic similarities between the marks in question and the
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`similar goods offered under the respective marks, those in the relevant public are likely to
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`mistakenly believe that the goods Applicant plans to offer in the United States under the
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`proposed ZYTOTUBE mark are sponsored, endorsed or approved by Opposer, or are in some
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`way affiliated, connected or associated with Opposer, all to the detriment of Opposer.
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`Registration of this Application should therefore be refused under 15 U.S.C. §1052(d) and 1063.
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`39.
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`Opposer’s XYREM® mark is famous. Upon information and belief, XYREM®
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`was famous prior to Applicant’s choice to use the ZYTOTUBE mark. Further, XYREM® was
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`famous as early as of the date that Applicant filed the Application for the ZYTOTUBE mark on
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`October 26, 2016.
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`40.
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`In addition to being confusingly similar, Applicant’s proposed ZYTOTUBE mark
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`is likely to dilute the distinctive quality of Opposer’s well-known and famous XYREM® mark.
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`Registration of Applicant's ZYTOTUBE mark should, therefore, be refused not only under 15
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`U.S.C. §1052(d), but also under 15 U.S.C. § 1125(c).
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`41.
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`Registration of the proposed ZYTOTUBE mark would additionally be a source of
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`damage to Opposer as it would confer upon the Applicant various statutory presumptions to
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`which it is not entitled in view of Opposer’s prior use and registration