throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA952536
`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
`
`87395004
`
`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 )
`Word Mark PRINT TO PDF.pdf(2200722 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
`
`

`

`IN 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
`dfbfa IV Plus and IV+
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`In the matter of Application Serial No. 87895004, filed March 31, 201?, in the name of
`
`World Health Centers, LLC dfbfa IVPlus and IV+ (hereinafter “Applicant“) and published for
`
`opposition in the Trademark Officfai Gazette on October 9, 2018, for the IV PLUS trademark
`
`(hereinafter the “Opposed Application"). Nexus Medical Contract Manufacturing (hereinafter
`
`“0pposer”) believes that it would be damaged by registration ofthe 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 217, Sunny Isles Beach, Florida 33160.
`
`

`

`Opposer’s Use of Its IVPLUS+® Trademark
`
`1.
`
`Opposer, on its own andfor through its predecessors in interest andfor related
`
`entities, is and has been a leading developer. manufacturer, and provider of intravenous (“IV")
`
`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 1VPLUS+ 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 “IVPLUS+ 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 Exhibit
`
`g, are primafacr'e 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 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 full compliance with all applicable F DA 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
`
`[VPLUS+ 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.
`
`..
`&FL Hl' HE
`
`
`
`Fioducl Room" No:
`NEW
`
`1" Mlnlbnn Extension 8-1 with
`spin Slmum Y-sm. Relating Mal-
`Luer Louis I. Finch Clamp
`
`Aflpmi. Pruning Vellum-o 0.30 ml.
`
`i
`
`

`

`10.
`
`Opposer has used its IVPLUS+ Mark for an extensive amount of time and has
`
`expended substantial amounts of money promoting the quality of its products 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 “1VPLUS+."
`
`Applicant’s Trademark Application for IV PLUS
`
`1 1.
`
`Applicant seeks to register the standard character mark, IV PLUS, 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 3 I , 201?, on the basis of Section 1(a)
`
`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 US. Patent and Trademark Office issued an Office
`
`Action on June 26, 2017 and a final Office Action on January 18, 2018, both refusing registration
`
`of Applicant’s IV PLUS 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 1V PLUS mark. Opposer declined to consent to
`
`Applicant’s use or registration of its 1V PLUS 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 refusal to the Trademark Trial and Appeal Board and
`
`submitted a Request for Reconsideration, resulting in the publication of the Opposed Application
`
`in the Oflicial Gazette on October 9, 2018.
`
`Applicant’s Services
`
`17.
`
`Upon information and belief, Applicant’s IV PLUS mark is solely used in
`
`association with offering intravenous (“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 Exhibit C.
`
`ivplums Welcome to IV Plus!!!
`
`23 like:
`
`(90¢:
`
`{:1
`
`!V+ lnstagmm Post from August 1, 201 7, retrieved 2/6/2019
`
`

`

`<—
`
`c o u“..-
`
`._ .. ”W".
`
`IVnus
`
`M
`
`Hunk er
`
`|\ 'l‘lt'utlm‘uh
`
`.\IIIIIII Es
`
`Hi!
`
`|\ Hing
`
`lilirlll I’lirl:i|
`
`iiunlut‘l l»
`
`Hunk \uu
`
`Hills
`
`a ¢ 3 5
`
`
`
`fl '- fall-s ll rflnms m Hn' m-Xf k'rt'l'. 'fi'aidflfnuui .Itit'dft'im' J's alum!
`hmu‘fng II'IL'H h 11.1mm} “Hm II .I'n‘n NH unm- rfmm a? is 3!”?th
`it‘ll-H'nfbh'. llnukln'f if he 3.3111! In build mum "in! it I‘M”?
`
`H .I'a' .‘frm- m- s't‘m'.‘ Irmkmgnf :JR'H'HHII‘ "shun! methods Hm! .vl'n'ngflu'n
`mH' n‘mrfim. w Hm! if can I‘M}! rlfl'iflm‘sa. :w‘ing :Jndinfi‘t'firim. H155 is-
`uhm- 1|. '- thump comes in. mm" mam m 3' {Nahum-u! dcfirm' :;
`mmhfmrfimi nfnrmfml‘s mflmt'd In your needs. din-(HI im‘u _I'mu' MIMI
`sin-am. fiufflfrimij am 111'!» and lifli'i'fflfi." new”; with mimumf mm
`(-mumimn-m.
`
`
`
`Screenshot taken 2/4/2019 of IV+ ”About Us” Webpage
`
`

`

`_ m m
`
`.a Lure
`
`mFuiiow nsnm
`
`QSendMessage
`
`IVPLUS
`
`IV Plus
`
`Renews
`Photos
`
`“ms
`Posts
`
`Anon!
`
`CDrm‘lLlnIty
`"NO and MS
`
`m
`
`26 :m‘
`
`w Plus
`'
`"m:
`\3
`er
`Be“
`Luce to go to the bar to be surtcunuec :35 21019er Lana guys. : come check
`out our HAPPY HOUR" Mention tms ad and Follow us on Faceboon: to
`receive 15".: of? your W Cockle” between 3-6pm Monday through Fneay!
`Jams-515.5555
`I',-p|U5 5g.
`
`‘"
`
`EL
`
`It
`‘.
`
`luv": you: menu-s loin-<8 In: Pa 9
`9
`
`1023peap£elike1h£
`1 0&2 peers-e inflow anus
`
`About
`
`o
`
`w. a
`
`
`
`.19-
`
`1T10Cl Calm-is Me sum 21? -.= 234 93 rm;
`Sunny Iszes Beach Flnnda 33160
`(32! Cures: ans
`.-
`-
`1
`.305: 615-5555
`\
`'3} Send “usage
`
`=J.-'~
`--,p-u:'
`..
`@-
`[j ".'-?C": 5- 5 Her-
`
`I' }
`
`PIKE Rage 5
`IPD'ttfiJl'i
`Ham‘s 10 on m . am PM
`lli-
`1r;
`
`5..-qu=1fn:;
`
`'leIIn Ink-nae“
`
`a hyflmmmsky
`
`a SIEVHIDugn
`
`Rela‘led Panes
`
`.
`
`_
`
`,-_
`
`\
`
`Autism Cenurfiuuin
`.
`.
`
`.1 Like
`
`@ ChahadRusuianCame... i u"
`
`Fiat-3.3.3 (Lee's?
`
`_
`
`_
`
`.
`
`‘
`
`
`
`IV+ Facebook Post dated December 26, 2017, retrieved 2/6/2019
`
`

`

`.
`.
`. '
`
`l
`
`‘
`
`M ivplus.us - Follow
`‘
`Iv Plus
`
`ivplus.us That's one of the day of IV Plus!!!
`_nadiaiemos I'd like to have more Info about
`IV plus. prices. etc please -
`I follow Jessy.
`that's why i saw her post here tks
`ivplusus Good morning. Feel free to visit Our
`website mmjvplusus or give us a (all at 305—
`
`61 5-5555. It will be a pleasure to assist you!
`
`1V+lnstagmm Post, dated August 6, 2017, retrieved 2/6/2019
`
`18.
`
`Applicant specifically markets its IV treatment services as a cure for hangovers, as
`
`reflected below and in the attached Exhibit D.
`
`tvplusns - Follm
`South Beach. Miami
`
`ivplusfis After Party— Hangover N Therapy
`
`93'“ likes
`
`Did you have too much of Vodka Iasl night?
`Did the bar scene get the best of you? No
`worries. this drip will have you had: on your
`feet in no timeé
`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!
`
`#ivplus #ivplusmiami #Ivdrips #Ivinfusion
`ltiv‘therapy tmedical #wellness #antiaging
`ltheeltl'iyliving filongevity #vitarnintherapy
`#vmghtloss #hangaver #boostenergy
`emiamidn'ps #ivmiami #hiltanmiami
`#slshotel #ritzrniami rbotox metals eIUDrip
`sFourSeasomMian-il #acquelina
`#sunnytslesbeach #medlcalspa aartbasel
`
`COIL
`
`El
`
`lV+ lnstagrom 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.
`
`in “I
`'
`
`ivplus.us - Follow
`Miami ‘t‘dcltt Show
`
`ivplus.us Contact Us +1 {305} 615-5555
`elnlamlboatshowzm B smlamlyachtshow
`:Faena #Setal 2WHoteI 3rltzcarlton it #wplus
`trivplusmiami elvdrips #ivlniusion #ivtherapy
`$medlcal swellness witamlntherapy
`shangover #boostenergy Smiamadnps
`Sivmianti shiltonmiami eslshotel eritzmlami
`xFourSeasomMiarni ita|Coltcllrecowen.l
`smiamlbeach #southbeach emiantlyatht
`=yacl‘it5how
`lammlsterbrown Cool ®
`
`€7le
`10,052 likes
`
`III
`
`.
`
`--
`m
`lV+ lnstogrom Post, dated February 18, 2018, retrieved 2/6/2019
`
`ivplusms - Follow
`Miarm Alt Week: Er Art Basel
`
`ivplusus After Party — Hangover IV Therapy.
`
`Registered iV+ nurses and doctors bring
`their own equipment and travel to the
`customer's hotel to administer the
`intravenous injection as they lounge by a
`pool.
`
`Contact Us +1 [305} 615-5555 3Faena esetai
`tWHotel antzcarlton s slvplus Fivplusmlaml
`=ivdrlps #iviniusion *ivtherepy #meditel
`swellness sultammtneraov #hanoover
`
`-
`
`00$
`9,854 likes
`
`[:1
`
`
`
`lv+ lnstogram Post, dated December 7, 201 7, retrleved 2/6/2019
`
`

`

`
`
`lV Plus
`M ivplus.us - Follow
`
`ivplusus Festival goers are curing their
`hangovers with IV drips at Coachella
`
`The treatment is being enjoyed by bloggers
`at the elite hotel. including model Jasmine
`Sanders. as well as Australian influencer Elle
`Ferguson and her NFL star boyfriend Joel
`Pattiul. The annual music and arts festival is
`Expected to draw more than 125,000 people
`throughout the week-long event.
`#ivplus #ivplusmiami #ivdrips tivinfosion
`#ivtherapy #medical Wellness #antiaging
`#heaithyliving alongevity atripledigits
`
`ht‘tp:li'www.independentje/lifefhealth—
`wellbeing/health-leatures{festival-goers-
`are-curing—their-hangovers-withAiv-dripsat-
`coacheIIa-3563SS‘IOhti-nl
`
`aanndresz @santisans @flurry‘ls ojala
`tenqan esto en ATL
`
`00¢:
`32 likes
`
`[I]
`
`lV+ instogrom 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, dating back to only
`
`2012, when a mobile IV van—walled “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.
`
`21.
`
`The nature of Applicant’s Services, offered under Applicant’s IV Plus mark, are
`
`medically invasive services, considering 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 htt s:i'.-’medical-dictiona
`
`.thefreedictiona
`
`
`.corni'intravenousfinfusion.
`
`22. While state regulations, such as Chapter 64B9-12 of the Florida Regulations, may
`
`prescribe 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 "1V Lounge" setting, some of which include:
`
`a. Transmission of infectious diseases;
`
`b. Bacterial infection of the blood may lead to sepsis;
`
`0. Excessive levels of vitamins and minerals can cause damage to vital
`
`organs, such as the kidneys, brain, and heart;
`
`(1. 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 IV 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 1 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
`
`11
`
`

`

`that its IV infusions 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 IV PLUS mark using seemingly
`
`unsupported health claims, as seen by the following representative samples:
`
`
`'I .-. D.:-“:m
`
`x
`
`+
`
`c Q i hltp: wwwlachODk-(fim
`
`"-'
`
`.
`
`'1
`
`"
`
`.'
`
`Q 6
`
` "(Hi-[JUMP-
`
`'
`3
`0*
`>
`t
`
`.
`
`.
`
`.
`.
`IV Plus
`..
`.
`.
`Home
`Raven-s
`
`”[10:06
`VIDEOS
`
`FOSS
`about
`
`Communal?
`Ink! and Ms
`
`'A'!fi- '1‘1"D".'
`
`;'.'|?|I‘|9|'l'_"
`
`JV Flu: IS fl 'EEIID; mm; a'
`M kt __
`_ “7 B
`”m 5 L.“
`NAD+ IV Trealment
`
`.'.l : ”I: ”JEFF-"3 ng,
`
`...
`
`Researches nave menmea NAD+ cellular mamsm that allows them 10
`reverse ageng In the DNA and pretzel II from mule damage.
`.
`Fume; me 0119; Inc '-.*-e :_-,_..‘._ “was! amcle on Slncon valley Quest for
`eternal life So what IS the message" Dealt: l5- opfllunal? Or death mu jusl
`have ID wad"
`SEE HOPE
`
`.
`
`_,
`
`Vililel‘?|fl'li
`
`.
`
`.
`
`)
`
`Ram“ Bum“,
`
`u
`0
`. s.
`‘
`u
`I
`y
`I
`_
`I N PI 5 is 5 Mill an ma: In in: as' w
`mama-,- M! 2m I mm SE2 a.“
`‘1 LIME
`\ Saar-era.-
`."-5 :x-‘J'e;
`_
`‘_
`.-'|"'-'i- .
`
`A-sna Alma _
`8
`HI halal I saw ,uur an Inmupn a mane 5 page I
`don‘t know mum a
`Sty-1 .‘.‘:.'9
`4 L-Le,
`I CLmIY'E"
`-"
`1 . '-"-‘J
`'
`
`Lam": Hanna: E's;
`33-31; Frame- Dealsn
`
`-
`
`+
`
`-
`
`FateL-ua'
`
`; .'
`
`.'-
`
`';
`
`Chasm:
`
`[2; a: d
`
`lv+ Focebook Post, dated August 3, 201 7, retrieved 2/4/2019
`
`12
`
`

`

`
`
`7343 mat-flap} T'ééi'iffii - 15 -.:
`
`X
`
`+
`
`(-
`
`C '0
`
`h r':tT;.-:
`
`'e.'\'n‘.-.ye‘.p.com.
`
`;" '
`
`.-
`
`:-
`
`.- "'----_'__
`
`.
`
`.
`
`-'
`
`.
`
`--
`
`f: 8
`
`IV PLUS
`f“- Frcr‘ :r- us9: :o."-:—r
`NAE. ‘ne'a;I-.- ‘I'eatrre'lts
`
`.
`
`.
`
`I
`
`'
`
`..
`
`_
`
`"'
`
`ENZHMHLT-c Fry‘mh:
`{#LlL/I‘L'ff'LT'J}
`(”7431.17‘1’2‘5'}
`f)
`.
`.
`'
`I... 8’15; ULNHLII}
`H‘
`4-
`-.
`"7‘.
`(J/nwm (Lam V
`,—
`/ ruin (Jun-3
`k
`E.-
`'
`j
`C/Hmmw yl'ul‘uyrre
`
`-.
`
`-
`
`.
`
`'
`
`_
`
`_
`
`5
`
`.
`
`road morn
`
`5hr]? pc’f-‘L’Hu/L-mu'f'}
`(JUCI'HLTJL’LI q {001.}
`gel-bk? (If? {MW/“BUR?
`'.
`,.
`DL’£_!'L)L1L‘L’L/d(ILL-“I”
`cfl-{am/ C/drir'f;
`-.r._=—
`_f'_')
`'(e’C/dl)”{/OHP L: c
`
`' v
`
`‘.-
`
`Youtmul New Yen
`We ate a Complete 48am am: Jenna-55
`Cenier ma? o‘e‘ers Iv Vitamin m‘uslon Eco
`Sculphng SKm Tightening lnfECEElEC—é
`Weight LOSS ano
`
`JV+ Yeip 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:
`
`5 .. L'lJ'o'Td’I -=_'-:-.;eiu-:r
`
`x
`
`+-
`
`(-
`
`C 0 fl
`
`". mwgcoglexoni
`
`.
`
`.
`
`.
`
`.
`
`.
`
`_.
`
`Google
`
`"WWW
`
`.
`
`3-
`
`--:_!.-g_.
`
`_
`
`,._,,__
`
`l} a
`
`*1
`
`555
`
`
`
`Nutritional IV Therapy Miami lVilamins - Dayton Dar-Ides Medical Center
`nttps .-'-'ddmedcenlercomxservlcesJnmntionaI-iv‘lherapluzr
`-‘.!.. .
` Nu‘ :na Iv ‘herap; car. |':I':-v arts-y: 59v: Er‘é‘g; -nd-u:ua.; RIP-1i”? or: '.---_'-'
`
`nmio t.- -...- .-
`
`
`IV PLUS ‘lHERAPY MIAMI SCAM ALERT - YouTUbe
`
`
`hits;
`'1'.-\'.'w romaine cornf'.'.ratcll‘tv=cmc8m921ht
`IV PLUS 'hEflnF‘t MIAMI $5.1M AL ER? (-9 rum ever :ru 5': W Hun because
`l<uHJlue 5-: 2m
`
`
`
`
`
`
`Vitamin C Therapy Miami] iv High Dose | Benefits t Side Elfects
`N195 rsnmeucerite' cmxset-Jirtsrmamm-{v'
`.
`—
`'rlilui'.
`.'.
`'
`mum c-' Mr- az-zs ..-.;=.~ -. c “a: [Tet-:‘re :- poauar act-i». qur :' ~-..
`treats-mm a: name
`
`rota-5.31.1
`
`
`
`Ozone Therapy Miami | Medical IV [ Intravenous i Benefits , Side Effects
`rmpsfladmeotonler tomtstrnresmzone-meram-r
`._
`:.i.. _
`.
`'
`HOE-s31 848-: Da'flu-tilaI-UMI.‘udl:a'-L‘.e'-12:Mia.'lli
`
`‘
`
`ruiartc a-.1v
`
`rroaunmt a1‘nolla ni-irr-I'
`
`Iv Therapy in Miami . video daitymouon
`nuns -.'.wn'.- dmtyflmm mountains-15min
`Lit.
`.
`t!
`1.4.- \l .'-.'-;
`'f-1ér Transom-on IV Plus ol' Ers prevail-.11 rial-nil mel'lods to Phi-ID h'rt‘o 0:35:05
`
`Screenshot of Google Search Results, captured and annotated 2/4/2019
`
`Likelihood of Confusion and Illillfl to Opposer’s Goodwill and Regutation
`
`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
`
`14
`
`

`

`acquisition of any rights Applicant may have in its IV PLUS mark, whether based on the filing
`
`date or a claimed first use date of the Opposed Application.
`
`30.
`
`Applicant's IV PLUS mark is confusingly similar to Opposer‘s IVPLUS+ Mark, as
`
`Applicant's IV PLUS mark contains the entirety of Opposer's registered lVPLUS+ Mark, and the
`
`services listed in the Opposed Application are related to the goods offered by Opposer.
`
`31.
`
`Applicants 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 N PLUS mark, used in connection with the goods listed in the
`
`Opposed Application, so resembles Opposer‘s lVPLUS+ 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 andr’or 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,
`
`andfor licensed products. Thus. Applicant‘s IV PLUS 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 PLUS 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 of Applicant’s Services provided under its
`
`IV PLUS 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.
`
`If Applicant
`
`is granted a registration for its IV PLUS mark for the services
`
`identified in the Opposed Application, Applicant would obtain at least a primafacie 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 PLUS, Application Serial No. 871395004, be
`
`denied as filed and published, and Applicant adjudged not entitled to registration of the mark IV
`
`PLUS.
`
`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.
`
`l6
`
`

`

`Date: February 6, 2019
`
`ReSpectfully submitted,
`
`NEXUS MEDICAL CONTRACT
`
`MANUFACTURING, LLC
`
`\5\ Chem! L. Burbach
`Cheryl L. Burbach
`Joan O. Herman, Bar No. 31968
`C. Blair Barbieri
`
`HOVEY WILLIAMS LLP
`
`1030! Mastin Blvd, Suite 1000
`
`84 Corporate Woods
`Overland Park, Kansas 66210
`
`(913) 647-9050
`
`elhm liovevwilliamsxom
`
`iohmthovevwilliamscom
`hhzu‘bicrituihow 'williamsxom
`
`
`
`
`
`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 6th day of Febwary, 2019. to:
`
`Sergei Ore]
`Baker and Rannels, PA
`Suite 302
`
`92 E. Main Street
`
`Somerville, NJ 088?6
`
`\s\ Circa! L. Bm‘bach
`
`l7
`
`

`

`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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket