Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1015453
`11/13/2019
`
`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
`
`Attorney informa-
`tion
`
`Apotex Inc.
`
`11/13/2019
`
`150 SIGNET DRIVE
`TORONTO, ON M9L1T9
`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
`(703) 816-4063
`
`Applicant Information
`
`Application No
`
`88072807
`
`Publication date
`
`07/16/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`11/13/2019
`
`YoDerm, Inc.
`330 2nd Street, #201
`Oakland, CA 94607
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`11/13/2019
`
`Goods/Services Affected by Opposition
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Medicated dermatological preparations and
`substances, namely, gels, creams, moisturizers, serums, lotions, toners, cleaners, peels, soaps, and
`solutions; medicated shampoo and conditioner; prescription and non-prescription medicines, namely,
`pills, tablets, capsules, caplets, liquid drops, sachets and pharmaceutical preparations for the treat-
`ment of dermatological symptoms and concerns; medicatedanti-aging serums for use on skin
`
`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.
`
`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
`
`NONE
`
`

`

`Goods/Services
`
`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
`
`Registration Date
`
`03/28/2017
`
`Word Mark
`
`Design Mark
`
`APOBIOLOGIX
`
`Application Date
`
`05/19/2015
`
`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 )
`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 )
`2148-186_notice_of_opposition.pdf(136906 bytes )
`Ex. 1 Status Search SN 73162271.pdf(66582 bytes )
`Ex. 2 Trademark Status & Document Retrieval.pdf(63912 bytes )
`Ex. 3 Trademark Status & Document Retrieval.pdf(75392 bytes )
`Ex. 4 Trademark Status & Document Retrieval.pdf(95283 bytes )
`Ex. 5 Trademark Status & Document Retrieval.pdf(83695 bytes )
`Ex. 6 Trademark Status & Document Retrieval.pdf(94635 bytes )
`Ex. 7 Trademark Status & Document Retrieval.pdf(87838 bytes )
`Ex. 8 Trademark Status & Document Retrieval.pdf(70140 bytes )
`
`Signature
`
`/Sheryl De Luca/
`
`Name
`
`Date
`
`SHERYL DE LUCA
`
`11/13/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`
`v.
`
`2148-189
`
`
`
`
`
`Opposition No. ____________
`Application No. 88072807
`Mark: APOSTROPHE
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Apotex Inc.,
`
`
`
`
`
`YoDerm, Inc.,
`
`
`
`
`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 APOSTROPHE, Serial
`
`No. 88072807, filed August 9, 2018 by YoDerm, Inc. (hereafter "Applicant"), which was
`
`published in the Official Gazette of July 16, 2019 in relevant part International Class 5,
`
`Apotex Inc., with an address at 150 Signet Drive, Toronto, Ontario Canada M9L1T9
`
`(“Apotex” or “Opposer”) on August 12, 2019 filed a First 90 Day Request for Extension
`
`of Time to Oppose, which was granted on 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 $400 is enclosed.
`
`As grounds for opposition, it is alleged that:
`
`
`
`2964073
`
`

`

`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
`
`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.
`
`2
`
`2964073
`
`

`

`6. Opposer owns and relies on U.S. Trademark Registration No. 4989604 for the
`
`mark APOTEX CONSUMER PRODUCTS for “Printed brochures, catalogs and
`
`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 3 and made of record.
`
`7. 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 4 and made of record.
`
`8. 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
`
`3
`
`2964073
`
`

`

`valid, subsisting, unrevoked and uncancelled. A true and correct copy of the
`
`specifics of the ‘257 Registration obtained from the PTO’s TESS database is
`
`attached as Exhibit 5 and made of record.
`
`9. 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 6 and made of record.
`
`10. 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
`
`4
`
`2964073
`
`

`

`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. A true and correct copy of the specifics of the ‘083 Registration
`
`obtained from the PTO’s TESS database is attached as Exhibit 7 and made of
`
`record.
`
`11. 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 8 and made of
`
`record.
`
`12. 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.
`
`5
`
`2964073
`
`

`

`13. 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
`
`14. On August 9, 2018, Applicant filed an application for the mark APOSTROPHE
`
`for, in relevant part, “Medicated dermatological preparations and substances,
`
`namely, gels, creams, moisturizers, serums, lotions, toners, cleaners, peels,
`
`soaps, and solutions; medicated shampoo and conditioner; prescription and non-
`
`prescription medicines, namely, pills, tablets, capsules, caplets, liquid drops,
`
`sachets and pharmaceutical preparations for the treatment of dermatological
`
`symptoms and concerns; medicated anti-aging serums for use on skin” in Class
`
`5 (“Applicant’s Goods”). The application was assigned Serial No. 88072807 and
`
`is based on an intent to use filing basis.
`
`15. Applicant’s filing to register APOSTROPHE in connection with Applicant’s Goods
`
`is without the consent or permission of Opposer.
`
`6
`
`2964073
`
`

`

`16. Applicant’s APOSTROPHE mark of Application Serial No. 88072807 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.
`
`17. Applicant is attempting to register the confusingly similar APOSTROPHE
`
`trademark for goods in Class 5 that are highly related to those the goods and
`
`services of Opposer’s APOTEX, APO and other APO-formative trademarks 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.
`
`18. The subject matter of Applicant’s Goods identified in Application Serial No.
`
`88072807 are in highly related fields as Opposer’s goods and services under its
`
`APOTEX, APO and other APO-formative marks.
`
`19. 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, 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.
`
`20. On information and belief, Applicant made no use in commerce of the mark
`
`APOSTROPHE of Application Serial No. 88072807 prior to the filing of Opposer’s
`
`Registration Nos. 1162404, 2859839, 4989604, 5116756, 5135257, 5169202,
`
`5424083 and 5099243 or prior to the filing of Opposer’s Application No.
`
`86958426.
`
`7
`
`2964073
`
`

`

`21. On information and belief, Applicant made no use in commerce of the mark
`
`APOSTROPHE of Application Serial No. 88072807 prior to Opposer’s first date
`
`of use of Opposer’s APOTEX, APO and other APO-formative trademarks of
`
`Registration Nos. 1162404, 2859839, 4989604, 5116756, 5135257, 5169202,
`
`5424083 and 5099243.
`
`22. On information and belief, Applicant made no use in commerce of the mark
`
`APOSTROPHE of Serial No. 88072807 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, 4989604, 5116756, 5135257, 5169202,
`
`5424083 and 5099243.
`
`23. Upon information and believe, the parties’ goods and/or services are being sold
`
`or will be sold in the same channels of trade.
`
`24. 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, 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.
`
`25. The mark APOTEX of Registration No. 1162404, APO of Registration No.
`
`2859839, APOTEX CONSUMER PRODUCTS of Registration No. 4989604,
`
`APOBIOLOGIX of Registration No. 5116756, APOBIOLOGIX of Registration No.
`
`8
`
`2964073
`
`

`

`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 APOSTROPHE of
`
`Application Serial No. 88072807 have the same or highly similar connotations
`
`when the marks are considered as a whole.
`
`26. The terms “APO,” “APOTEX,” “APOBIOLOGIX,” “APOPHARMA,” “APOSPEAKS”
`
`and “APOSTROPHE” have similar appearances, pronunciations and
`
`connotations and commercial impressions.
`
`27. 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, 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.
`
`28. The mark APOTEX of Registration No. 1162404, APO of Registration No.
`
`2859839, APOTEX CONSUMER PRODUCTS of Registration No. 4989604,
`
`APOBIOLOGIX of Registration No. 5116756, APOBIOLOGIX of Registration No.
`
`9
`
`2964073
`
`

`

`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 APOSTROPHE of
`
`Application Serial No. 88072807 are identical in part in that each include the
`
`identical term APO.
`
`29. Upon information 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 APOSTROPHE 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, contrary to fact, that Applicant's
`
`Goods intended to be offered under the mark APOSTROPHE 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.
`
`30. Applicant is not lawfully entitled to the registration which it seeks for the reason,
`
`inter alia, that the mark APOSTROPHE 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.
`
`10
`
`2964073
`
`

`

`WHEREFORE, Opposer prays that the present opposition be sustained
`
`and the registration of APOSTROPHE in Class 5 sought by Applicant be refused.
`
`
`
`
`
`Respectfully submitted,
`
`Apotex Inc.
`
`Dated:
`
`
`November 13, 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
`
`
`
`
`
`11
`
`2964073
`
`

`

`Status Search SN 73162271
`
`BULK DATA: Since May 7 at 12 a.m., the TSDR Application Programming Interface (API) has not included all information.
`
`Images of trademark registration certificates issued since July 2016 and some office actions are absent in the API. Customers
`
`who need to retrieve a copy of a registration certificate or an office action should download it directly from the TSDR documents
`
`tab.INTERMITTENT SYSTEM ISSUES: Due to high-volume usage, you may experience intermittent issues on the Trademark
`
`Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If
`
`you still need assistance accessing a document, email teas@uspto.gov and include your serial number, the document you are
`
`looking for, and a screenshot of any error messages you have received.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2019-11-13 17:18:39 EST
`
`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
`
`http://tsdr.uspto.gov/#caseNumber=73162271&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=statusSearch[11/13/2019 5:20:47 PM]
`
`

`

`Status Search SN 73162271
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Medicinal and Pharmaceutical Preparations
`
`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
`
`Current Owner(s) Information
`
`Owner Name: APOTEX INC.
`
`Owner Address: 150 SIGNET DRIVE
`
`TORONTO, ONTARIO CANADA M9L1T9
`
`Currently Use: No
`
`Currently ITU: No
`
`Currently 44E: Yes
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Legal Entity Type: CORPORATION
`
`State or Country Where
`
`CANADA
`
`Organized:
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name: Robert A. Rowan
`
`Docket Number: 2148-107
`
`Attorney Primary Email
`
`nixonptomail@nixonvan.com
`
`Attorney Email Authorized: Yes
`
`Address:
`
`Correspondent
`
`Correspondent
`
`Robert A. Rowan
`
`Name/Address:
`
`Nixon & Vanderhye, P.C.
`
`901 North Glebe Rd., 11th Floor
`
`Arlington, VIRGINIA UNITED STATES 22203-1808
`
`Phone: 703-816-4000
`
`Fax: 703-816-4100
`
`Correspondent e-mail: nixonptomail@nixonvan.com
`
`Correspondent e-mail
`
`Yes
`
`Authorized:
`
`Domestic Representative
`
`Domestic Representative
`
`Robert W. Adams
`
`Phone: 703-816-4022
`
`Name:
`
`Fax: 703-816-4100
`
`Domestic Representative e-
`
`fbe@nixonvan.com
`
`Domestic Representative e-
`
`Yes
`
`mail:
`
`Prosecution History
`
`mail Authorized:
`
`http://tsdr.uspto.gov/#caseNumber=73162271&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=statusSearch[11/13/2019 5:20:47 PM]
`
`

`

`Status Search SN 73162271
`
`Date
`
`Jun. 19, 2019
`
`Oct. 11, 2016
`
`Oct. 11, 2016
`
`Oct. 06, 2016
`
`Sep. 30, 2016
`
`Aug. 19, 2011
`
`Description
`
`Proceeding Number
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF
`
`OWNERSHIP
`
`SEC. 15 ACKNOWLEDGEMENT - E-MAILED
`
`REGISTERED - SEC. 15 ACKNOWLEDGED
`
`75184
`
`CASE ASSIGNED TO POST REGISTRATION
`
`75184
`
`PARALEGAL
`
`TEAS SECTION 15 RECEIVED
`
`REGISTERED AND RENEWED (SECOND
`
`67603
`
`RENEWAL - 10 YRS)
`
`Aug. 19, 2011
`
`REGISTERED - SEC. 8 (10-YR)
`
`67603
`
`ACCEPTED/SEC. 9 GRANTED
`
`Aug. 11, 2011
`
`REGISTERED - COMBINED SECTION 8 (10-
`
`67603
`
`Aug. 11, 2011
`
`Aug. 10, 2011
`
`YR) & SEC. 9 FILED
`
`PAPER RECEIVED
`
`ATTORNEY/DOM.REP.REVOKED AND/OR
`
`APPOINTED
`
`Aug. 10, 2011
`
`TEAS REVOKE/APP/CHANGE ADDR OF
`
`Aug. 10, 2011
`
`Mar. 16, 2009
`
`Oct. 17, 2001
`
`Oct. 17, 2001
`
`ATTY/DOM REP RECEIVED
`
`TEAS WITHDRAWAL OF ATTORNEY
`
`RECEIVED-FIRM RETAINS
`
`CASE FILE IN TICRS
`
`REGISTERED AND RENEWED (FIRST
`
`RENEWAL - 10 YRS)
`
`REGISTERED - SEC. 8 (10-YR)
`
`ACCEPTED/SEC. 9 GRANTED
`
`Jul. 27, 2001
`
`REGISTERED - COMBINED SECTION 8 (10-
`
`Sep. 20, 1988
`
`Aug. 29, 1988
`
`YR) & SEC. 9 FILED
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED
`
`RESPONSE RECEIVED TO POST REG.
`
`ACTION
`
`Feb. 23, 1988
`
`POST REGISTRATION ACTION MAILED -
`
`Jul. 27, 1987
`
`Jul. 28, 1981
`
`May 05, 1981
`
`SEC. 8
`
`REGISTERED - SEC. 8 (6-YR) FILED
`
`REGISTERED-PRINCIPAL REGISTER
`
`PUBLISHED FOR OPPOSITION
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Oct. 06, 2016
`
`Assignment Abstract Of Title Information - Click to Load
`
`Proceedings - Click to Load
`
`http://tsdr.uspto.gov/#caseNumber=73162271&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=statusSearch[11/13/2019 5:20:47 PM]
`
`

`

`Trademark Status & Document Retrieval
`
`BULK DATA: Since May 7 at 12 a.m., the TSDR Application Programming Interface (API) has not included all information.
`
`Images of trademark registration certificates issued since July 2016 and some office actions are absent in the API. Customers
`
`who need to retrieve a copy of a registration certificate or an office action should download it directly from the TSDR documents
`
`tab.INTERMITTENT SYSTEM ISSUES: Due to high-volume usage, you may experience intermittent issues on the Trademark
`
`Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If
`
`you still need assistance accessing a document, email teas@uspto.gov and include your serial number, the document you are
`
`looking for, and a screenshot of any error messages you have received.
`
`STATUS
`
`DOCUMENTS
`
`MAINTENANCE
`
`Back to Search
`
`Print
`
`Generated on: This page was generated by TSDR on 2019-11-13 17:22:05 EST
`
`Mark: APO
`
`US Serial Number: 76540417
`
`Application Filing Date: Aug. 25, 2003
`
`US Registration Number: 2859839
`
`Registration Date: Jul. 06, 2004
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`
`Descriptor:
`
`Status: The registration has been renewed.
`
`Status Date: Jun. 27, 2014
`
`Publication Date: Apr. 13, 2004
`
`Mark Information
`
`Mark Literal Elements: APO
`
`Standard Character Claim: No
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`
`
`Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Goods and Services
`
`Note:
`
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Bracke