Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA933875
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`Filing date:
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`11/08/2018
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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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`Correspondence
`Address
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`Plaintiff
`Eli Lilly and Company
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`NED W BRANTHOVER
`ABELMAN FRAYNE & SCHWAB
`600 THIRD AVE
`NEW YORK, NY 10017
`UNITED STATES
`nwbranthover@lawabel.com, pjlynfield@lawabel.com
`212-949-9022
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Other Motions/Papers
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`ned w. branthover
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`nwbranthover@lawabel.com
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`/ned w. branthover/
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`11/08/2018
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`Eli Lilly and Company v. Wockhardt Bio AG Opp. No. 91241896 First Amended
`Notice of Opposition Nov. 8, 2018.pdf(131553 bytes )
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`229,956
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`In the Matter of Serial No. 87/630,246
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`Filed October 7, 2017
`—————————————————————————————————————————————————————— X
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`Eli Lilly and Company
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`Opposer.
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`:
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`Opposition No. 91241896
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`V.
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`Wockhardt Bio AG
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`______________________________________________________ x
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`Applicant.
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`F_IRST AMENDED NOTICE OF OPPOSITION
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`Opposer Eli Lilly and Company (“Opposer”), a corporation organized and existing in the state
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`of Indiana, with an office at Lilly Corporate Center, Indianapolis, Indiana 46285, believes that it will
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`be damaged by the registration of Trademark Application Serial No. 87/630,246 for the trademark
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`BASIMIR (“Trademark Application”) and hereby opposes registration and files this First Amended
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`Notice of Opposition.
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`As grounds for this opposition it is alleged that:
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`1.
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`Opposer owns United States Trademark Registration No. 4,688,972 for the trademark
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`BASAGLAR in connection with pharmaceutical preparations, namely, pharmaceutical preparations for
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`the treatment of diabetes that was registered on February 17, 2015.
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`2.
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`Opposer also owns a trademark application based on intent to use for the trademark
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`BAQSIMI as shown in US.
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`trademark application serial number 86/648,904 in connection with
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`“pharmaceutical preparations, namely, glucagon for diabetes related hypoglycemia,
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`including low
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`blood sugar, diabetes insulin shock, and insulin reaction” which was filed on April 12, 2016.
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`3.
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`Wockhardt Bio AG (“Applicant”) filed its US. Trademark Application on October 2,
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`2017 for the mark BASIMIR based on an intent to use for the following goods:
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`Medicinal, pharmaceutical and veterinary preparations for treating
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`diabetes; medicinal,
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`pharmaceutical
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`and
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`veterinary
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`preparations
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`containing insulin for
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`treating diabetes;
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`insulin;(IC 5) and Medical
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`apparatus used in the delivery of inhaled insulin; medical apparatus for the
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`delivery ofinsulin to the body( IC 10).
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`4.
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`Opposer filed its applications for the trademarks BASAGLAR and BAQSIMI prior to
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`Applicant’s filing date for Applicant’s trademark BASIMIR.
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`5.
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`Opposer believes Applicant’s mark BASIMIR will cause confusion with Opposer’s
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`trademarks BASAGLAR and BAQSIMI due to the Visual and phonetic similarity of the trademark
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`BASIMIR with the trademarks BASAGLAR and BAQSIMI and the similarity ofthe goods bearing the
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`respective marks which will lead consumers to mistakenly believe that Applicant’s diabetes related
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`products are sponsored, associated or somehow related to Opposer’s BASAGLAR and BAQSIMI
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`diabetes related products.
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`6.
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`Opposer will be damaged by Applicant’s registration of its trademark because it will
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`cause a likelihood of confusion with Opposer’s trademarks.
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`WHEREFORE,
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`the Opposer
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`respectfully prays that Trademark Application Serial No.
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`87/630,246 be denied registration and that this opposition be sustained.
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`Date: November 8, 2018
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`Respectfully Submitted,
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`
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` 9%” Ma
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`Ned W. Branthover
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`ABELMAN, FRAYNE & SCHWAB
`666 Third Avenue
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`New York, New York 10017
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`
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`Tel: 212-949-9022
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`Fax: 212 949—9190
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`Email: nwbranthovcrg'illuwnhclunn
`pjlynfield@lawabel.com
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`Attorneys for Opposer
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`Eli Lilly and Company
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true copy of Opposer’s First Amended Notice of Opposition was
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`served on Applicant’s attorney by email this 8th day of November, 2018 upon the following:
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`Nicole K McLaughlin, Duane Morris LLP, 30 S. 17‘h Street, Philadelphia, PA 19103-4196 at email
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`address: flkfllglflyglflil'_]@‘_t'lllill']€1"n01113.60”;
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`
