Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA916697
`08/20/2018
`
`ESTTA Tracking number:
`
`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
`
`Lundbeck LLC
`
`08/19/2018
`
`6 Parkway North
`Deerfield, IL 60015
`UNITED STATES
`
`Alexandra H. Bistline
`Pirkey Barber PLLC
`600 Congress Avenue, Suite 2120
`Austin, TX 78701
`UNITED STATES
`ckindel@pirkeybarber.com, tvold@pirkeybarber.com, abist-
`line@pirkeybarber.com, drausa@pirkeybarber.com, tmcent-
`ral@pirkeybarber.com
`512-322-5200
`
`Applicant Information
`
`Application No
`
`79222202
`
`Publication date
`
`02/20/2018
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`08/20/2018
`
`1211725
`
`NOVARTIS AG
`CH-4002 Basel
`SWITZERLAND
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`08/19/2018
`
`05/22/2014
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Anti-infectives; anti-inflammatories; antibac-
`terial pharmaceuticals; antibiotics; antifungal preparations; antivirals; cardiovascular pharmaceuticals;
`dermatological pharmaceutical preparations; inhaled pharmaceutical preparations for the prevention
`and treatment of respiratory diseases and disorders; pharmaceutical preparations acting on the cent-
`ral nervous system; pharmaceutical preparations and substances for the prevention and treatment of
`gastrointestinal diseases; pharmaceutical preparations for the prevention and treatment of diseases
`and disorders of the autoimmune system, the metabolic system, the endocrine system, the musculo-
`skeletal system and the genitourinary system; pharmaceutical preparations for use in hematology
`and in tissue and organ transplantation; pharmaceutical preparations for the prevention and treat-
`ment of eye diseases and conditions; pharmaceutical preparations for the preventionand treatment of
`heart rhythm disorders; pharmaceutical preparations for the prevention and treatment of immune sys-
`
`

`

`tem related diseases and disorders; pharmaceutical preparations for the prevention and treatment of
`kidney diseases; pharmaceutical preparations for the prevention and treatment of diabetes; pharma-
`ceutical preparations for the prevention and treatment of hypertension; pharmaceutical preparations
`for the prevention and treatment of skin disorders; pharmaceutical preparations for use in dermato-
`logy; pharmaceutical preparations for use in urology; pharmaceutical preparations for ophthalmolo-
`gical use; pharmaceutical preparations for the prevention and treatment of cancer and tumors; phar-
`maceutical preparations for the prevention and the treatment of allergies; pharmaceutical prepara-
`tions for the prevention and treatment of bone diseases; pharmaceutical preparations for the preven-
`tion and treatmentof respiratory diseases and asthma
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`
`86638999
`
`Application Date
`
`05/22/2015
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`CARNEXIV
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Vaccines; pharmaceutical preparations and substances for the prevention and
`treatment of disorders and diseases in, generated by or acting on the central
`nervous system; pharmaceutical preparations and substances acting on the
`central nervous system; central nervous system stimulants; pharmaceutical pre-
`parations and substances for the prevention and treatment of psychiatric and
`neurological disorders and diseases; pharmaceutical preparations and sub-
`stances for the preventionand treatment of Alzheimer's disease and disorder,
`stroke, depression, mood disorders, psychosis, anxiety, epilepsy, sclerosis, por-
`phyria, Huntington's diseaseand disorder, insomnia, Parkinson's disease and
`disorder, schizophrenia, bipolar disorder and disease, ADHD, oncology, pain, al-
`coholism and dependency; diagnostic agents, preparations and substances for
`medical purposes
`
`U.S. Application
`No.
`
`87233069
`
`Application Date
`
`11/10/2016
`
`Registration Date
`
`NONE
`
`Word Mark
`
`CARNEXIV
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of an orange circle shape with two open ended white link
`shapes centered in the orange circle. The characters "CARNEXIV" appear in the
`color red underneath the orange circle.
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Vaccines; pharmaceutical preparations and substances for the prevention and
`treatment of disorders and diseases in, generated by or acting on the central
`nervous system; pharmaceutical preparations and substances acting on the
`central nervous system; central nervous system stimulants; pharmaceutical pre-
`parations and substances for the prevention and treatment of psychiatric and
`neurological disorders and diseases; pharmaceutical preparations and sub-
`stances for the preventionand treatment of dementia, Alzheimer's disease and
`disorder, dizziness, seizures, stroke, depression, cognitive impairment, cognitive
`disorders and diseases, mood disorders, psychosis, anxiety, apathy, epilepsy,
`Lennox-Gastaut syndrome (LGS), sclerosis, porphyria, Huntington's disease and
`disorder, insomnia, Parkinson's disease and disorder, falls, movementdisorders
`and diseases, schizophrenia, bipolar disorder and disease, ADHD, cancer, pain,
`alcoholism and chemical dependency; diagnostic agents, reagents, preparations
`and substances for medical purposes
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Providing an internet website for medical professionals and medical patients fea-
`turing medical information regarding seizures and the treatment of seizures
`
`Attachments
`
`86638999#TMSN.png( bytes )
`87233069#TMSN.png( bytes )
`Notice of Opposition.pdf(31274 bytes )
`
`Signature
`
`/Alexandra H. Bistline/
`
`Name
`
`Date
`
`Alexandra H. Bistline
`
`08/20/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In Re Serial No. 79/222,202
`Filed: September 27, 2017
`Mark: KEMEXIVE
`Published: February 20, 2018
`
`Lundbeck LLC,
`
`
`
`v.
`
`Novartis AG,
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§ Opposition No. ________
`§
`
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`
`
`Lundbeck LLC (“Opposer”), a limited liability company organized and existing under the
`
`laws of Delaware with a principal place of business at 6 Parkway North, Deerfield, Illinois 60015,
`
`believes that it will be damaged by registration of the mark shown in U.S. Serial No. 79/222,202,
`
`and hereby opposes same under the provisions of 15 U.S.C. § 1063. As grounds for opposition,
`
`Opposer asserts the following:
`
`
`
`1.
`
`Opposer is the owner of an approved U.S. application for the mark CARNEXIV
`
`(Ser. No. 86/638,999) in connection with the following goods:
`
`Class 5: Vaccines; pharmaceutical preparations and substances for the prevention
`and treatment of disorders and diseases in, generated by or acting on the central
`nervous system; pharmaceutical preparations and substances acting on the central
`nervous system; central nervous system stimulants; pharmaceutical preparations
`and substances for the prevention and treatment of psychiatric and neurological
`disorders and diseases; pharmaceutical preparations and substances for the
`prevention and treatment of Alzheimer's disease and disorder, stroke, depression,
`mood disorders, psychosis, anxiety, epilepsy, sclerosis, porphyria, Huntington's
`disease and disorder, insomnia, Parkinson's disease and disorder, schizophrenia,
`bipolar disorder and disease, ADHD, oncology, pain, alcoholism and dependency;
`diagnostic agents, preparations and substances for medical purposes
`
` 
`
`1
`
`

`

`
`
`2.
`
`Opposer filed Application Ser. No. 86/638,999 for the mark CARNEXIV on May 22, 2015
`
`and a Notice of Allowance issued on December 22, 2015.
`
`3.
`
`Opposer is also the owner of an approved U.S. application for the mark
`
`CARNEXIV & Design (Ser. No. 87/233,069) in connection with the following goods:
`
`Class 5: Vaccines; pharmaceutical preparations and substances for the prevention
`and treatment of disorders and diseases in, generated by or acting on the central
`nervous system; pharmaceutical preparations and substances acting on the central
`nervous system; central nervous system stimulants; pharmaceutical preparations
`and substances for the prevention and treatment of psychiatric and neurological
`disorders and diseases; pharmaceutical preparations and substances for the
`prevention and treatment of dementia, Alzheimer's disease and disorder, dizziness,
`seizures, stroke, depression, cognitive impairment, cognitive disorders and
`diseases, mood disorders, psychosis, anxiety, apathy, epilepsy, Lennox-Gastaut
`syndrome (LGS), sclerosis, porphyria, Huntington's disease and disorder, insomnia,
`Parkinson's disease and disorder, falls, movement disorders and diseases,
`schizophrenia, bipolar disorder and disease, ADHD, cancer, pain, alcoholism and
`chemical dependency; diagnostic agents, reagents, preparations and substances for
`medical purposes
`
`Class 44: Providing an internet website for medical professionals and medical
`patients featuring medical information regarding seizures and the treatment of
`seizures
`
`4.
`
`Opposer filed Application Ser. No. 87/233,069 for the mark CARNEXIV & Design
`
`
`
`on November 10, 2016 and a Notice of Allowance issued on May 9, 2017.
`
`
`
`5.
`
`The marks CARNEXIV (Ser. No. 86/638,999) and CARNEXIV & Design (Ser.
`
`No. 87/233,069) are hereinafter referred to collectively as the “CARNEXIV Marks.”
`
`6.
`
`Opposer’s CARNEXIV Marks are inherently distinctive, serving to identify and
`
`indicate the source of Opposer’s services to the consuming public, and to distinguish Opposer’s
`
`services from others.
`
`7.
`
`Applicant Novartis AG (the “Applicant”) is a Switzerland Aktiengesellschaft with its
`
`principal place of business at CH-4002, Basel, Switzerland. Applicant filed U.S. Serial No.
`
` 
`
`2
`
`

`

`79/222,202 (the “Application”) pursuant to Section 66A of the Madrid Protocol on September 27,
`
`2017 for the mark KEMEXIVE covering the following goods in Class 5:
`
`Anti-infectives; anti-inflammatories; antibacterial pharmaceuticals; antibiotics;
`antifungal preparations; antivirals; cardiovascular pharmaceuticals; dermatological
`pharmaceutical preparations; inhaled pharmaceutical preparations for the prevention
`and treatment of respiratory diseases and disorders; pharmaceutical preparations
`acting on the central nervous system; pharmaceutical preparations and substances for
`the prevention and treatment of gastrointestinal diseases; pharmaceutical preparations
`for the prevention and treatment of diseases and disorders of the autoimmune system,
`the metabolic system, the endocrine system, the musculoskeletal system and the
`genitourinary system; pharmaceutical preparations for use in hematology and in tissue
`and organ transplantation; pharmaceutical preparations for the prevention and
`treatment of eye diseases and conditions; pharmaceutical preparations for the
`prevention and treatment of heart rhythm disorders; pharmaceutical preparations for
`the prevention and treatment of immune system related diseases and disorders;
`pharmaceutical preparations for the prevention and treatment of kidney diseases;
`pharmaceutical preparations for
`the prevention and
`treatment of diabetes;
`pharmaceutical preparations for the prevention and treatment of hypertension;
`pharmaceutical preparations for the prevention and treatment of skin disorders;
`pharmaceutical preparations for use in dermatology; pharmaceutical preparations for
`use in urology; pharmaceutical preparations for ophthalmological use; pharmaceutical
`preparations for the prevention and treatment of cancer and tumors; pharmaceutical
`preparations for the prevention and the treatment of allergies; pharmaceutical
`preparations for the prevention and treatment of bone diseases; pharmaceutical
`preparations for the prevention and treatment of respiratory diseases and asthma
`
`8.
`
`Opposer’s filing dates for the CARNEXIV Marks are prior to Applicant’s filing date
`
`or any applicable first use date for the KEMEXIVE mark.
`
`9.
`
`Applicant’s goods are highly similar or related to the goods for which Opposer has
`
`applied for in connection with its CARNEXIV Marks.
`
`
`
`10.
`
`Upon information and belief, Applicant’s goods will travel in the same or similar
`
`channels of trade as Opposer’s goods, and will be used by the same or similar types of consumers
`
`who purchase and use Opposer’s goods.
`
`
`
`11.
`
`Opposer has not given Applicant permission or approval to use or register the
`
`KEMEXIVE mark.
`
` 
`
`3
`
`

`

`
`
`12.
`
`Applicant’s mark KEMEXIVE so resembles Opposer’s CARNEXIV Marks as to be
`
`likely, when used in connection with the goods identified in the Application, to cause confusion, or
`
`to cause mistake, or to deceive. Registration therefore should be refused under 15 U.S.C. § 1052(d).
`
`
`
`13.
`
`The likely confusion among prescribing physicians and the consuming public may
`
`lead to medication errors, such as the incorrect medicine being prescribed or dispensed to patients,
`
`which may have potential consequences for patient safety.
`
`
`
`14. Registration of Applicant’s mark KEMEXIVE on the Principal Register would
`
`damage Opposer because it would confer upon Applicant statutory presumptions to which Applicant
`
`is not entitled in view of Opposer’s longstanding prior rights in its CARNEXIV Marks.
`
`
`
`WHEREFORE, Opposer prays that U.S. Serial No. 79/222,202 be rejected, and that
`
`registration of the mark therein be refused.
`
`
`
`This Notice of Opposition is being filed electronically, along with the filing fee required by
`
`37 C.F.R. § 2.6(a)(17). The Commissioner is authorized to draw on the Deposit Account of Pirkey
`
`Barber PLLC, Account No. 50-3924/LUND003/AHB, if there is any problem with the processing of
`
`the electronically submitted fee.
`
`
`
`
`
`
`
`
`
`
`Date: August 20, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Alexandra H. Bistline/
`Christopher M. Kindel
`Alexandra H. Bistline
`PIRKEY BARBER PLLC
`600 Congress Avenue, Suite 2120
`Austin, Texas 78701
`(512) 322-5200
`
`ATTORNEYS FOR OPPOSER
`
`
`
` 
`
`4
`
`