Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number: ESTTA915528
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`Filing date:
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`08/14/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91241896
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`Party
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`Defendant
`Wockhardt Bio AG
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`Correspondence
`Address
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`NICOLE K. MCLAUGHLIN
`DUANE MORRIS LLP
`30 S. 17TH ST.
`PHILADELPHIA, PA 19103-4196
`nkmclaughlin@duanemorris.com
`no phone number provided
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`Submission
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`Reply in Support of Motion
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`Filer's Name
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`Nicole K. McLaughlin
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`Filer's email
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`nkmclaughlin@duanemorris.com
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`Signature
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`/NKM/
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`Date
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`08/14/2018
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`Attachments
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`BasimirReply.pdf(178168 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`ELI LILLY AND COMPANY,
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`Opposer,
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`WOCKHARDT BIO AG,
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`Applicant.
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`Opposition No. 91241896
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`APPLICANT’S REPLY TO OPPOSITION MOTION TO DISMISS OPPOSITION
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`Wockhardt Bio AG ("Applicant"), through its undersigned attorneys, submits this Reply
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`to Eli Lilly and Company’s ("Opposer’s") Opposition to Applicant’s Motion to Dismiss the
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`Opposition, with prejudice, filed by Opposer for failure to state a claim upon which relief can be
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`granted, pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure and TBMP §503.
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`I.
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`OPPOSER HAS NO STANDING
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`In response to Applicant’s argument that Opposer has no standing to oppose Applicant’s
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`BASIMIR mark, Opposer cited to Zirco Corp. v. AT&T, 21 U.S.P.Q.2D 1542 (T.T.A.B. 1991)
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`for the proposition that Opposer does not have to allege or prove actual use to have a real
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`interest. Opposer’s reading of Zirco is incorrect because whether a common law user is required
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`to allege or prove of actual use to confer standing was not before, nor decided by, the Zirco
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`Board. Rather, the Zirco Board held that an ITU applicant/defendant can rely on the filing date
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`of its ITU application to defend against a common law user opposer who did not use its mark
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`until after the filing of the ITU application it opposed. Zirco, 21 U.S.P.Q.2D at 1544. (“[T]here
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`can be no doubt but that the right to rely upon the constructive use date comes into existence
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`with the filing of the intent-to-use application and that an intent-to-use applicant can rely upon
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`this date in an opposition brought by a third party asserting common law rights.” (emphasis
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`added)). Zirco does not provide standing for the Opposer.
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`II.
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`OPPOSER HAS NOT ESTABLISHED PRIORITY
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`Like its reliance on Zirco, Opposer’s reliance on Larami Corp. v. Talk to Me Programs
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`Inc., 36 U.S.P.Q.2d 1840 (T.T.A.B 1995) and Truescents LLC, v. Ride Skin Care, L.L.C., 81
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`U.S.P.Q.2d 1334 (T.T.A.B 2006) is misplaced. Larami held, like Zirco, that an ITU
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`applicant/defendant may rely upon its filing date to establish priority. Larami, 36 U.S.P.Q.2d at
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`1845 (defendant “is entitled to rely upon its . . . filing date . . . to assert priority of use.”). While
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`the Board attempted, in note 7, to extend the proposition that an ITU applicant may rely on the
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`filing date of its application to establish priority to an opposing petitioner, this extension is mere
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`dicta because, like Zirco, the only issue before Larami was whether the applicant/defendant may
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`on the filing date of its ITU application for priority. Id.
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`To the extent that the dicta of Larami was cured by Truescents, the facts of Truescents
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`are distinguishable. In particular, the only ITU applications upon which the Opposer in
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`Truescents was allowed to rely were those ITU applications for which a Statement of Use had
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`been accepted and issuance was pending. Truescents, 81 U.S.P.Q.2d at 1336, 1338-39. In this
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`case, Opposer has filed no such Statement of Use for its ITU application, let alone a statement
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`that has been accepted. The Board should find that the Opposer has not plead sufficient facts to
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`establish priority because it has provided no evidence of use.
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`Opposer is asking the Board to adjudicate unrealized trademark rights without pleading
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`that it has used the mark or even that it has a bona fide intent to use the mark. To allow the
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`Opposer to bring this opposition without any allegation of current or imminent risk of harm,
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`where neither the Opposer nor Applicant have established any trademark rights in their
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`respective marks, is a waste of the court’s and parties’ time and resources, and will result in an
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`advisory opinion that may or may not become effective. Such a process risks allowing the
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`weaponization of the ITU application process to block off competitors from marks that an
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`opposer will never use. Like federal courts, the TTAB should deny the Opposer’s attempt to
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`receive a conditional ruling that would only become effective, if and when, Opposer could prove
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`it had actual use of its mark, especially here--where neither party has any trademark rights in its
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`respective marks at this time.
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`CONCLUSION
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`For the foregoing reasons, it is evident that Opposer has no standing to oppose the
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`BASIMIR Mark. Opposer has neither demonstrated that it has a “real interest” in the proceeding
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`nor that it has been or will be damaged by the registration of the BASIMIR mark. Opposer has
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`no proprietary trademark rights, as it has failed to plead any facts alleging any commercial use of
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`the term BAQSIMI, much less a prior right. For these reasons, Applicant respectfully requests
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`that the Board grant Applicant's Motion to Dismiss and that Opposer's Notice of Opposition be
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`dismissed with prejudice.
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`Dated: August 14, 2018
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`Respectfully submitted,
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`/NKM/
`Nicole K. McLaughlin
`DUANE MORRIS LLP
`30 S. 17th Street
`Philadelphia, PA 19103
`(215) 979-1191
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`Attorneys for Applicant
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`CERTIFICATE OF SERVICE
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`I hereby state that a true and correct copy of the foregoing Applicant’s Motion to Dismiss
`Opposition and Motion to Suspend Pending the Disposition of this Motion was filed with the
`Trademark Trial and Appeal Board via the ESTTA electronic filing system and served upon
`Attorneys for Opposer via ESTTA and email, as follows this 14th day of August, 2018.
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`Ned W. Branthover
`ABELMAN FRAYNE SCHWAB
`600 Third Avenue
`New York, New York 10017
`nwbranthover@lawable.com
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`By:
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`/NKM/
`Nicole K. McLaughlin, Esquire
`Duane Morris LLP
`30 S. 17th Street
`Philadelphia, Pennsylvania 19103
`215-979-1191
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`Attorneys for Applicant
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