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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA978666
`06/06/2019
`
`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
`
`PLxPharma, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`06/08/2019
`
`8285 EL RIO STREET SUITE 130
`HOUSTON, TX 77054
`UNITED STATES
`
`JOSEPH C. GIOCONDA
`GIOCONDA LAW GROUP PLLC
`100 PARK AVENUE 16TH FLOOR
`NEW YORK, NY 10017
`UNITED STATES
`joseph.gioconda@giocondalaw.com
`2122351220
`
`Applicant Information
`
`Application No
`
`88129802
`
`Publication date
`
`04/09/2019
`
`Opposition Filing
`Date
`
`International Re-
`gistration No.
`
`Applicant
`
`06/06/2019
`
`NONE
`
`Opposition Peri-
`od Ends
`
`International Re-
`gistration Date
`
`06/08/2019
`
`NONE
`
`MONTELOEDER S.L.
`c/Miguel Servet, 16. Nave 17.
`Elche (Alicante), 03203
`SPAIN
`
`Goods/Services Affected by Opposition
`
`Class 001. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Chemical preparations, chemical additives
`and chemicals made from botanical extracts, for use in the manufacture and preparation of pharma-
`ceuticals, cosmetics,nutraceuticals, food products and beverages
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Cosmetic products taken orally for skin-
`beauty, namely, pills from plant extracts that induce bronzing of the skin
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Nutritional supplements; Medicated skin-
`care preparations; medical skin care preparations made from plant extracts
`
`

`

`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(d)
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5128399
`
`Registration Date
`
`01/24/2017
`
`Word Mark
`
`Design Mark
`
`PLX
`
`Application Date
`
`06/15/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2012/01/01 First Use In Commerce: 2012/01/01
`Research and development services for pharmaceutical preparations and sub-
`stances, namely, non-steroidal anti-inflammatory drug containing preparations;
`providing medical and scientific research information in the fields of pharmaceut-
`icals
`
`U.S. Registration
`No.
`
`4879464
`
`Registration Date
`
`01/05/2016
`
`Word Mark
`
`Design Mark
`
`PLX PHARMA
`
`Application Date
`
`09/12/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`Goods/Services
`
`Class 042. First use: First Use: 2012/01/01 First Use In Commerce: 2012/01/01
`
`

`

`Research and development services for pharmaceutical preparations and sub-
`stances, namely, phospholipid and non-steroidal anti-inflammatory drug contain-
`ing preparations; providing medical and scientific research information in the
`fields ofpharmaceuticals
`
`U.S. Application
`No.
`
`87777592
`
`Application Date
`
`01/31/2018
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`PLX
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, both prescription and over-the-counter, for use in-
`connection with humans as anti-inflammatories, analgesics, antipyretics and
`forthe prevention and treatment of cancer and for the prevention and treatment
`of cardiovascular and/or cerebrovascular disease
`
`U.S. Application
`No.
`
`87777601
`
`Application Date
`
`01/31/2018
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`PLX PHARMA
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, both prescription and over-the-counter, for use in-
`connection with humans as anti-inflammatories, analgesics, antipyretics and
`forthe prevention and treatment of cancer and for the prevention and treatment
`of cardiovascular and/or cerebrovascular disease
`
`U.S. Application
`
`88040660
`
`Application Date
`
`07/17/2018
`
`

`

`No.
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`PLX PHARMA INC.
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the wording "PLX PHARMA INC." all in white except for
`the lower left side line of the letter "X" which is in red. The background of the
`mark is in blue.
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, both prescription and over-the-counter, for use in-
`connection with humans as anti-inflammatories, analgesics, antipyretics and
`forthe prevention and treatment of cancer and for the prevention and treatment
`of cardiovascular and/or cerebrovascular disease
`
`U.S. Application
`No.
`
`87740246
`
`Application Date
`
`01/02/2018
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`PLXGUARD
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, namely, anoral drug delivery system comprising
`capsules, liquids, dissolvable films or tablets affecting surface acting lipids to-
`modify the physiochemical properties ofvarious drugs to selectively release
`these drugs to targeted portions of the human GI tract
`
`Attachments
`
`87072653#TMSN.png( bytes )
`86393682#TMSN.png( bytes )
`
`

`

`87777592#TMSN.png( bytes )
`87777601#TMSN.png( bytes )
`88040660#TMSN.png( bytes )
`87740246#TMSN.png( bytes )
`Notice of Opp.pdf(627224 bytes )
`
`Signature
`
`/Joseph C. Gioconda/
`
`Name
`
`Date
`
`JOSEPH C. GIOCONDA
`
`06/06/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF THE FOLLOWING APPLICATION:
`
`88/129,802
`App. Serial No.:
`MOVEPLX
`Mark:
`Monteloeder, S.L.
`Applicant:
`September 24, 2018
`Filed:
`April 9, 2019
`Published in the Official Gazette:
`
`
`PLX PHARMA INC .,
`
`Opposer,
`
`v.
`MONTELOEDER S.L.,
`
`Applicant.
`
`Opposition No.
`
`.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer PLX PHARMA INC. (“PLX Pharma” or “Opposer”), a Delaware corporation
`
`having a principal place of business at 8285 El Rio, Suite 130, Houston, TX 77054, believes that
`
`it will be damaged by registration of Applicant Monteloeder S.L.‘s
`
`(“Applicant’s”) United
`
`States Trademark Application Serial No. 88/129,802 for MOVEPLX (“Applicant’s Intended
`
`Mark”), and respectfully opposes registration of the same.
`
`

`

`OPPOSER’S TRADE NAME AND TRADEMARKS
`
`Opposer was incorporated on or about January 14, 2010.
`
`Opposer’s trade name is PLx Pharma.
`
`Opposer is a late-stage specialty pharmaceutical company.
`
`Opposer’s official website is: http://www. PLXPharma. com.
`
`Opposer is traded on the NASDAQ stock exchange under the stock ticker name
`
`PLXP.
`
`Opposer is currently focused on developing its clinically validated and patent-
`
`protected PLxGuardTM delivery system to provide effective and safe products.
`
`Opposer owns the following trademark registrations and pending trademark
`
`applications in the United States:
`
`a. PLX word mark in International Class '42 for: “Research and development
`services for pharmaceutical preparations and substances, namely, non-steroidal
`anti-inflammatory drug containing preparations; providing medical and scientific
`research information in the fields ofpharmaceuticals.” (U.S. Trademark Reg. No.
`5,128,399);
`
`. PLX PHARMA word mark in lntemational Class 42 for: “Research and
`development services for pharmaceutical preparations and substances, namely,
`phospholipid and non-steroidal anti-inflammatory drug containing preparations;
`providing medical and scientific research.
`information in the fields of
`pharmaceuticals.” (U.S. Trademark Reg. No. 4,879,464);
`
`PLX word mark in International Class 5 for: “Pharmaceutical preparations, both
`prescription and over-the-counter, for use in connection with humans as anti-
`inflammatories, analgesics, antipyretics and for the prevention and treatment of
`cancer and for
`the prevention and treatment of cardiovascular and/or
`cerebrovascular disease” (U.S. Trademark Application Serial No. 87/777,592);
`
`. PLX PHARMA word mark in lntemational Class 5 for: “Pharmaceutical
`preparations, both prescription and over-the-counter, for use in connection with
`humans as anti-inflammatories, analgesics, antipyretics and for the prevention
`and treatment of cancer and for the prevention and treatment of cardiovascular
`and/or cerebrovascular disease”;
`(U.S. Trademark Application Serial No.
`
`87/777,60]);
`
`

`

`e. PLX PHARMA INC. and Design in lntemational Class 5 for: “Pharmaceutical
`preparations, both prescription and over-the-counter, for use in connection with
`humans”; (U.S. Trademark Application Serial No. 88/040,660); and
`
`f. PLXGUARD in International Class 5 for: “Pharmaceutical preparations, namely,
`an oral drug delivery system comprising capsules, liquids, dissolvable films or
`tablets affecting surface acting lipids to modify the physiochemical properties of
`various drugs to selectively release these drugs to targeted portions of the human
`GI tract” (U.S. Trademark Application Serial No. 87/740,246).
`-
`
`Applicant and Applicant’s Intended Mark
`
`8.
`
`According to the records of the United States Patent and Trademark Office
`
`(“USPTO”), Applicant Monteloeder S.L. is a Sociedad Limitada of Spain, with an address of
`
`c/Miguel Servet, 16. Nave 17. Elche (Alicante) SPAIN 03203.
`
`9.
`trademarks.
`
`The Applicant’s Intended Mark is confusingly similar to each of Opposer’s
`‘
`
`10.
`
`1 1.
`
`The Applicant’s Intended Mark is confusingly similar to Opposer’s trade name.
`
`There are overlapping, if not identical, channels oftrade that currently distribute,
`
`and/or will distribute and evaluate Opposer’s and Applicant’s products and services and have
`
`interacted and/or will interact with Opposer for the sale and distribution of Opposer’s products.
`
`Count 1: False Su
`
`estion of a Connection in Violation of 15 U.S.C.
`
`1052 a
`
`12.
`
`The Applicant’s Intended Mark will be recognized by consumers and healthcare
`
`providers as Opposer’s identity,
`
`in that the Applicant’s Intended Mark points uniquely and
`
`unmistakably to Opposer.
`
`13.
`
`14.
`
`Opposer is not connected with the activities performed by Applicant.
`
`The fame or reputation of Opposer is such that, when the Applicant’s Intended
`
`Mark is used in commerce, 3 connection with Opposer will be presumed.
`
`15.
`
`Opposer will be irreparably injured and damaged by registration of the
`
`Applicant’s Intended Mark because the purchasing public will presume that Applicant
`
`is
`
`3
`
`

`

`connected to Opposer within the meaning of § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a),
`
`relating to the prohibition of allowing registration to issue that may falsely suggest a connection
`
`with an institution.
`
`16.
`
`The Applicant’s Intended Mark violates 15 U.S.C. § 1052(a) and should be
`
`refused registration.
`
`Count II: Likelihood of Confusion in Violation .of 15 U.S.C.
`
`
`1052 d
`
`
`17.
`
`Opposer will be irreparably injured and damaged if Applicant permitted to
`
`register the Applicant’s Intended Mark for the products identified, because the purchasing public
`
`will believe that Applicant is connected to Opposer within the meaning of § 2(d) of the Lanham
`
`Act, l5 U.S.C. § 1052(d) related to the prohibitions of permitting registrations to issue that cause
`
`confusion with the trademarks owned and/or used by another.
`
`18.
`
`The Applicant’s Intended Mark therefore violates 15 U.S.C. § 1052(d) and
`
`should be refused registration.
`
`
`
`
`
`Count [I]: Intentional Misre resentation in Violation of 15 U.S.C.
`
`l9.
`
`Opposer will be irreparably injured and damaged if Applicant is permitted to
`
`register the Applicant’s Intended Mark, because Applicant will use Applicant’s Intended Mark
`
`intentionally misrepresent to the purchasing public that Opposer is the source of the products
`
`within the meaning of § 14(3) of the Lanham Act, 15 U.S.C. § 1064(3).
`
`20.
`Opposer has no control over the nature and quality of the goods and/or services
`provided by Applicant and thus will be damaged and irreparably harmed by reason ofthe loss of
`
`control over its reputation and the erosion of goodwill in its trademarks.
`
`21.
`
`The Applicant’s Intended Mark therefore violates 15 U.S.C. § 1064(3) and
`
`should be refused registration.
`
`

`

`WHEREFORE, Opposer respectfully prays that this opposition be sustained in its favor,
`
`that registration be denied to Applicant on its application-at-issue for the Applicant’s Intended
`
`Mark, namely, United States Trademark Application Serial No. 87/844,032, and that the Board
`
`grant all further and favorable reliefto Opposer that is necessary and just in these circumstances.
`
`June 6, 2019
`
`Respectfully Submitted,
`
`
`/
`
`
`
`
`oseph C. Gioconda, Esq.
`GIOCONDA LAW GROUP PLLC
`100 Park'Avenue
`
`
`
`
`16‘h Floor
`Telephone: (212) 235-1220
`Facsimile: (888) 697-9665
`joseph. gioconda@gioc0ndalaw. com
`
`Attorneys for Opposer
`PLx Pharma Inc.
`
`
`
`The undersigned hereby certifies under
`penalty of perjury that a copy of the
`
`
`foregoing
`
`
`NOTICE OF OPPOSITION
`has been served upon all parties, at their
`
`
`addresses on record by sending a true
`copy thereof by US. First Class Mail, on
`
`
`June 6, 2019, as follows:
`
` Daniel M. Cislo, Esq.
`
`
`
`
`
`
`///1 1
`
`
`
`
`
`oseph C. Gioconda, Esq.
`
`
`Cislo & Thomas LLP
`
`12100 Wilshire Boulevard
`Suite 1700
`
`Los Angeles, CA 90025
`
`

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