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`THIS ORDER IS NOT A
`PRECEDENT OF THE
`TTAB
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`mbm
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
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`November 6, 2018
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`Opposition No. 91241896
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`Eli Lilly and Company
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`v.
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`Wockhardt Bio AG
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`By the Trademark Trial and Appeal Board:
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`This proceeding now comes before the Board for consideration of the motion of
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`Wockhardt Bio AG (“Applicant”), filed July 18, 2018, to dismiss the notice of
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`opposition of Eli Lilly and Company (“Opposer”) for failure to state a claim pursuant
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`to Fed. R. Civ. P. 12(b)(6). The motion is fully briefed.
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`I.
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`Background
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`Applicant seeks to register the mark BASIMIR, in standard characters, for
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`“Medicinal, pharmaceutical and veterinary preparations for treating diabetes;
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`medicinal, pharmaceutical and veterinary preparations containing insulin for
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`treating diabetes; insulin” in International Class 5 and “Medical apparatus used for
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`Opposition No. 91241896
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`the delivery of inhaled insulin; medical apparatus for the delivery of insulin to the
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`body” in International Class 10.1
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`On June 19, 2018, Opposer filed a notice of opposition opposing registration of
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`Applicant’s BASIMIR mark on the ground of likelihood of confusion pursuant to
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`Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In support of its standing and
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`claim, Opposer has pleaded ownership of Application Serial No. 86648904, for the
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`mark BAQSIMI, in standard characters, for “Pharmaceutical preparations, namely,
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`glucagon for diabetes related hypoglycemia, including low blood sugar, diabetes
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`insulin shock, and insulin reaction” in International Class 5.2
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`In lieu of an answer, Applicant filed a motion to dismiss the notice of opposition
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`for failure to state a claim upon which relief can be granted.
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`After a careful review of the arguments raised by the parties in their respective
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`papers, the Board makes the following findings and determinations.
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`II. Motion to Dismiss
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`Applicant argues that Opposer’s claims must be dismissed because Opposer has
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`failed to adequately plead its standing or a claim of likelihood of confusion.
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`A. Standard on Motion to Dismiss
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`To survive a motion to dismiss, “a complaint must contain sufficient factual
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`matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’”
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`Ashcroft v. Iqbal, 556 U.S. 662, 663, 129 S. Ct. 1937, 1949 (2009), quoting Bell Atlantic
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`1 Application Serial No. 87630246, filed October 2, 2017, based on an allegation of a bona fide
`intent to use pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1052(b).
`2 Application Serial No. 86648904, filed June 2, 2015, based on an allegation of a bona fide
`intent to use pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1052(b).
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`2
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`Opposition No. 91241896
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`Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 1974 (2007). A claim has facial
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`plausibility when the plaintiff pleads factual content that allows the court to draw a
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`reasonable inference that the defendant is liable for the misconduct alleged. See
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`Twombly, 550 U.S. at 556-57. However, the plausibility standard does not require
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`that a plaintiff set forth detailed factual allegations. Id. Rather, a plaintiff need only
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`allege “enough factual matter … to suggest that [a claim is plausible]” and “raise a
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`right to relief above the speculative level.” Totes-Isotoner Corp. v. U.S., 594 F.3d 1346,
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`1354 (Fed. Cir. 2010). Moreover, it is well established that whether a plaintiff can
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`actually prove its allegations is not a matter to be determined upon motion to dismiss,
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`but rather at final hearing or upon summary judgment, after the parties have had an
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`opportunity to submit evidence. See Libertyville Saddle Shop Inc. v. E. Jeffries &
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`Sons, Ltd., 22 USPQ2d 1594, 1597 (TTAB 1992) (“A motion to dismiss does not
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`involve a determination of the merits of the case…”).
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`For purposes of determining such motion, all of the plaintiff’s well-pleaded
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`allegations must be accepted as true, and the complaint must be construed in the
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`light most favorable to the plaintiff. See Advanced Cardiovascular Systems Inc. v.
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`SciMed Life Systems Inc., 988 F.2d 1157, 1161, 26 USPQ2d 1038, 1041 (Fed. Cir.
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`1993). As plaintiff, the claimant must plead factual content that allows the Board to
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`draw a reasonable inference that it has standing and that a valid ground for
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`opposition exists. Cf. Twombly, 550 U.S. at 556. In particular, the claimant must
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`allege well-pleaded factual matter and more than “[t]hreadbare recitals of the
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`3
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`Opposition No. 91241896
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`elements of a cause of action, supported by mere conclusory statements,” to state a
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`claim plausible on its face. Iqbal, 129 S. Ct. at 1949 (citing Twombly, 550 U.S. at 555).
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`B. Standing
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`Section 13 of the Trademark Act provides that “[a]ny person who believes that he
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`would be damaged by the registration of a mark upon the principal register … may,
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`upon payment of the prescribed fee, file an opposition in the Patent and Trademark
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`Office, stating the grounds therefor… .” Section 13 thus establishes a broad doctrine
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`of standing; by its terms, the statute requires only that a person have a belief that he
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`would suffer some kind of damage if the mark is registered. As interpreted in binding
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`precedent, a plaintiff must have a “real interest” in the outcome of the proceeding,
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`and a “reasonable basis” for its belief that it would suffer some kind of damage by the
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`registration of the mark. See Empresa Cubana del Tabaco v. Gen. Cigar Co., 753 F.3d
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`1270, 111 USPQ2d 1058, 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d
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`1023, 1025-26 (Fed. Cir. 1999)); Universal Oil Prods. Co. v. Rexall Drug & Co., 463
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`F.2d 1122, 1123, 174 USPQ 458, 459 (CCPA 1972).
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`Opposer has alleged that it is the owner of a pending intent-to-use application for
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`a mark that it believes is confusingly similar to the opposed application. Opposer’s
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`pleading is sufficient to allege its standing to oppose. See The Hartwell Co. v. Shane,
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`17 USPQ2d 1569, 1570 (TTAB 1990) (“[W]e believe that an allegation of a petitioner’s
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`ownership of an application based solely on a bona fide intent to use, when coupled
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`with an allegation of a reasonable basis (such as a belief of likelihood of confusion
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`that is not wholly without merit)…is a legally sufficient pleading of standing…). It is
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`4
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`Opposition No. 91241896
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`not necessary that Opposer’s application have been refused registration based on a
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`potential likelihood of confusion with Applicant’s mark for Opposer to plead standing.
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`See Toufigh v. Persona Parfum Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (finding
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`standing where petitioner filed an application to register the same mark for “at least
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`arguably related” goods even where application has not been refused registration
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`based on defendant’s mark). Here, Opposer has pleaded a reasonable belief of a
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`likelihood of confusion sufficient to allege its standing.
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`C. Likelihood of Confusion
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`To allege a valid ground for opposition under Section 2(d) of the Trademark Act,
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`Opposer need only allege that it has valid proprietary rights that are prior to those
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`of Applicant, or that it owns a registration, and that Applicant’s mark so resembles
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`Opposer’s mark as to be likely to cause confusion. See 15 U.S.C. § 1052(d); Otto Roth
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`& Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
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`Here, Opposer has pleaded that its pleaded mark and Applicant’s mark are similar
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`and that the goods are similar. Notice of opposition ¶ 4. Applicant argues, however,
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`that Opposer has not and cannot plead priority. Specifically, Applicant argues that
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`Opposer has not pleaded prior use or proprietary rights in the BAQSIMI mark and
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`Opposer’s pleaded pending intent-to-use application has not yet matured to
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`registration. Applicant argues that Opposer may not rely upon its constructive use
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`date unless and until its pending application is registered.
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`The Board finds that Opposer has sufficiently pleaded its priority. For purposes
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`of asserting a likelihood of confusion claim, Opposer may rely on the filing date of its
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`5
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`Opposition No. 91241896
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`intent-to-use application. Spirits Int’l, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim
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`Satis Kooperatifleri Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011) (finding that
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`Opposer was entitled to rely solely on its earlier filed intent-to-use application to
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`establish priority); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1339
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`(TTAB 2006) (“We find that the earliest dates upon which opposer may rely for
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`priority purposes as to its non-registered marks are the application filing dates for
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`those marks.”); Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840, 1845
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`n.7 (TTAB 1995) (“[I]n proceedings before the Board the constructive use provisions
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`of Section 7(c) may be used both defensively and offensively.”); see also Zirco Corp. v.
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`Am. Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (“[T]he right
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`to rely upon the constructive use date comes into existence with the filing of the
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`intent-to-use application… .”); McCarthy on Trademarks and Unfair Competition
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`§ 19.31.10 (5th ed. 2018) (“[T]he constructive use provisions can be used both
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`offensively…as well as defensively…”). Cf. Compagnie Gervais Danone v. Precision
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`Formulations, LLC, 89 USPQ2d 1251, 1254-56 (TTAB 2009) (granting motion to
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`dismiss, contingent upon issuance of a registration to Applicant, whose application
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`was filed pursuant to Section 66(b) of the Trademark Act).
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`Applicant contends that the language in Larami cited above is mere dicta and that
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`Truescents is similarly not controlling, because in that case, the plaintiff’s Statement
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`of Use had already been accepted. 6 TTABVUE 3. Applicant therefore argues that
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`Opposer could not properly plead a claim of likelihood of confusion until it has either
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`used its mark or its application has matured to registration, thus conferring the
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`6
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`Opposition No. 91241896
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`benefit of constructive use provided by Section 7(c) of the Trademark Act. The legally
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`sufficient pleading of priority is distinct from the establishment of priority, however.
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`As Larami clarified, “any judgment entered in favor of a party relying on constructive
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`use—whether that party is in the position of plaintiff or defendant in a Board
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`proceeding—is contingent upon the ultimate issuance of a registration to that party.”
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`36 USPQ2d at 1845 n.7. The Board’s language in Larami is consistent with the
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`findings in Spirits International, which found that “[a]n Opposer may rely on the
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`filing date of its intent-to-use application to establish constructive use of its mark on
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`that date. However, any judgment entered in favor of an opposer relying on such
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`constructive use is contingent upon the ultimate issuance of a registration.” 99
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`USPQ2d at 1549. See also Trademark Act § 7(c), 15 U.S.C. § 1057(c). Thus, Board
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`precedent is clear that an intent-to-use application may be used offensively to assert
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`priority for purposes of pleading a legally sufficient claim of likelihood of confusion.
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`In view of the foregoing, the Board finds that Opposer has sufficiently pleaded its
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`priority and claim of likelihood of confusion by alleging ownership of a prior-filed
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`pending intent-to-use application for the BAQSIMI mark.
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`In view of the foregoing, Applicant’s motion to dismiss is denied. Applicant is
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`allowed until December 7, 2018 in which to file and serve an answer to the notice of
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`opposition.
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`III. Schedule
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`Proceedings herein are resumed. Remaining dates are reset as follows:
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`Time to Answer
`Deadline for Discovery Conference
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`12/7/2018
`1/6/2019
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`7
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`Opposition No. 91241896
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`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
`Plaintiff's Opening Brief Due
`Defendant's Brief Due
`Plaintiff's Reply Brief Due
`Request for Oral Hearing (optional) Due
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`
`1/6/2019
`2/5/2019
`6/5/2019
`7/5/2019
`8/19/2019
`10/3/2019
`10/18/2019
`12/2/2019
`12/17/2019
`1/16/2020
`3/16/2020
`4/15/2020
`4/30/2020
`5/10/2020
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`Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
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`taken and introduced out of the presence of the Board during the assigned testimony
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`periods. The parties may stipulate to a wide variety of matters, and many
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`requirements relevant to the trial phase of Board proceedings are set forth in
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`Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
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`manner and timing of taking testimony, matters in evidence, and the procedures for
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`submitting and serving testimony and other evidence, including affidavits,
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`declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
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`submitted in accordance with Trademark Rules 2.128(a) and (b). Oral argument at
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`final hearing will be scheduled only upon the timely submission of a separate notice
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`as allowed by Trademark Rule 2.129(a).
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`8
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