Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA974004
`05/15/2019
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Party who filed
`Extension of time
`to oppose
`
`Relationship to
`party who filed
`Extension of time
`to oppose
`
`Attorney informa-
`tion
`
`Apotex Inc.
`
`05/15/2019
`
`150 Signet Drive
`Toronto, ON M9L1T9
`CANADA
`
`Apotex Technologies Inc.
`Apotex Technologies Inc.
`
`On April 1, 2019 Apotex Technologies Inc. ("ATI") was amalgamated as Apotex
`Inc., a corporation of Canada with an address at 150 Signet Drive, Toronto,
`Ontario Canada M9L1T9. Apotex Inc. became the successor in interest to ATI's
`trademarks and is in privity with ATI.
`
`Sheryl De Luca
`Nixon & Vanderhye P.C.
`901 N. Glebe Road, 11th Floor
`ARLINGTON, VA 22203
`UNITED STATES
`nixonptomail@nixonvan.com, sld@nixonvan.com
`703-816-4063
`
`Applicant Information
`
`Application No
`
`88080434
`
`Publication date
`
`01/15/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`05/15/2019
`
`Opposition Peri-
`od Ends
`
`05/15/2019
`
`Yang, Zaimao
`13E, Haidianju 3 Bldg 3, No.2287,
`Nanhai AVE, Nanshan DIST
`Shenzhen,Guangdong, 518000
`CHINA
`
`Goods/Services Affected by Opposition
`
`Class 010. First Use: 2018/07/10 First Use In Commerce: 2018/07/10
`All goods and services in the class are opposed, namely: Hearing aids for the deaf; Massage appar-
`atus; Massage apparatus and instruments; Massaging apparatus for personal use; Medical apparat-
`us and instruments for use in surgery; Medical diagnostic instruments for the analysis of body fluids;
`Microdermabrasion apparatus; Moxibustion apparatus; Sex toys; Soporific pillows for insomnia;
`Sphygmomanometers; Vibromassage apparatus; Computerized medical recording and analysis ap-
`paratus for the diagnosis and treatment of arrhythmias; Electric massage apparatus for household
`
`

`

`use; Electronic stimulation apparatus for nerves, skin, muscles for physical therapy purposes; High
`frequency electromagnetic therapy apparatus; Organoleptic diagnostic testing apparatus for medical,
`dental or cosmetic use
`
`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
`
`Registration Date
`
`07/28/1981
`
`Application Date
`
`03/15/1978
`
`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
`
`APOBIOLOGIX A DIVISION OF APOTEX CORP.
`
`

`

`Design Mark
`
`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
`
`Design Mark
`
`APOBIOLOGIX
`
`Application Date
`
`05/08/2013
`
`Foreign Priority
`Date
`
`05/07/2013
`
`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
`
`Application Date
`
`05/19/2015
`
`

`

`Registration Date
`
`03/28/2017
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of a generally octagonal grouping of circles and semicircles
`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
`
`Design Mark
`
`APOPHARMA
`
`Application Date
`
`03/30/2016
`
`Foreign Priority
`Date
`
`NONE
`
`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 )
`2148-172.Notice of Opposition.pdf(206514 bytes )
`Exhibit 1 USPTO TSDR 1162404.pdf(104163 bytes )
`Exhibit 2 USPTO TSDR 2859839.pdf(109047 bytes )
`Exhibit 3 USPTO TSDR 4632563.pdf(123291 bytes )
`Exhibit 4 USPTO TSDR 4621329.pdf(119769 bytes )
`Exhibit 5 USPTO TSDR 4989604.pdf(115674 bytes )
`Exhibit 6 USPTO TSDR 5116756.pdf(117471 bytes )
`Exhibit 7 USPTO TSDR 5135257.pdf(117122 bytes )
`Exhibit 8 USPTO TSDR 5169202.pdf(119624 bytes )
`Exhibit 9 USPTO TSDR 5424083.pdf(116926 bytes )
`Exhibit 10 USPTO TSDR 5099243.pdf(113898 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Sheryl De Luca/
`
`Sheryl De Luca
`
`05/15/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`
`v.
`
`2148-172
`
`
`
`
`
`Opposition No. ____________
`Application No. 88080434
`Mark: APOLUX
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Apotex Inc.,
`
`
`
`
`
`Yang, Zaimao,
`
`
`
`
`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 APOLUX, Serial No.
`
`88080434, filed August 16, 2018 by Yang, Zaimao (hereafter "Applicant"), which was
`
`published in the Official Gazette of January 15, 2019 in International Class 10, Apotex
`
`Technologies Inc., with an address at 150 Signet Drive, Toronto, Ontario Canada
`
`M9L1T9 (“ATI”) on February 5, 2019 filed a First 90 Day Request for Extension of Time
`
`to Oppose, which was granted on that same day. ATI on April 1, 2019 was
`
`amalgamated as Apotex Inc., a corporation of Canada with an address at 150 Signet
`
`Drive, Toronto, Ontario Canada M9L1T9 (hereafter “Opposer”). Apotex Inc. became the
`
`successor in interest to ATI’s trademarks and is in privity with ATI. 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
`
`
`
`2903036
`
`

`

`Trademark Act of July 5, 1945 (15 U.S.C. §1063). Our payment in the amount of $400
`
`is enclosed.
`
`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. 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, via its predecessor in interest, 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;
`
`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
`
`2
`
`2920862
`
`

`

`and uncancelled. 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. 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. 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
`
`3
`
`2920862
`
`

`

`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. 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. 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. A true and correct copy of the
`
`4
`
`2920862
`
`

`

`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
`
`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. 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
`
`regulatory requirements in the fields of workplace safety, anticorruption, privacy
`
`5
`
`2920862
`
`

`

`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. 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
`
`uncancelled. 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.
`
`6
`
`2920862
`
`

`

`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
`
`17. On August 16, 2018, Applicant filed an application for the mark APOLUX for
`
`“Hearing aids for the deaf; Massage apparatus; Massage apparatus and
`
`instruments; Massaging apparatus for personal use; Medical apparatus and
`
`instruments for use in surgery; Medical diagnostic instruments for the analysis of
`
`body fluids; Microdermabrasion apparatus; Moxibustion apparatus; Sex toys;
`
`Soporific pillows for insomnia; Sphygmomanometers; Vibromassage apparatus;
`
`Computerized medical recording and analysis apparatus for the diagnosis and
`
`treatment of arrhythmias; Electric massage apparatus for household use;
`
`Electronic stimulation apparatus for nerves, skin, muscles for physical therapy
`
`purposes; High frequency electromagnetic therapy apparatus; Organoleptic
`
`diagnostic testing apparatus for medical, dental or cosmetic use” in Class 10
`
`(“Applicant’s Goods”). The application was assigned Serial No. 88080434 and is
`
`7
`
`2920862
`
`

`

`based on a use in commerce filing basis and claims a first date of use and first
`
`date of use in commerce of July 10, 2018.
`
`18. Applicant’s filing to register APOLUX in connection with Applicant’s Goods is
`
`without the consent or permission of Opposer.
`
`19. Applicant’s APOLUX mark of Application Serial No. 88080434 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.
`
`20. Applicant is attempting to register the confusingly similar APOLUX trademark for
`
`highly related goods in Class 10 and, on information and belief, 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.
`
`21. The subject matter of Applicant’s Goods identified in Application Serial No.
`
`88080434 are in highly related fields as Opposer’s goods and services under its
`
`APOTEX, APO and other APO-formative marks.
`
`22. Applicant’s filing date is after Opposer’s first date of use 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.
`
`23. On information and belief, Applicant made no use of the mark APOLUX of
`
`Application Serial No. 88080434 prior to the filing of Opposer’s Registration Nos.
`
`8
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`

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`1162404, 2859839, 4632563, 4621329, 4989604, 5116756, 5135257, 5169202,
`
`5424083 and 5099243 or prior to the filing of Opposer’s Application No.
`
`86958426.
`
`24. On information and belief, Applicant made no use of the mark APOLUX of
`
`Application Serial No. 88080434 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.
`
`25. On information and belief, Applicant made no use of the mark APOLUX of Serial
`
`No. 88080434 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.
`
`26. Upon information and believe, the parties’ goods and/or services are being sold
`
`or will be sold in the same channels of trade.
`
`27. 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
`
`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.
`
`9
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`

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`28. 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 APOLUX of Application
`
`Serial No. 88080434 have the same or highly similar connotations when the
`
`marks are considered as a whole.
`
`29. The terms “APO,” “APOTEX,” “APOBIOLOGIX” and “APOLUX” have similar
`
`appearances, pronunciations and connotations and commercial impressions.
`
`30. 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,
`
`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
`
`10
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`

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`“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.
`
`31. 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 APOLUX of Application
`
`Serial No. 88080434 are identical in part in that each include the identical term
`
`APO.
`
`32. The mark APOLUX of Application Serial No. 88080434 differs from Opposer’s
`
`mark APOTEX only in the substitution of the letters “LU” for “TE,” which is
`
`insufficient to distinguish the marks.
`
`33. Upon in formation and belief, 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 APOLUX 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,
`
`11
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`2920862
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`

`

`mistaken or deceived into the belief, contrary to fact, that Applicant's Goods
`
`offered under the mark APOLUX emanate from and/or are in some way
`
`sponsored or approved by Opposer or are otherwise related to Opposer's goods
`
`under its APOTEX, APO and APO-derivative marks, thereby damaging Opposer.
`
`34. Applicant is not lawfully entitled to the registration which it seeks for the reason,
`
`inter alia, that the mark APOLUX as used or intended for use for Applicant's
`
`Goods so resembles Opposer's previously used and registered marks as to be
`
`likely to cause confusion, to cause mistake or to deceive within the meaning of
`
`Section 2(d) of the Federal Trademark Act, thereby damaging Opposer.
`
`WHEREFORE, Opposer prays that the present opposition be sustained and the
`
`registration of APOLUX sought by Applicant be refused.
`
`
`
`
`
`Respectfully submitted,
`
`Apotex Inc.
`
`Dated:
`
`
`May 15, 2019
`
`
`
`
`
`
`
`/Sheryl De Luca/
`By:
` Sheryl De Luca, Esq.
`Robert Rowan, Esq.
`NIXON & VANDERHYE P.C.
`901 North Glebe Road, 11th Floor
`Arlington, Virginia 22201
`Tel: 703-816-4000
`Fax: 703-816-4100
`
`
`
`
`
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`Trademark Status & Document Retrieval
`
`Page 1 of 3
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`customer who has questions or needs additional information, please email us.INTERMITTENT SYSTEM ISSUES: teas@uspto.gov and
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`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
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`Back to Search
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`Print
`
`Generated on: This page was generated by TSDR on 2019-05-15 13:34:26 EDT
`
`Mark: APOTEX
`
`No Image exists for this case.
`
`US Serial Number: 73162271
`
`Application Filing Date: Mar. 15, 1978
`
`US Registration Number: 1162404
`
`Registration Date: Jul. 28, 1981
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`
`Descriptor:
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Section 15 declaration has been acknowledged.
`
`Status Date: Oct. 11, 2016
`
`Publication Date: May 05, 1981
`
`Mark Information
`
`Mark Literal Elements: APOTEX
`
`Standard Character Claim: No
`
`Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Foreign Information
`
`Foreign Application
`
`417,984
`
`Number:
`
`Foreign Registration
`
`241,324
`
`Number:
`
`Foreign
`
`CANADA
`
`Application/Registration
`
`Country:
`
`Goods and Services
`
`Note:
`
`Foreign Application Filing
`
`Nov. 23, 1977
`
`Date:
`
`Foreign Registration Date: Mar. 21, 1980
`
`Foreign Expiration Date: Mar. 21, 1995
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`(cid:149) Brackets [..] indicate deleted goods/services;
`
`(cid:149) Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`
`(cid:149) Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Medicinal and Pharmaceutical Preparations
`
`http://tsdr.uspto.gov/
`
`

`

`Trademark Status & Document Retrieval
`
`Page 2 of 3
`
`International Class(es): 005 - Primary Class
`
`U.S Class(es): 018
`
`Class Status: ACTIVE
`
`Basis: 44(e)
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: No
`
`Filed 44D: Yes
`
`Filed 44E: Yes
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: No
`
`Currently ITU: No
`
`Currently 44E: Yes
`
`Curre