throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA958879
`03/08/2019
`
`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
`
`Apotex Technologies, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`03/10/2019
`
`150 Signet Drive
`Toronto, ON M9L 1T9
`CANADA
`
`Sheryl De Luca
`Nixon & Vanderhye P.C.
`901 N. Glebe Road, 11th Floor
`Arlington, VA 22203
`UNITED STATES
`nixonptomail@nixonvan.com, sld@nixonvan.com
`7038164063
`
`Applicant Information
`
`Application No
`
`87619852
`
`Publication date
`
`09/11/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`03/08/2019
`
`Opposition Peri-
`od Ends
`
`03/10/2019
`
`Fischer Enterprises LLC
`2515 White Bear Ave Suite 106
`Maplewood, MN 55109
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: (Based on Intent to Use) Cosmetics and
`cosmetic preparations
`
`Class 005. First Use: 2017/08/01 First Use In Commerce: 2017/08/01
`All goods and services in the class are opposed, namely: (Based on Use in Commerce) Health food
`supplements
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`1162404
`
`Application Date
`
`03/15/1978
`
`

`

`Registration Date
`
`07/28/1981
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`APOTEX
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Medicinal and Pharmaceutical Preparations
`
`U.S. Registration
`No.
`
`2859839
`
`Registration Date
`
`07/06/2004
`
`Word Mark
`
`Design Mark
`
`APO
`
`Application Date
`
`08/25/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1975/03/00 First Use In Commerce: 1997/09/00
`Medicinal and pharmaceutical preparations, namely, phychotherapeutics
`(antidepressants, tranquillizers); antiparkinsonians; antidiabetics; [ vitamins and
`mineral dietary supplements; ] diuretics; antihypertensives; sedatives; antiemet-
`ics; antibacterials; antibiotics; antiarthritics; anti-inflammatory agents; anticon-
`vulsants; antiarrhythmics; uricosurics; xanthine oxidase inhibitors
`
`U.S. Registration
`No.
`
`4632563
`
`Registration Date
`
`11/04/2014
`
`Application Date
`
`02/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX A DIVISION OF APOTEX CORP.
`
`Description of
`Mark
`
`The mark consists of the stylized figure of a human being to the left of a stylized
`rendering of the word "ApoBiologix"with the letters "A" and "B" presented in ini-
`tial caps and the remaining letters presented in lower case lettering. Beneath
`separated by a horizontal line the length of the wording and flush to the right is
`the wording "A Division of Apotex Corp." in a smaller font with the letters "A",
`"D", and "C" in the wording featured in initial caps and the remaining letters in
`
`

`

`lower case.
`
`Goods/Services
`
`Class 042. First use: First Use: 2014/08/18 First Use In Commerce: 2014/08/18
`Drug product research development services
`
`U.S. Registration
`No.
`
`4621329
`
`Registration Date
`
`10/14/2014
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Application Date
`
`02/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the stylized figure of a human being to the left of a stylized
`rendering of the word "ApoBiologix"with the letters "A" and "B" presented in ini-
`tial caps and the remaining letters presented in lower case lettering.
`
`Class 042. First use: First Use: 2014/08/18 First Use In Commerce: 2014/08/18
`Drug product research development services
`
`U.S. Registration
`No.
`
`4989604
`
`Registration Date
`
`06/28/2016
`
`Application Date
`
`02/09/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`APOTEX CONSUMER PRODUCTS
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2013/04/00 First Use In Commerce: 2013/04/00
`Printed brochures, catalogs and promotional materials in the nature of pamph-
`lets and flyers all relating to pharmaceutical products
`Class 035. First use: First Use: 2013/04/00 First Use In Commerce: 2013/04/00
`Promoting the pharmaceutical products of others by advertising and marketing
`Class 042. First use: First Use: 2013/04/00 First Use In Commerce: 2013/04/00
`Drug and pharmaceutical product research and development services
`
`U.S. Registration
`No.
`
`5116756
`
`Registration Date
`
`01/10/2017
`
`Word Mark
`
`APOBIOLOGIX
`
`Application Date
`
`05/08/2013
`
`Foreign Priority
`Date
`
`05/07/2013
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Drug product research development services
`
`U.S. Registration
`No.
`
`5135257
`
`Registration Date
`
`02/07/2017
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Application Date
`
`03/11/2015
`
`Foreign Priority
`Date
`
`03/05/2015
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, namely, pharmaceuticals for [hemopoetic]
`*hematopoietic* growth factors used for stimulating white blood cell production
`and for the treatment of proliferative disorders,namely, angiogenic disorders in-
`cluding cancer
`
`U.S. Registration
`No.
`
`5169202
`
`Registration Date
`
`03/28/2017
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Application Date
`
`05/19/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`The mark consists of a generally octagonal grouping of circles and semicircles
`
`

`

`Mark
`
`Goods/Services
`
`to the left of a stylized rendering of the word "Apobiologix" with the letter "A"
`presented as a capital letter and the remaining letters presented in lower case
`lettering.
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, prescription drugs, generic drugs, and biosimilar
`drugs for [hemopoetic] *hematopoietic* growth factors used for stimulating
`whiteblood cell production, and for the treatment of proliferative disorders,
`namely, angiogenic disorders including cancer
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Drug product research development services
`
`U.S. Registration
`No.
`
`5424083
`
`Registration Date
`
`03/13/2018
`
`Word Mark
`
`Design Mark
`
`APOSPEAKS
`
`Application Date
`
`06/01/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2016/04/01 First Use In Commerce: 2016/04/01
`business management; office functions; human resources, namely, human re-
`sourcesmanagement; services rendered to meet the needs of individuals,
`namely, compiling and analyzing reports from individuals of potential violations
`to company workplace ethics rules and codes of conduct; tracking and monitor-
`ing compliance with workplace ethics rules and codes of conduct
`Class 045. First use: First Use: 2016/04/01 First Use In Commerce: 2016/04/01
`legal services; services rendered to meet the needs of individuals, namely, re-
`viewing standards and practices to assurecompliance with workplace safety
`laws and regulations, anticorruption laws, privacy laws, FDA requirements, hu-
`man rights laws; tracking and monitoring regulatory requirements in the fields of
`workplace safety, anticorruption, privacy rights, FDA compliance and human
`rights for regulatory compliance purposes
`
`U.S. Registration
`No.
`
`5099243
`
`Registration Date
`
`12/13/2016
`
`Word Mark
`
`APOPHARMA
`
`Application Date
`
`03/30/2016
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2011/12/00 First Use In Commerce: 2011/12/00
`Pharmaceutical preparations, namely, prescription drugs for the treatment of
`multiple myeloma by slowing the growth of cancer cells, prescription drugs for
`thetreatment of multiple myeloma by stopping the growth of cancer cells, pre-
`scription drugs for palliative treatment of patients with multiple myeloma, and
`prescription drugs for use as an iron chelatorfor the treatment of patients with
`transfusion iron overload due to thalassemiasyndromes
`
`U.S. Application
`No.
`
`86958426
`
`Application Date
`
`03/30/2016
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`APOPHARMA USA
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "APOPHARMA" with "USA" underneath and a
`swoosh design at the end.
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, namely, prescription drugs for the treatment of
`multiple myeloma by slowing the growth of cancer cells, prescription drugs for
`thetreatment of multiple myeloma by stopping the growth of cancer cells, pre-
`scription drugs for palliative treatment of patients with multiple myeloma, and
`prescription drugs for use as an iron chelatorfor the treatment of patients with
`transfusion iron overload due to thalassemiasyndromes, prescription drugs for
`the treatment of iron-associated neurodegenerative conditions, namely, Parkin-
`son's disease and neurodegeneration with brain iron accumulation, in particular,
`pantothenate kinase-associated neurodegeneration
`
`Attachments
`
`76540417#TMSN.png( bytes )
`76713573#TMSN.png( bytes )
`76713572#TMSN.png( bytes )
`86528589#TMSN.png( bytes )
`85926345#TMSN.png( bytes )
`86560396#TMSN.png( bytes )
`86634783#TMSN.png( bytes )
`
`

`

`87056199#TMSN.png( bytes )
`86958335#TMSN.png( bytes )
`86958426#TMSN.png( bytes )
`2148-168 Notice of Opposition.pdf(213132 bytes )
`Ex. 1 TSDR 1162404.pdf(102958 bytes )
`Ex. 2 TSDR 2859839.pdf(108096 bytes )
`Ex. 3 TSDR 4632563.pdf(121586 bytes )
`Ex. 4 TSDR 4621329.pdf(117826 bytes )
`Ex. 5 TSDR 4989604.pdf(113672 bytes )
`Ex. 6 TSDR 5116756.pdf(115440 bytes )
`Ex. 7 TSDR 5135257.pdf(115513 bytes )
`Ex. 8 TSDR 5169202.pdf(118158 bytes )
`Ex. 9 TSDR 5424083.pdf(115031 bytes )
`Ex. 10 TSDR 5099243.pdf(111525 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Sheryl De Luca/
`
`Sheryl De Luca
`
`03/08/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`
`v.
`
`2148-168
`
`
`
`
`
`Opposition No. ____________
`Application No. 87619852
`Mark: APOTHEX & Design
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Apotex Technologies Inc.,
`
`
`
`
`
`Fischer Enterprises LLC DBA Apothex,
`
`
`
`
`ATTN: Chief Administrative Trademark Judge
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`In the matter of an application for registration of the mark APOTHEX & Design,
`
`Serial No. 87619852, filed September 23, 2017 by Fischer Enterprises LLC DBA
`
`Apothex (hereafter "Applicant"), which was published in the Official Gazette of
`
`September 11, 2018 in International Classes 3 and 5, after which Apotex Technologies
`
`Inc., with an address at 150 Signet Drive, Toronto, Ontario Canada M9L1T9 (hereafter
`
`“Opposer”), on October 9, 2018 filed a First 90 Day Request for Extension of Time to
`
`Oppose which was granted on that same day; and on January 3, 2019 filed a consented
`
`60 Day Request for Extension of Time to Oppose for Good Cause, which was granted
`
`that same day. Opposer believes that it will be damaged by the registration of the mark
`
`shown in the above-identified application and hereby opposes same under the
`
`provisions of Section 13 of the Trademark Act of July 5, 1945 (15 U.S.C. §1063). Our
`
`payment in the amount of $800 is enclosed.
`
`
`
`2903036
`
`

`

`As grounds for opposition, it is alleged that:
`
`1. Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`1162404 for the trademark APOTEX for “Medicinal and Pharmaceutical
`
`Preparations,” in Class 5.
`
`2. Registration No. 1162404 was filed on March 15, 1978 and was issued on July
`
`28, 1981. This registration is valid, subsisting, unrevoked and uncancelled; as
`
`such, this registration constitutes conclusive evidence of the validity of the
`
`registered mark and of the registration thereof, and of Opposer’s ownership of
`
`the mark shown therein, and of Opposer’s exclusive right to use the registered
`
`mark in commerce as provided in Section 33 of the Trademark Act. Opposer’s
`
`‘404 Registration also constitutes notice to Applicant of Opposer’s claim of
`
`ownership of the mark shown therein as provided in Sections 7(b), 22, and 33(a)
`
`of the Trademark Act. A true and correct copy of the specifics of the ‘404
`
`Registration obtained from the PTO’s TESS database is attached as Exhibit 1
`
`and made of record.
`
`3. Opposer adopted the mark “APO” in 1975 for various medicinal and
`
`pharmaceutical preparations in International Class 5 and has used the mark APO
`
`for these goods in commerce since at least as early as 1997.
`
`4. Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`2859839 for the trademark APO for “Medicinal and pharmaceutical preparations,
`
`namely, phychotherapeutics (antidepressants, tranquillizers); antiparkinsonians;
`
`antidiabetics; diuretics; antihypertensives; sedatives; antiemetics; antibacterials;
`
`2
`
`2903036
`
`

`

`antibiotics; antiarthritics; anti-inflammatory agents; anticonvulsants;
`
`antiarrhythmics; uricosurics; xanthine oxidase inhibitors,” in Class 5.
`
`5. Registration No. 2859839 was filed on August 25, 2003, issued on July 6, 2004
`
`and claims a first date of use anywhere of March 1975 and first date of use in
`
`commerce of September 1997. This registration is valid, subsisting, unrevoked
`
`and uncancelled; as such, this registration constitutes conclusive evidence of the
`
`validity of the registered mark and of the registration thereof, and of Opposer’s
`
`ownership of the mark shown therein, and of Opposer’s exclusive right to use the
`
`registered mark in commerce as provided in Section 33 of the Trademark Act.
`
`Opposer’s ‘839 Registration also constitutes notice to Applicant of Opposer’s
`
`claim of ownership of the mark shown therein as provided in Sections 7(b), 22,
`
`and 33(a) of the Trademark Act. A true and correct copy of the specifics of the
`
`‘839 Registration obtained from the PTO’s TESS database is attached hereto as
`
`Exhibit 2 and made of record.
`
`6. Opposer owns and relies on U.S. Trademark Registration No. 4632563 for the
`
`trademark
`
`for “Drug product research development
`
`services,” in Class 42.
`
`7. Registration No. 4632563 was filed on February 25, 2013, was issued on
`
`November 4, 2014 and claims a date of first use anywhere and a date of first use
`
`in commerce of August 18, 2014. This registration is valid, subsisting, unrevoked
`
`and uncancelled; as such, this registration constitutes prima facie evidence of the
`
`validity of the registered mark and of the registration thereof, and of Opposer’s
`
`3
`
`2903036
`
`

`

`ownership of the mark shown therein, and of Opposer’s exclusive right to use the
`
`registered mark in commerce as provided in Section 33 of the Trademark Act.
`
`Opposer’s ‘563 Registration also constitutes notice to Applicant of Opposer’s
`
`claim of ownership of the mark shown therein as provided in Sections 7(b), 22,
`
`and 33(a) of the Trademark Act. A true and correct copy of the specifics of the
`
`‘563 Registration obtained from the PTO’s TESS database is attached as Exhibit
`
`3 and made of record.
`
`8. Opposer owns and relies on U.S. Trademark Registration No. 4621329 for the
`
`trademark
`
`for “Drug product research development
`
`services,” in Class 42. Registration No. 4621329 was filed on February 25, 2013,
`
`was issued on October 14, 2014 and claims a date of first use anywhere and a
`
`date of first use in commerce of August 18, 2014. This registration is valid,
`
`subsisting, unrevoked and uncancelled; as such, this registration constitutes
`
`prima facie evidence of the validity of the registered mark and of the registration
`
`thereof, and of Opposer’s ownership of the mark shown therein, and of
`
`Opposer’s exclusive right to use the registered mark in commerce as provided in
`
`Section 33 of the Trademark Act. Opposer’s ‘329 Registration also constitutes
`
`notice to Applicant of Opposer’s claim of ownership of the mark shown therein as
`
`provided in Sections 7(b), 22, and 33(a) of the Trademark Act. A true and correct
`
`copy of the specifics of the ‘329 Registration obtained from the PTO’s TESS
`
`database is attached as Exhibit 4 and made of record.
`
`9. Opposer owns and relies on U.S. Trademark Registration No. 4989604 for the
`
`mark APOTEX CONSUMER PRODUCTS for “Printed brochures, catalogs and
`
`4
`
`2903036
`
`

`

`promotional materials in the nature of pamphlets and flyers all relating to
`
`pharmaceutical products,” in Class 16; “Promoting the pharmaceutical products
`
`of others by advertising and marketing,” in Class 35; and “Drug and
`
`pharmaceutical product research and development services,” in Class 42. This
`
`was filed on February 9, 2015, and issued on June 28, 2016, and claims a first
`
`date of use anywhere and a first date of use in Commerce of April 2013. This
`
`registration is valid, subsisting, unrevoked and uncancelled; as such, this
`
`registration constitutes prima facie evidence of the validity of the registered mark
`
`and of the registration thereof, and of Opposer’s ownership of the mark shown
`
`therein, and of Opposer’s exclusive right to use the registered mark in commerce
`
`as provided in Section 33 of the Trademark Act. Opposer’s ‘604 Registration
`
`also constitutes notice to Applicant of Opposer’s claim of ownership of the mark
`
`shown therein as provided in Sections 7(b), 22, and 33(a) of the Trademark Act.
`
`A true and correct copy of the specifics of the ‘604 Registration obtained from the
`
`PTO’s TESS database is attached as Exhibit 5 and made of record.
`
`10. Opposer owns and relies on U.S. Trademark Registration No. 5116756 for the
`
`mark APOBIOLOGIX for “Drug product research development services,” in Class
`
`42. Registration No. 5116756 was filed on May 8, 2013 and issued on January
`
`10, 2017. This registration is valid, subsisting, unrevoked and uncancelled; as
`
`such, this registration constitutes prima facie evidence of the validity of the
`
`registered mark and of the registration thereof, and of Opposer’s ownership of
`
`the mark shown therein, and of Opposer’s exclusive right to use the registered
`
`mark in commerce as provided in Section 33 of the Trademark Act. Opposer’s
`
`5
`
`2903036
`
`

`

`‘756 Registration also constitutes notice to Applicant of Opposer’s claim of
`
`ownership of the mark shown therein as provided in Sections 7(b), 22, and 33(a)
`
`of the Trademark Act. A true and correct copy of the specifics of the ‘756
`
`Registration obtained from the PTO’s TESS database is attached as Exhibit 6
`
`and made of record.
`
`11. Opposer owns and relies on U.S. Trademark Registration No. 5135257 for the
`
`mark APOBIOLOGIX for “Pharmaceutical preparations, namely, pharmaceuticals
`
`for [hemopoetic] *hematopoietic* growth factors used for stimulating white blood
`
`cell production and for the treatment of proliferative disorders, namely,
`
`angiogenic disorders including cancer,” in Class 5. Registration No. 5135257
`
`was filed on March 11, 2015 and issued on February 7, 2017. This registration is
`
`valid, subsisting, unrevoked and uncancelled; as such, this registration
`
`constitutes prima facie evidence of the validity of the registered mark and of the
`
`registration thereof, and of Opposer’s ownership of the mark shown therein, and
`
`of Opposer’s exclusive right to use the registered mark in commerce as provided
`
`in Section 33 of the Trademark Act. Opposer’s ‘257 Registration also constitutes
`
`notice to Applicant of Opposer’s claim of ownership of the mark shown therein as
`
`provided in Sections 7(b), 22, and 33(a) of the Trademark Act. A true and correct
`
`copy of the specifics of the ‘257 Registration obtained from the PTO’s TESS
`
`database is attached as Exhibit 7 and made of record.
`
`12. Opposer owns and relies on U.S. Trademark Registration No. 5169202 for the
`
`mark
`
`for “Pharmaceutical preparations, prescription drugs,
`
`generic drugs, and biosimilar drugs for [hemopoetic] *hematopoietic* growth
`
`6
`
`2903036
`
`

`

`factors used for stimulating white blood cell production, and for the treatment of
`
`proliferative disorders, namely, angiogenic disorders including cancer” in Class 5
`
`and “drug product research development services,” in Class 42. Registration No.
`
`5169202 was filed on May 19, 2015 and issued on March 28, 2017. This
`
`registration is valid, subsisting, unrevoked and uncancelled; as such, this
`
`registration constitutes prima facie evidence of the validity of the registered mark
`
`and of the registration thereof, and of Opposer’s ownership of the mark shown
`
`therein, and of Opposer’s exclusive right to use the registered mark in commerce
`
`as provided in Section 33 of the Trademark Act. Opposer’s ‘202 Registration
`
`also constitutes notice to Applicant of Opposer’s claim of ownership of the mark
`
`shown therein as provided in Sections 7(b), 22, and 33(a) of the Trademark Act.
`
`A true and correct copy of the specifics of the ‘202 Registration obtained from the
`
`PTO’s TESS database is attached as Exhibit 8 and made of record.
`
`13. Opposer owns and relies on U.S. Trademark Registration No. 5424083 for the
`
`mark APOSPEAKS for “business management; office functions; human
`
`resources, namely, human resources management; services rendered to meet
`
`the needs of individuals, namely, compiling and analyzing reports from
`
`individuals of potential violations to company workplace ethics rules and codes of
`
`conduct; tracking and monitoring compliance with workplace ethics rules and
`
`codes of conduct” in Class 35 and “legal services; services rendered to meet the
`
`needs of individuals, namely, reviewing standards and practices to assure
`
`compliance with workplace safety laws and regulations, anticorruption laws,
`
`privacy laws, FDA requirements, human rights laws; tracking and monitoring
`
`7
`
`2903036
`
`

`

`regulatory requirements in the fields of workplace safety, anticorruption, privacy
`
`rights, FDA compliance and human rights for regulatory compliance purposes” in
`
`Class 45. Registration No. 5424083 was filed on Jun 1, 2016 and issued on
`
`March 13, 2018. This registration is valid, subsisting, unrevoked and
`
`uncancelled; as such, this registration constitutes prima facie evidence of the
`
`validity of the registered mark and of the registration thereof, and of Opposer’s
`
`ownership of the mark shown therein, and of Opposer’s exclusive right to use the
`
`registered mark in commerce as provided in Section 33 of the Trademark Act.
`
`Opposer’s ‘083 Registration also constitutes notice to Applicant of Opposer’s
`
`claim of ownership of the mark shown therein as provided in Sections 7(b), 22,
`
`and 33(a) of the Trademark Act. A true and correct copy of the specifics of the
`
`‘083 Registration obtained from the PTO’s TESS database is attached as Exhibit
`
`9 and made of record.
`
`14. Opposer is also the owner of Registration No. 5099243 for the mark
`
`APOPHARMA for “Pharmaceutical preparations, namely, prescription drugs for
`
`the treatment of multiple myeloma by slowing the growth of cancer cells,
`
`prescription drugs for the treatment of multiple myeloma by stopping the growth
`
`of cancer cells, prescription drugs for palliative treatment of patients with multiple
`
`myeloma, and prescription drugs for use as an iron chelator for the treatment of
`
`patients with transfusion iron overload due to thalassemia syndromes,” in Class
`
`5. This was filed on March 30, 2016, and issued on December 13, 2016, and
`
`claims a first date of use anywhere and a first date of use in Commerce of
`
`December 2011 This registration is valid, subsisting, unrevoked and
`
`8
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`2903036
`
`

`

`uncancelled; as such, this registration constitutes prima facie evidence of the
`
`validity of the registered mark and of the registration thereof, and of Opposer’s
`
`ownership of the mark shown therein, and of Opposer’s exclusive right to use the
`
`registered mark in commerce as provided in Section 33 of the Trademark Act.
`
`Opposer’s ‘243 Registration also constitutes notice to Applicant of Opposer’s
`
`claim of ownership of the mark shown therein as provided in Sections 7(b), 22,
`
`and 33(a) of the Trademark Act. A true and correct copy of the specifics of the
`
`‘243 Registration obtained from the PTO’s TESS database is attached as Exhibit
`
`10 and made of record.
`
`15. In addition to its federal rights, Opposer has common law rights in its APO and
`
`APO-derivative marks in connection with medicinal and pharmaceutical
`
`preparations and drug product research development services.
`
`16. Opposer owns Application No. 86958426 for
`
` for
`
`“Pharmaceutical preparations, namely, prescription drugs for the treatment of
`
`multiple myeloma by slowing the growth of cancer cells, prescription drugs for the
`
`treatment of multiple myeloma by stopping the growth of cancer cells,
`
`prescription drugs for palliative treatment of patients with multiple myeloma, and
`
`prescription drugs for use as an iron chelator for the treatment of patients with
`
`transfusion iron overload due to thalassemia syndromes, prescription drugs for
`
`the treatment of iron-associated neurodegenerative conditions, namely,
`
`Parkinson's disease and neurodegeneration with brain iron accumulation, in
`
`particular, pantothenate kinase-associated neurodegeneration,” in Class 5, filed
`
`March 30, 2016
`
`9
`
`2903036
`
`

`

`17. Since at least as early as 1997, Opposer has stamped the mark “APO” on many
`
`of its pharmaceutical capsules and tablets sold in the United States.
`
`18. On September 23, 2017, Applicant filed an application for the mark APOTHEX &
`
`Design for “cosmetics and cosmetic preparations” in Class 3 and “health food
`
`supplements” in Class 5 (“Applicant’s Goods”). The application was assigned
`
`Serial No. 87619852 and is based on an intent to use filing basis for Class 3; and
`
`a use in commerce filing basis for Class 5 and claims a first date of use and first
`
`date of use in commerce of August 1, 2017 as to Class 5.
`
`19. Applicant’s filing to register APOTHEX & Design in connection with Applicant’s
`
`Goods is without the consent or permission of Opposer.
`
`20. Applicant’s APOTHEX & Design mark of Application Serial No. 87619852 for
`
`Applicant’s Goods so resembles Opposer's APOTEX, APO and other APO-
`
`formative trademarks as to be likely to cause confusion, mistake or deception
`
`within the meaning of Section 2(d) of the Trademark Act.
`
`21. Applicant is attempting to register the confusingly similar APOTHEX & Design
`
`trademark for highly related goods in Classes 3 and 5 in the same channels of
`
`trade to the same targeted customers as those of Opposer for its APOTEX, APO
`
`and other APO-formative marks for Opposer’s products and services.
`
`22. The subject matter of Applicant’s Goods identified in Application Serial No.
`
`87619852 are in highly related fields as Opposer’s goods and services under its
`
`APOTEX, APO and other APO-formative marks.
`
`23. Application Serial No. 87619852 is based on an intent-to-use and use in
`
`commerce filing basis. Applicant’s filing date is after Opposer’s first date of use
`
`10
`
`2903036
`
`

`

`and use in commerce of its APOTEX, APO and other APO-formative of
`
`Registration Nos. 1162404, 2859839, 4632563, 4621329, 4989604, 5116756,
`
`5135257, 5169202, 5424083 and 5099243 and Opposer’s common law uses of
`
`its APO and APOTEX marks in connection with Opposer’s goods and services.
`
`24. On information and belief, Applicant made no use of the mark APOTHEX &
`
`Design of Application Serial No. 87619852 prior to the filing of Opposer’s
`
`Registration Nos. 1162404, 2859839, 4632563, 4621329, 4989604, 5116756,
`
`5135257, 5169202, 5424083 and 5099243 or prior to the filing of Opposer’s
`
`Application No. 86958426.
`
`25. On information and belief, Applicant made no use of the mark APOTHEX &
`
`Design of Application Serial No. 87619852 prior to Opposer’s first date of use of
`
`Opposer’s APOTEX, APO and other APO-formative trademarks of Registration
`
`Nos. 1162404, 2859839, 4632563, 4621329, 4989604, 5116756, 5135257,
`
`5169202, 5424083 and 5099243.
`
`26. On information and belief, Applicant made no use of the mark APOTHEX &
`
`Design of Serial No. 87619852 prior to Opposer’s first date of use in commerce
`
`of Opposer’s APOTEX, APO and other APO-formative trademarks of
`
`Registration Nos. 1162404, 2859839, 4632563, 4621329, 4989604, 5116756,
`
`5135257, 5169202, 5424083 and 5099243.
`
`27. Upon information and believe, the parties’ goods and/or services are being sold
`
`or will be sold in the same channels of trade.
`
`28. By virtue of Opposer’s prior use, advertising and sale of goods and services
`
`under its APOTEX, APO and APO-formative trademarks, and its maintenance of
`
`11
`
`2903036
`
`

`

`high quality standards relating thereto, the public has come to recognize the
`
`trademarks of Registration Nos. 1162404, 2859839, 4632563, 4621329,
`
`4989604, 5116756, 5135257, 5169202, 5424083 and 5099243 and its common
`
`law APOTEX, APO and other APO-formative marks as indications of origin in
`
`Opposer, as a consequence of which Opposer has established valuable goodwill
`
`and exclusive rights in its APOTEX, APO and other APO-derivative trademarks.
`
`29. The mark APOTEX of Registration No. 1162404, APO of Registration No.
`
`2859839, APOBIOLOGIX A DIVISION OF APOTEX CORP. & design of
`
`Registration No. 4632563, APOBIOLOGIX & Design of Registration No.
`
`4621329, APOTEX CONSUMER PRODUCTS of Registration No. 4989604,
`
`APOBIOLOGIX of Registration No. 5116756, APOBIOLOGIX of Registration No.
`
`5135257, APOBIOLOGIX & Design of Registration No. 5169202, APOSPEAKS
`
`of Registration No. 5424083, APOPHARMA of Registration No. 5099243,
`
`APOHARMA USA & design of Application No. 86958426 and Opposer’s APO
`
`and APO-derivative common law marks and the mark APOTHEX & Design of
`
`Application Serial No. 87619852 have the same or highly similar connotations
`
`when the marks are considered as a whole.
`
`30. The terms “APO,” “APOTEX,” “APOBIOLOGIX” and “APOTHEX” have similar
`
`appearances, pronunciations and connotations and commercial impressions.
`
`31. Since prior to the filing of the application opposed herein, through use, extensive
`
`sales and advertising of its goods and services under Opposer’s mark APOTEX
`
`of Registration No. 1162404, APO of Registration No. 2859839, APOBIOLOGIX
`
`A DIVISION OF APOTEX CORP. & design of Registration No. 4632563,
`
`12
`
`2903036
`
`

`

`APOBIOLOGIX & Design of Registration No. 4621329, APOTEX CONSUMER
`
`PRODUCTS of Registration No. 4989604, APOBIOLOGIX of Registration No.
`
`5116756, APOBIOLOGIX of Registration No. 5135257, APOBIOLOGIX & Design
`
`of Registration No. 5169202, APOSPEAKS of Registration No. 5424083,
`
`APOPHARMA of Registration No. 5099243 and Opposer’s APO and APO-
`
`derivative common law marks, the purchasing public has come to associate the
`
`“APO” prefix with Opposer in connection with Opposer’s goods and services, and
`
`Opposer’s APO-formative Marks now constitute a family of APO-formative
`
`marks.
`
`32. The mark APOTEX of Registration No. 1162404, APO of Registration No.
`
`2859839, APOBIOLOGIX A DIVISION OF APOTEX CORP. & design of
`
`Registration No. 4632563, APOBIOLOGIX & Design of Registration No.
`
`4621329, APOTEX CONSUMER PRODUCTS of Registration No. 4989604,
`
`APOBIOLOGIX of Registration No. 5116756, APOBIOLOGIX of Registration No.
`
`5135257, APOBIOLOGIX & Design of Registration No. 5169202, APOSPEAKS
`
`of Registration No. 5124083, APOPHARMA of Registration No. 5099243,
`
`APOHARMA USA & design of Application No. 86958426 and Opposer’s APO
`
`and APO-derivative common law marks and the mark APOTHEX & Design of
`
`Application Serial No. 87619852 are identical in part in that each include the
`
`identical term APO.
`
`33. The mortar and pestle design elements of Applicant’s mark do not distinguish
`
`Applicant’s mark from Opposer’s APOTHEX, APO and other APO-formative
`
`marks.
`
`13
`
`2903036
`
`

`

`34. The literal element APOTHEX of Application Serial No. 87619852 differs only in
`
`the addition of the letter “H” from Opposer’s mark APOTEX, which is insufficient
`
`to distinguish the marks.
`
`35. Opposer’s goods and services sold under its APOTEX, APO and other APO-
`
`formative marks and Applicant’s goods sold or intended to be offered under the
`
`mark APOTHEX & Design are highly related goods and services, which are or
`
`are likely to be offered through the same or overlapping channels of trade to the
`
`same or overlapping classes of purchasers so that purchasers, prospective
`
`purchasers, users and others are likely to be confused, mistaken or deceived into
`
`the belief,

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