throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA952532
`02/06/2019
`
`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
`
`Nexus Medical, LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/06/2019
`
`11315 Strange Line Road
`Lenexa, KS 66215
`UNITED STATES
`
`Cheryl L. Burbach
`Hovey Williams LLP
`10801 Mastin Blvd., Suite 1000
`Overland Park, KS 66210
`UNITED STATES
`jherman@hoveywilliams.com, cburbach@hoveywilliams.com, bbar-
`bieri@hoveywilliams.com, litigation@hoveywilliams.com
`9136479050
`
`Applicant Information
`
`Application No
`
`87395012
`
`Publication date
`
`10/09/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`02/06/2019
`
`Opposition Peri-
`od Ends
`
`02/06/2019
`
`WORLD HEALTH CENTERS, LLC
`Suite 217,
`17100 Collins Ave.,
`Sunny Isles Beach, FL 33160
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 2016/12/01 First Use In Commerce: 2016/12/01
`All goods and services in the class are opposed, namely: Health spa services for health and wellness
`of the body and spirit; Medical spaservices, namely, minimally and non-invasive cosmetic and body
`fitness therapies; Vitamin therapy
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3928154
`
`Application Date
`
`06/02/2010
`
`

`

`Registration Date
`
`03/08/2011
`
`Word Mark
`
`Design Mark
`
`IVPLUS
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the words "IV" and"PLUS" in stylized form, with a depiction
`of an addition symbol over the "u" and "s" in "plus".
`
`Class 010. First use: First Use: 2005/01/00 First Use In Commerce: 2005/01/00
`Intravenous extension sets, intravenousadministration sets, and intravenous fil-
`ter sets, all comprised of cannula, intravenous transfer pins, intravenous check
`valves, and intravenous multi-dose vial access devices, and cannula, intraven-
`ous transfer pins, intravenous check valves, and intravenous multi-dose vial ac-
`cess devices
`
`Attachments
`
`85052493#TMSN.png( bytes )
`Print to PDF Design Mark.pdf(2195213 bytes )
`EX A.pdf(236966 bytes )
`EX B.pdf(2853303 bytes )
`EX C PRINT TO PDF.pdf(6169809 bytes )
`EX D.pdf(5758999 bytes )
`EX E.pdf(2181800 bytes )
`EX F.pdf(1911048 bytes )
`EX G.pdf(6050376 bytes )
`EX H.pdf(3025722 bytes )
`EX I.pdf(3338682 bytes )
`
`Signature
`
`/Cheryl L. Burbach/
`
`Name
`
`Date
`
`Cheryl L. Burbach
`
`02/06/2019
`
`

`

`[N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`) 1
`
`) )
`
`)
`
`) )
`
`)
`
`Nexus Medical Contract Manufacturing, LLC
`
`Opposer,
`
`V.
`
`World Health Centers, LLC
`dr'bx’a lVPlus and IV+
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`In the matter of Application Serial No. 87/395012, filed March 31, 2017, in the name of
`
`World Health Centers, LLC dsz’a IVPlus and IV+ (hereinafter "Applicant”) and published for
`
`opposition in the Trademark Official Gazette on October 9, 2018, for the IV+ trademark
`
`(hereinafter the "Opposed Application”). Nexus Medical Contract Manufacturing (hereinafter
`
`"Opposer'") believes that it would be damaged by registration of the mark shown in said application
`
`and hereby opposes the same.
`
`As grounds for opposition, it is alleged as follows:
`
`The Parties
`
`1.
`
`Opposer is a limited liability company organized under the laws of the State of
`
`Kansas, with its principal place of business located at 11315 Strang Line Road, Lenexa, Kansas
`
`66215.
`
`2.
`
`Applicant is, on information and belief, a limited liability company organized under
`
`the laws of the State of Florida, with its principal place of business located at 17100 Collins
`
`Avenue, Suite 21?, Sunny Isles Beach, Florida 33160.
`
`

`

`Opposer’s Use of Its IVPLUS+® Trademark
`
`l.
`
`Opposer, 'on its own andfor through its predecessors in interest andx’or related
`
`entities, is and has been a leading developer, manufacturer, and provider of intravenous (“W")
`
`equipment since long prior to December 1, 2016, the date of first use recited in the Opposed
`
`Application.
`
`2.
`
`Opposer owns U.S. Registration No. 3928154 for IVPLUS+ and Design in
`
`connection with “Intravenous extension sets,
`
`intravenous administration sets, and intravenous
`
`filter sets, all comprised of cannula, intravenous transfer pins, intravenous check valves, and
`
`intravenous multi-dose vial access devices, and cannula, intravenous transfer pins, intravenous
`
`check valves, and intravenous multi-dose vial access devices (the “lVPLUS+ Mark”).
`
`3.
`
`Opposer‘s application for its IVPLUS+ Mark was filed with the US. Patent and
`
`Trademark Office on June 2, 2010, and claims a date of first use in commerce at least as early as
`
`2005.
`
`4.
`
`Opposer’s registered IVPLUS+ Mark is presently alive,
`
`in good standing,
`
`unrevoked, and uncancelled. Notably,
`
`the lVPLUS+ Mark has achieved the status of
`
`"incontestable." The Certificate of Registration and associated status pages, attached as Elm
`
`A, are prt'mafacie evidence of Opposer’s ownership of its registration, the validity thereof, and
`
`Opposer‘s exclusive right to use the IVPLUS+ Mark shown therein on or in connection with the
`
`goods set forth in the Certificate of Registration.
`
`5.
`
`Opposer’s goods and services related to intravenous (“IV”) administration are of
`
`the highest quality and comply with the highest standards in the medical equipment and
`
`manufacturing industry.
`
`

`

`6.
`
`Opposer is an FDA registered manufacturer with several FDA 510(k) clearances
`
`and is in fitll compliance with all applicable FDA regulations, as well as British Standards Institute
`
`for Medical Device Miniaturing‘s ISO 13485 Certification requirements.
`
`7.
`
`The marketing of Opposer’s high quality goods and innovative technologies in the
`
`IV equipment field constitute a substantial and important part of Opposer’s business.
`
`8.
`
`Opposer actively and prominently promotes
`
`its
`
`IVPLUS+ Mark in its
`
`advertisements, including, but not limited to online and print advertising.
`
`9.
`
`Opposer actively and prominently promotes its IVPLUS+ Mark on IV equipment
`
`developed, manufactured, and sold by Opposer, as provided in the specimen submitted on
`
`September 7', 2016 with Opposer’s Combined Declaration of Use and Incontestability under
`
`Sections 8 & 15, and shown below.
`
`A
`l%EL HF!!!
`
`
`
`Prod ueI Reorder No:
`"8046
`
`4“ Mlulbon Extension Set wuh
`split Sepia!“ T-sne. Routing Mlle
`Leer Loch 5 Pinch Clamp
`
`i
`
`Amman. Pruning Volume 059 mL
`
`;
`
`

`

`10.
`
`Opposer has used its 1VPLUS+ Mark for an extensive amount of time and has
`
`expended substantial amounts 'of' money promoting'the quality 'of itsproducts offered under the
`
`IVPLUS+ Mark. As such, the IVPLUS+ Mark serves to identify Opposer as the source of the
`
`high-quality, medically regulated goods bearing "lVPLUS+."
`
`Applicant’s Trademark Application for lV+
`
`11.
`
`Applicant seeks to register IW and filed an application for registration of the
`
`same for use on or in connection with the following services: Health spa services for health and
`
`wellness of the body and spirit; Medical spa services, namely, minimally and non-invasive
`
`cosmetic and body fitness therapies; Vitamin therapy.
`
`12.
`
`The Opposed Application was filed on March 31, 2017, on the basis of Section 1(3)
`
`of the Trademark Act.
`
`13.
`
`The Opposed Application claims a date of first use in commerce of December I,
`
`2016, on or in connection with the services listed above.
`
`14.
`
`The Examining Attorney at the U.S. Patent and Trademark Office issued an Office
`
`Action on June 26, 201? and a final Office Action on January 18, 2018, both refusing registration
`
`oprplicant’s IV+ mark. based on a likelihood of confusion with Opposer‘s registered trademark
`
`for IVPLUS+ for intravenous administration equipment.
`
`15.
`
`On January 24. 2018. Applicant contacted Opposer, requesting Opposer‘s written
`
`consent to Applicant‘s use and registration of its lV+ mark. Opposer declined to consent to
`
`Applicant‘s use or registration ofits IV+ mark. See attached Exhibit B for a true and correct copy
`
`of the email correspondence between counsel for Applicant and counsel for Opposer.
`
`

`

`16.
`
`Applicant appealed the refilsal to the Trademark Trial and Appeal Board and
`
`submitted a Request for Reconsideration, resulting in the publication of the Opposed Application
`
`in the Ofl‘icial Gazette on October 9, 2018.
`
`Applicant’s Services
`
`17.
`
`Upon information and belief, AppliCant’s IV+ mark is solely used in association
`
`with offering IV treatments administered by Applicant (“Applicant‘s Services”), as reflected on
`
`Applicant’s social media accounts and its website, both shown below and more fully in the attached
`
`ivplus.us Weltome to IV Plus“!
`
`IV+ fnstagmm Post from August 1, 201 7, retrieved 2/6/2019
`
`

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`Screenshot taken 2/4/2019 of “H "About Us” Webpage
`
`

`

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`cu: our HAPPY HOUR“ Hermon 1:115 an and Fofiow us on Fateboox to
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`IV+ Facebook Post dated December 26, 201 7, retrieved 2/6/2019
`
`

`

`M ivplus.us - iollow
`‘
`IV Plus
`
`ivplus.us That's one of the day of Iv' Plus!!!
`_nadialemos I’d like to have more info about
`IV plus. pnces, etc please -
`I follow Jessy.
`that's why I saw her post here tks
`ivplusus Good morning. Feel free to visit our
`website wwjvplusus or give us a call at 305—
`615-5555. It will be a pleasure to assist yen!
`
`
`
`IV+ lnstagram Post, dated August 6, 201 7, retrieved 2/6/2019
`
`18.
`
`Applicant specifically markets, under its IV+ mark, IV treatment services as a cure
`
`for hangovers, as reflected below and in the attached Exhibit D.
`
`
`
`ivplus.us . Follow
`South Beach Miami
`
`ivplusns After Party — Hangover IV 'l’he'rapfyI
`
`Did you have too much of Vodka last night?
`Did the bar scene get the best of you? No
`worries. this drip will have you back on your
`feet in no time!
`This re-hydrating hangover IV treatment
`helps to instantly reverses the affects of your
`hangover while detoxifying your body to a
`cellular level. So forget about nausea. reflux.
`and headaches - keep partying on!
`
`vrvplus #wplusmrami mvdrips #rvinfusron
`#Ivtherapy emedical “wellness “antiaging
`eheai‘thyliving #longevity #sfltamintherapy
`eweightloss #hangover #boostenergy
`amiamidrips ervmiami ehiltonmiaml
`eslshotel sritzmiami shots): fidetox #IVan
`eFourSeasonleal-m #acqualina
`#sunnyislesbeach timedlcalspa #artbasel
`
`©Q£n
`9.81“! likes
`
`II]
`
`IW instagram Post, dated December 7, 201 7, retrieved 2/6/2019
`
`8
`
`

`

`19.
`
`As seen below and the attached Exhibit E, Applicant offers its Services at
`
`Applicant’s principal place of business in Sunny Isles, Florida, as well as at trade shows, festivals,
`
`and at customers' bedsides and poolsides outside of Applicant’s business location.
`
`ivplus.us - Fallow
`Miami Yacht Show
`
`ivplusus Contact Us +1 (305} 615-5555
`#miamiboatshowé‘fllfi #mlamiyachtshow
`#Faena SSetai =WHote1 tritzcarllon 3 =1'vplus
`2wolusn‘nemi mudnps eimnfusion ewtherapy
`=med1cal awellness zvatarnmtheraoy
`uhangover ‘w‘boostenergy tmiamidn‘ps
`#wmram: #hiltonmiamr eslshotel firrtzmlaml
`#FourSeasonsMiamr #aicoholrecouery
`emiamlbeach esouthbeath #miamiyachl
`#yachtshow
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`IV+ Instogram Post, dated February 18, 2018, retrieved 2/6/2019
`
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`lV+ tnstagram Post, dated December 7, 2017, retrieved 2/6/2019
`
`iuplusus . ioliow
`Miami An Week 6; Art Basel
`
`ivptusus After Partyr - Hangover IV Therapy.
`
`Reglstered IV" nurses and doctors bring
`their own equipment and travel to the
`customer's hotel to administer the
`intravenous injection as they launge by a
`pool.
`
`Contact Us +1 (305} 6156555 3Faena =5etai
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`IV F‘Jus
`
`ivpiustus Festival goers are curing their
`hangovers with IV drips at Coachelia
`
`The treatment is being enjoyed by bfcggers
`at the elite hotel, Including modei Jasmine
`Sanders. as well as Australian influencer Elle
`Ferguson and her NFL star boyfriend Joel
`Pattful. The annual must: and arts festival is
`expected to draw more than 125.000 people
`throughout the week—long event.
`#ivplus #ivplusmiami sivdrips Sivinfunon
`wivtherap}.I #meclical wieilness #antiaging
`#healthyiiving #longevity stripledigits
`
`httpJ/wwwindependentierliterhealth-
`weilbeing/heaEth-featuresffestival-goers-
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`
`IV+ lnstagrom Post, dated July 24, 2017, retrieved 2/6/2019
`
`20.
`
`Facilities similar to where Applicant provides its Services are generally known as
`
`“IV Bars” or “IV Lounges” and viewed as a trendy fad to treat hangovers. This trend has a short
`
`history, dating back to 2012, when a mobile IV van—called “Hangover Heaven”—would travel
`
`to customer’s hotels in Las Vegas and provide IV fluids on site. See attached Exhibit F for articles
`
`on IV treatment therapy and Hangover Heaven.
`
`21.
`
`The nature of Applicant’s Services, offered under Applicant’s IV+ mark, are
`
`medically invasive services.
`
`IV infusions require injecting fluids, other than blood and often with
`
`vitamins, minerals, and medications, into a person’s bloodstream through a vein by means of a
`
`needle. See Miller-Kean Encyclopedia and Dictionary of Medicine, Nursing, and Allied Health
`
`(2003), at Ittt ailmedicai-dictiona
`
`
`.thefreedictiona
`
`
`.conflintravenous+infusion
`
`22. While state regulations, such as Chapter 6439-12 of the Florida Regulations, may
`
`proscribe the licensure required to administer an IV, it is unclear whether the ever-growing “IV
`
`10
`
`

`

`Bar" business is regulated beyond licensing or whether it is adequately regulated by the proper
`
`government agencies and departments. See attached Exhibit G for articles relating to regulation.
`
`23.
`
`Experienced medical physicians warn about the risks associated with receiving an
`
`IV treatment in the "IV Lounge“ setting, some of which include:
`
`a. Transmission of infectious diseases;
`
`b. Bacterial infection of the blood may lead to sepsis;
`
`c. Excessive levels of vitamins and minerals can cause damage to vital
`
`organs, such as the kidneys, brain, and heart;
`
`d. Blood clots and vein irritation and inflammation;
`
`e. Pre-existing conditions may be negatively affected;
`
`f. Negative side effects from medications used in solution;
`
`g.
`
`Improper insertion of IV can create air embolism associated with stroke;
`
`h.
`
`Inaccurate dosage of vitamins, minerals, or medications;
`
`i. Unsafe blends of 1V solutions.
`
`See attached Exhibit H for related articles.
`
`24.
`
`Skeptics of the benefits of IV treatments at "IV Lounges" often consider the
`
`services a scam, as a single infusion typically costs between $100 and $300, and there is little, if
`
`any, scientific evidence to back the claimed benefits. Many medical physicians attribute
`
`consumer‘s claimed benefits to the placebo effect.
`
`See attached Exhibit I for Applicant‘s
`
`advertised pricing and related articles.
`
`25.
`
`in September of 2018, the Federal Trade Commission (“FTC") prohibited iV
`
`Cocktails, a Texas— and Colorado-based IV infusion clinic, from making unsupported health claims
`
`1]
`
`

`

`that its IV infitsions can treat serious diseases. See attached Exhibit J for the related Press Release
`
`from the FTC.
`
`26.
`
`Applicant’s Services could be promoted under its W+ mark using seemingly
`
`unsupported health Claims, as seen by the following representative samples:
`
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`L prtmmn
`(ironic (Pain
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`( .IJHCI'L’L-h‘tfl! ( a {NO-.1;
`.Seliltse (j& [/(1t’f/ 73:31)}?!
`. DecrechJ (TDD-(m
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`.
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`( ’7] [cu/g1! C/¢.zriz‘y
`".15..
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`Qa’u/‘dbnf jun." Lila
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`read more
`
`Yuuihlul New YOU
`We are a Ccmpleie —fear:h anc '.‘-.'&Ilness
`Center that was IV Vliaer'm InfL _ on God
`Scumimg S'mn Tightemng Imeczames
`Weigh} .055 and
`
`
`
`HH- Yefp Post, dated February 21, 2018, retrieved 2/4/2019
`
`13
`
`

`

`27.
`
`Google video search results of “IV Plus Miami” prioritizes “scam alerts” related to
`
`Applicant’s Services:
`
` |V+ IVPUJS N Pius Miami SCAME!‘ . YouTube
`
`Imp: imm- mimic cotnN-‘akfi’vflxbinflWE
`
`Nulnlionaf N Therapy Miami | Vitamins - Dayton Dandes Medical Center
`nnp: n‘ddmeacenlercomrser.1cm.'nmrllmnal-rr-muaalecr
`
`
`
`
` W PLUS THERAPY MIAMF SCAM ALERT . YcuTUbe
`imp: owns youtune commatch’uc mtfiXvfiltu
`...
`."'--
`.....|
`w HIE .'I-ERaP'-' MIMI! scam Al‘ERT Eh) .'IC-l era» lrus‘. IV Mun because I'
`tIuL-NUP v,- _1~
`
`Vilamin (2 Therapy Miami | IV High Dose i Benefits 1 Side Eifecis
`imp: .-'.-'odmedceuter Eam.-'sarw:és- mamn‘ct
`“J“
`Imralmw o' h-qr-acse .:tel- n L'. ”as Let-.2": .. Lopulz' Est-"rt cue -I'-r
`tréa11hel'EL-‘Eafl!(-’
`
`Fortunate'r
`
`
`
`
`
`
`
`
`
`
`
`
`Ozone Therapy Mrsmii Medical IV! Intravenous I Benefits | Side Ellecm
`nun: {.'ddmedcenlet (mitten-mstmmmernpy:
`
`'LJ5' "3 new Dayton (rarities Hes-cal (‘94.: Miami
`"03‘1“!” J 1N3“ 3 -W '-‘
`
`9 :mich. a". IV
`
`
`
`IV Therapy In Miami - video dailymotion
`nuns .ri'mrr..daal)'mollon minimised-fluent":
`|'.‘....'
`.
`-'
`.
`.L.
`..
`Una-3;,
`'[ra:l:,c-|r.1:cn III' Hus oifers n!9.-Er':-,2 new-oi methods EK- nil: keen Dada”.
`
`Screenshot of Googi‘e Search Results, captured and annotated 2/4/2019
`
`Likelihood of Confusion and Iniug to Opposer’s Goodwill and Reputation
`
`28.
`
`Opposer is especially vigilant in controlling the use of its trademark, given the
`
`nature of Opposer’s products, which, if misused, can lead to serious medical issues.
`
`29.
`
`Opposer’s IVPLUS+ Mark has been in use in commerce, which Congress may
`
`regulate, in connection with its IV administration equipment for over at least 10 years prior to the
`
`l4
`
`

`

`acquisition of any rights Applicant may have in its IV+ mark, whether based on the filing date or
`
`a claimed first use date of the Opposed Application.
`
`30.
`
`Applicant‘s lV+ mark is confusingly similar to Opposer‘s IVPLUS+ Mark, as
`
`Applicant‘s lV+ mark contains the entirety of Opposer’s registered IVPLUS+ Mark, and the
`
`services listed in the Opposed Application are related to the goods offered by Opposer.
`
`31.
`
`Applicant's services. upon information and belief, will travel through the same and
`
`overlapping channels of trade as Opposer’s goods and business, and will be provided to the same
`
`and overlapping classes of customers.
`
`32.
`
`Applicant‘s lV+ mark, used in connection with the goods listed in the Opposed
`
`Application, so resembles Opposer‘s IVPLUS+ Mark, as used by Opposer and applied to
`
`Opposer‘s goods and services, that it is likely to cause confusion in the minds ofthe public, and to
`
`cause mistake andfor deception as to the source of origin of Applicant‘s Services that would lead
`
`the public and prospective purchasers to believe that Applicant‘s Services are those of Opposer‘s.
`
`andfor are provided by, Sponsored by, approved by, licensed by, affiliated with Opposer, or are in
`
`some other way legitimately connected to Opposer andfor its services, goods, andr'or licensed
`
`products. Thus, Applicant's lV+ mark should not be registered, under Section 2(d) of the
`
`Trademark Act.
`
`33.
`
`Any defect, objection to or fault found with Applicant's Services offered under its
`
`IV+ mark would necessarily reflect on and injure the reputation that Opposer has established for
`
`its products and business.
`
`34.
`
`Opposer has no control over the quality oprplicant’s Services provided under its
`
`IV+ mark, and such quality is imperative in the medically-invasive administration of IV infusions
`
`due to the serious risks that accompany Applicant's Services.
`
`15
`
`

`

`35.
`
`1f Applicant is granted a registration for its TV+ mark for the services identified in
`
`the Opposed Application, Applicant would obtain at least a primafircfe exclusive right to use the
`
`mark. Such registration would be a source of damage and injury to Opposer, and to the reputation
`
`and goodwill it enjoys in its registered IVPLUS+ Mark.
`
`WHEREFORE, Opposer respectfully requests that
`
`this Opposition be sustained and
`
`Applicant’s application to register the mark IV+, Application Serial No. 87895012, be denied as
`
`filed and published, and Applicant adjudged not entitled to registration of the mark IV+.
`
`The $400 filing fee for this Opposition has been charged to Deposit Account No. 19- 0522
`
`through the Trademark Trial and Appeal Board’s ESTTA filing system. If any additional fees are
`
`due in connection with the filing of this Notice of Opposition, they may be charged to this account.
`
`and any overpayment may be credited to this account.
`
`16
`
`

`

`Date: February 6, 2019
`
`Respectfully submitted,
`
`NEXUS MEDICAL CONTRACT
`
`MANUFACTURING, LLC
`
`\s\ Chery! L. Bur-back
`Cheryl L. Burbach
`loan 0. Herman, Bar No. 31968
`C. Blair Barbieri
`
`HOVEY WILLIAMS LLP
`
`10801 Mastin Blvd, Suite 1000
`84 Corporate Woods
`Overland Park, Kansas 66210
`
`(913) 6471-9050
`
`Clbtfl hm-cywilliamscom
`itihto‘-1]u\-’€VW111131]1$.Ct1lTl
`bba1‘bicriru.-liove williamscom
`
`
`
`
`ATTORNEYS FOR OPPOSER
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the Notice of Opposition was served via
`electronic mail (email), on this 6‘“ day of February, 2019, to:
`
`Sergei Ore]
`Baker and Rannels, PA
`Suite 302
`
`92 E. Main Street
`
`Somerville, NJ 08876
`
`\s\ Cher-v! L. Burbach
`
`17
`
`

`

`EXHIBIT A
`
`

`

`wfi' If“
`minim! 5mm: iBatent arm Erahemark GBffice
`
`r I
`It“?
`
`IVp[n+5
`
`Reg. No. 3,928,154
`
`Registered Mar. 8, 2011
`
`NEXUS MEDICAL CONTRACT MANUFACTURlNG, LLC (KANSAS LIMITED LIABILITY
`COMPANY)
`1 1315 STRANG LINE ROAD
`LEN'EXA, KS 66215
`
`Int. CL: 10
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FOR: INTRAVENOUS EXTENSION SETS, INTRAVENOUS ADMINISTRATION SETS, AND
`INTRAVENOUS FILTER SETS, ALL COMPRISED OF CANNULA,
`INTRAVENOUS
`TRANSFER PINS, INTRAVENOUS CHECK VALVES, AND INTRAVENOUS MULTI—DOSE
`VIAL ACCESS DEVICES, AND CANNULA, INTRAVENOUS TRANSFER PINS, INTRAVEN-
`OUS CHECK VALVES, AND INTRAVENOUS MULTI—DOSE VIAI, ACCESS DEVICES, IN
`CLASS 10 (US. CLS. 26, 39AND 44).
`
`FIRST USE 1—0-2005; IN COMMERCE 1-0-2005.
`
`THE MARK CONSISTS OF THE WORDS "IV" AND "PLUS" IN STYLIZED FORM, WITH A
`DEFICTION OF AN ADDITION SYMBOL OVER THE "U" AND "S" IN "PLUS".
`
`SER. NO. 85-052,493, FILED 6-2-2010.
`
`PAM WILLIS, EXAMINING ATTORNEY
`
`
`
`Director ofthe United Smbcx \‘umm and I'wdemurk ()lfice
`
`

`

`2/6/201 9
`
`Status Search SN 3928154
`
`W D
`
`ue to high~volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval
`{TSDR} system between 6 w 8 am. ET. Refreshing your web browser should resolve the issue. if you stiti need
`assistance accessing a document. email Legs@u§gtgggy and include your serial number, the document you are looking
`for, and a screenshot of any error messages you have received.
`
`Starting Oct. 4, 2018, bulk data customers should no longer obtain direct access to TSDR data through tsdrsecosptogov.
`There are two alternative ways to receive bulk data from TSDR.
`
`
`STATUS
`
`DOCUMENTS
`
`MAlNTENANCE
`
`Back to Search
`
`Print
`
`Generated on:
`
`This page was generated by TSDR on 2019-02-06 11:16:41 EST
`
`Mark:
`
`lVPLUS
`
`O
`
`+
`
`Application Filing Date: Jun. 02, 2010
`
`Registration Date: Mar. 08, 2011
`
`LIVE/REGISTRATION/lssued and Active
`
`The trademark application has been registered with the Offic
`
`US Serial Number:
`
`US Registration Number:
`
`85052493
`
`3928154
`
`Register:
`
`Principal
`
`Mark Type:
`
`Trademark
`
`TM5 Common Status
`
`Descriptor:
`
`
`
`Status:
`
`A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`
`Status Date:
`
`Nov. 16, 2016
`
`Publication Date:
`
`Dec. 21, 2010
`
`Mark information
`
`Mark Literal Elements:
`
`lVPLUS
`
`Standard Character Claim:
`
`No
`
`Mark Drawing Type:
`
`Description of Mark:
`
`3 - AN lLLUSTRATlON DRAWING WHICH lNCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`The mark consists of the words "IV" and "PLUS" in stylized form, with a depiction of an addition symbol ove
`
`Color(s) Claimed:
`
`Color is not claimed as a feature of the mark.
`
`Design Search Code(s):
`
`24.17.06 - Plus symbol (+)
`
`Goods and Services
`
`Note:
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`http:l/tsdr.uspto.gov/#caseNumber=3928154&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`1/4
`
`

`

`2/6/201 9
`
`Status Search SN 3928154
`
`. Brackets [H] indicate deleted goods/services;
`o Double parenthesis ((.:)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`. Asterisks 5i" identify additional (new) wording in the goods/services.
`For:
`
`Intravenous extension sets, intravenous administration sets, and intravenous filter sets, all comprised of car
`
`pins, intravenous check valves, and intravenous multiadose vial access devices, and cannula, intravenous ti
`check valves, and intravenous multi—dose vial access devices
`
`International Class(es):
`
`010 - Primary Class
`
`U.S Class(es): 026, 039, 044
`
`Class Status:
`
`ACTIVE
`
`Basis:
`
`1(a)
`
`First Use:
`
`Jan. 2005
`
`Basis Information (Case Level)
`
`Filed Use:
`
`Yes
`
`Filed ITU:
`
`Filed 440:
`
`Filed 44E:
`
`Filed 66A:
`
`Filed No Basis:
`
`No
`
`No
`
`No
`
`No
`
`No
`
`Current Owner(s) Information
`
`Owner Name:
`
`NEXUS MEDICAL, LLC
`
`Owner Address:
`
`11315 STRANGE LINE ROAD
`
`LENEXA, KANSAS UNITED STATES 66215
`
`Legal Entity Type:
`
`LIMITED LIABILITY COMPANY
`
`Attorneinorrespondence Information
`
`Attorney of Record
`
`Use in Commerce: Jan. 2005
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`State or Country Where KANSAS
`Organized:
`
`Attorney Name:
`
`Joan Optican Herman
`
`Docket Number: 41919/4195.0
`
`Attorney Primary Email
`Address:
`
`Correspondent
`
`tmdocketing.herman@hoveywilliams.com
`
`Attorney Email Authorized: Yes
`
`Correspondent
`Name/Address:
`
`JOAN OPTICAN HERMAN
`HOVEY WILLIAMS LLP
`10801 MASTIN ST STE 1000
`
`OVERLAND PARK, KANSAS UNITED STATES 66210-1697
`
`Phone:
`
`Correspondent e-mail:
`
`913-647-9050
`
`tmdocketing.herman@hoveywilliams.com
`
`Fax: 913-647-9057
`
`Correspondent e-mail Yes
`Authorized:
`
`Domestic Representative - Not Found
`
`ttp://tsdr.uspto.govl#caseNumber=3928154&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`2/4
`
`r
`
`1E
`
`i i iI
`
`lllllllllxI
`
`i h
`
`

`

`2/6/2019
`
`Status Search SN 3928154
`
`Proeecution History
`
`Date
`
`Nov.16,2016
`
`Nov. 16,2016
`
`Nov.16,2016
`
`‘Sep. 07, 2016
`
`‘Aug.10,2016
`
`Mar. 08, 2011
`
`Dec.21,2010
`
`IDec.01,2010
`
`Nov. 17, 2010
`
`[Nov.16,2010
`
`Nov. 16, 2010
`
`fOcL29,2010
`
`_Oct28,2010
`
`[Oct28,2010
`
`-Oct28,2010
`
`'Oct26,2010
`:Oct26,2010
`
`:Sep.29,2010
`éSep. 29, 2010
`
`,Sep.29,2o1o
`
`.Sep.15,2o1o
`jSep.14,201O
`E’Sep. 14,2010
`:Jun.08,2010
`
`fJun.o7,2o1o
`fJun.05,2o1o
`
`Description
`
`Proceeding Number
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 — E—MAILED
`
`REGISTERED — SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`76533
`
`76533
`
`TEAS SECTION 8 & 15 RECEIVED
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`REGISTERED-PRINCIPAL REGISTER
`
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`ASSIGNED TO LIE
`
`APPROVED FOR PUB — PRINCIPAL REGISTER
`
`EXAMINER'S AMENDMENT ENTERED
`
`EXAMINERS AMENDMENT MAILED
`
`ASSIGNED TO LIE
`
`EXAMINERS AMENDMENT -WRITTEN
`
`FINAL REFUSAL MAILED
`
`FINAL REFUSAL WRITTEN
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`NON—FINAL ACTION MAILED
`
`NON-FINAL ACTION WRITTEN
`
`ASSIGNED TO EXAMINER
`
`NOTICE OF DESIGN SEARCH CODE MAILED
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`NEW APPLICATION ENTERED IN TRAM
`
`73787
`
`73787
`
`70468
`
`59554
`
`76151
`
`76151
`
`88889
`
`88889
`
`76151
`
`76151
`
`Maintenance Fiiings or Post Registration information
`
`f Affidavit of Continued Use: Section 8 - Accepted
`
`Affidavit of lncontestability: Section 15 - Accepted
`
`TM Staff and Location Information
`
`_‘ TM Staff Information - None
`¥ File Location
`
`Current Location: TMEG LAW OFFICE 106
`
`Date in Location: Nov. 16, 2016
`
`http://tsdr.uspto.gov/#caseNumber=3928154&caseSearchType=US__APPLICATION&caseType=DEFAU LT&searchType=statusSearch
`
`3/4
`
`

`

`2/6/2019
`
`Status Search SN 3928154
`
`Assignment Abstract Of Title infermation - Click to Load
`
`Proceedings - Click to Lead
`
`http://tsdr.uspto.gov/#caseNumber=3928154&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
`
`4/4
`
`

`

`EXHIBIT B
`
`

`

`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`lgan Q. Herman
`r
`i
`rel
`il
`r
`
`il
`
`insk . m
`
`RE: Rather Urgent - NEXUS MEDICAL, LLC - potential co-existence agreement [IWOV—DMS.FID276567]
`Monday, July 2, 2018 6:11:47 PM
`im
`. n
`mm
`
`4.‘
`im
`imagegmfigif
`imageOQ6.gif
`im
`7.’
`
`
`
`Dear Sergei,
`
`Thanks for your follow up email. I do have a response from my client. Unfortunately, my client has
`
`declined World Health Centers’ request for a co—existence agreement.
`
`Best regards,
`
`Joan
`
`Joan Optican Herman
`Partner
`
`Hovey Williams LLP
`T 913.647.9050 | F 913.647.9057
`Direct 913.232.5007
`
`From: Sergei Orel <s.orel@br—tmlaw.com>
`
`Sent: Friday, June 29, 2018 7:13 PM
`
`To: Joan O. Herman <joh@hoveywilliams.com>
`
`Cc: ilya@ilyatorchinsky.com
`
`Subject: Rather Urgent — RE: NEXUS MEDICAL, LLC — potential co—existence agreement [IWOV—
`DMS.F|D276567]
`
`Dear Joan ~ do you have a response from your client for me? My deadline is July 18, 2018. l do not
`
`have much time left. Will your client consider a coexistence agreement?
`
`Best regards,
`
`Sergei Orel
`
`

`

`Baker and Rannells, PA
`ATTORNEYS AT LAW
`
`PATENTS, TRADEMARKS,
`
`COPYRIGHTS, UNFAIR COMPETITION
`AND RELATED MATTERS
`
`92 East Main Street, Suite 302
`
`Somerville, New Jersey 08876
`United States of America
`
`Telephone: (908) 722—5640
`
`Facsimile: (908) 7257088
`
`E—mail: s,Qrel@br—tmlaw.com
`
`wwwtmlawworldwidecgm
`
`This email is confidential and may be legally privileged.
`
`lf you received it in error please notify us
`
`If you are not the intended recipient you should not copy it, disclose its contents to
`immediately.
`others, or use it for any purpose.
`
`From: Sergei Orel
`Sent: Friday, January 26, 2018 6:31 PM
`To: 'Joan O. Her

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