Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1019151
`12/01/2019
`
`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.
`
`12/01/2019
`
`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
`sld@nixonvan.com, nixonptomail@nixonvan.com
`703-816-4000
`
`Applicant Information
`
`Application No
`
`87928271
`
`Publication date
`
`06/04/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`12/01/2019
`
`Apotheke, LLC
`9 Doyers Street
`New York, NY 10013
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`12/01/2019
`
`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: Medicinal bitters for promoting digestive
`health and well-being
`
`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.
`
`2859839
`
`Registration Date
`
`07/06/2004
`
`Word Mark
`
`APO
`
`Application Date
`
`08/25/2003
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`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.
`
`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.
`
`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 )
`86528589#TMSN.png( bytes )
`85926345#TMSN.png( bytes )
`86560396#TMSN.png( bytes )
`86634783#TMSN.png( bytes )
`87056199#TMSN.png( bytes )
`86958335#TMSN.png( bytes )
`2148-185_notice_of_opposition.pdf(136300 bytes )
`Ex. 1 Trademark Status & Document Retrieval.pdf(63912 bytes )
`Ex. 2 Trademark Status & Document Retrieval.pdf(66582 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 )
`86958426#TMSN.png( bytes )
`
`Signature
`
`/Sheryl De Luca/
`
`Name
`
`Date
`
`SHERYL DE LUCA
`
`12/01/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`
`v.
`
`2148-185
`
`
`
`
`
`Opposition No. ____________
`Application No. 87928271
`Mark: APO
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Apotex Inc.,
`
`
`
`
`
`Apotheke, LLC.,
`
`
`
`
`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 APO, Serial No.
`
`87928271, filed May 18, 2018 by Apotheke, LLC. (hereafter "Applicant"), which was
`
`published in the Official Gazette of June 4, 2019 in International Class 5, Apotex Inc.,
`
`with an address at 150 Signet Drive, Toronto, Ontario Canada M9L1T9 (“Apotex” or
`
`“Opposer”) on June 5, 2019 filed a First 90 Day Request for Extension of Time to
`
`Oppose, which was granted on that same day; and on September 30, 2019 filed a
`
`second Final 60 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:
`
`
`
`2967600
`
`

`

`1. 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.
`
`2. 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.
`
`3. 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 are attached hereto as Exhibit 1 and
`
`made of record.
`
`4. Opposer owns and relies on incontestable U.S. Trademark Registration No.
`
`1162404 for the trademark APOTEX for “Medicinal and Pharmaceutical
`
`Preparations,” in Class 5.
`
`5. 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 are attached 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 are 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 are 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 are
`
`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 are 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 are 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 are 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 May 18, 2018, Applicant filed an application for the mark APO for “Medicinal
`
`bitters for promoting digestive health and well-being” in Class 5 (“Applicant’s
`
`Goods”). The application was assigned Serial No. 87928271 and is based on an
`
`intent to use filing basis.
`
`15. Applicant’s filing to register APO in connection with Applicant’s Goods is without
`
`the consent or permission of Opposer.
`
`16. Applicant’s APO mark of Application Serial No. 87928271 for Applicant’s Goods
`
`so resembles Opposer's APO, APOTEX, 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 APO trademark for
`
`goods in Class 5 that are highly related to those the goods and services of
`
`6
`
`2964073
`
`

`

`Opposer’s APO, APOTEX 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 APO, APOTEX and other APO-formative
`
`marks for Opposer’s products and services.
`
`18. The subject matter of Applicant’s Goods identified in Application Serial No.
`
`87928271 are in highly related fields as Opposer’s goods and services under its
`
`APO, APOTEX and other APO-formative marks.
`
`19. Applicant’s filing date is after Opposer’s first date of use and use in commerce of
`
`its APO, APOTEX and other APO-formative of Registration Nos. 2859839,
`
`1162404, 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 APO
`
`of Application Serial No. 87928271 prior to the filing of Opposer’s Registration
`
`Nos. 2859839, 1162404, 4989604, 5116756, 5135257, 5169202, 5424083 and
`
`5099243 or prior to the filing of Opposer’s Application No. 86958426.
`
`21. On information and belief, Applicant made no use in commerce of the mark APO
`
`of Application Serial No. 87928271 prior to Opposer’s first date of use of
`
`Opposer’s APO, APOTEX and other APO-formative trademarks of Registration
`
`Nos. 2859839, 1162404, 4989604, 5116756, 5135257, 5169202, 5424083 and
`
`5099243.
`
`22. On information and belief, Applicant made no use in commerce of the mark APO
`
`of Serial No. 87928271 for Applicant’s Goods prior to Opposer’s first date of use
`
`7
`
`2964073
`
`

`

`in commerce of Opposer’s APO, APOTEX and other APO-formative trademarks
`
`of Registration Nos. 2859839, 1162404, 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 APO, APOTEX and APO-formative trademarks, and its maintenance of
`
`high quality standards relating thereto, the public has come to recognize the
`
`trademarks of Registration Nos. 2859839, 1162404, 4989604, 5116756,
`
`5135257, 5169202, 5424083 and 5099243 and its common law APO, APOTEX
`
`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 APO, APOTEX and other APO-derivative trademarks.
`
`25. The mark APO of Registration No. 2859839, APOTEX of Registration No.
`
`1162404, 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 APO of Application Serial
`
`No. 87928271 have the identical or highly similar connotations when the marks
`
`are considered as a whole.
`
`8
`
`2964073
`
`

`

`26. The terms “APO,” “APOTEX,” “APOBIOLOGIX,” “APOPHARMA,” “APOSPEAKS”
`
`have identical or highly 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 APO of
`
`Registration No. 2859839, APOTEX of Registration No. 1162404, 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 APO of Registration No. 2859839, APOTEX of Registration No.
`
`1162404, 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 APO of Application Serial
`
`No. 87928271 are identical or identical in part in that each consist of or include
`
`the identical term APO.
`
`9
`
`2964073
`
`

`

`29. Upon information and belief, Opposer’s goods and services sold under its APO,
`
`APOTEX and other APO-formative marks and Applicant’s goods sold or intended
`
`to be offered under the mark APO 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 APO emanate from and/or are in some way sponsored or approved by
`
`Opposer or are otherwise related to Opposer's goods under its APO, APOTEX
`
`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 APO 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 APO in Class 5 sought by Applicant be refused.
`
`10
`
`2964073
`
`

`

`
`
`
`
`Respectfully submitted,
`
`Apotex Inc.
`
`Dated:
`
`
`December 1, 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
`
`

`

`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:
`
`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, namely, phychotherapeutics (antidepressants, tranquillizers); antiparkins
`
`antidiabetics; [ vitamins and mineral dietary supplements; ] diuretics; antihypertensives; sedatives; antiemetics; antiba
`
`antiarthritics; anti-inflammatory agents; anticonvulsants; antiarrhythmics; uricosurics; xanthine oxidase inhibitors
`
`International Class(es): 005 - Primary Class
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`Class Status: ACTIVE
`
`http://tsdr.uspto.gov/#caseNumber=76540417&caseType=SERIAL_NO&searchType=statusSearch[11/13/2019 5:22:35 PM]
`
`

`

`Trademark Status & Document Retrieval
`
`Basis: 1(a)
`
`First Use: Mar. 1975
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: APOTEX INC.
`
`Owner Address: 150 SIGNET DRIVE
`
`TORONTO, ONTARIO CANADA M9L1T9
`
`Use in Commerce: Sep. 1997
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`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 W. Adams
`
`Docket Number: 2148-69
`
`Correspondent
`
`Correspondent
`
`ROBERT W. ADAMS
`
`Name/Address:
`
`NIXON & VANDERHYE, P.C.
`
`901 NORTH GLEBE RD.
`
`11TH FLOOR
`
`ARLINGTON, VIRGINIA UNITED STATES 22203-1808
`
`Phone: 703-816-4022
`
`Fax: 703-816-4100
`
`Correspondent e-mail:
`
`fbe@nixonvan.com
`
`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
`
`Date
`
`Jun. 19, 2019
`
`mail Authorized:
`
`Description
`
`Proceeding Number
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF
`
`OWNERSHIP
`
`Jun. 27, 2014
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-
`
`MAILED
`
`Jun. 27, 2014
`
`REGISTERED AND RENEWED (FIRST
`
`69471
`
`RENEWAL - 10 YRS)
`
`http://tsdr.uspto.gov/#caseNumber=76540417&caseType=SERIAL_NO&searchType=statusSearch[11/13/2019 5:22:35 PM]
`
`

`

`Trademark Status & Document Retrieval
`
`Jun. 27, 2014
`
`REGISTERED - SEC. 8 (10-YR)
`
`69471
`
`ACCEPTED/SEC. 9 GRANTED
`
`Jun. 26, 2014
`
`CASE ASSIGNED TO POST REGISTRATION
`
`69471
`
`Jun. 10, 2014
`
`Jul. 28, 2010
`
`Jul. 06, 2010
`
`Jul. 06, 2010
`
`Jul. 27, 2010
`
`Jul. 06, 2010
`
`Jul. 06, 2009
`
`Jul. 06, 2004
`
`Apr. 13, 2004
`
`Mar. 24, 2004
`
`Feb. 06, 2004
`
`PARALEGAL
`
`TEAS SECTION 8 & 9 RECEIVED
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED &
`
`64591
`
`SEC. 15 ACK.
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15
`
`64591
`
`FILED
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15
`
`64591
`
`FILED
`
`CASE ASSIGNED TO POST REGISTRATION
`
`64591
`
`PARALEGAL
`
`PAPER RECEIVED
`
`TEAS CHANGE OF CORRESPONDENCE
`
`RECEIVED
`
`REGISTERED-PRINCIPAL REGISTER
`
`PUBLISHED FOR OPPOSITION
`
`NOTICE OF PUBLICATION
`
`APPROVED FOR PUB - PRINCIPAL
`
`REGISTER
`
`Feb. 05, 2004
`
`ASSIGNED TO EXAMINER
`
`76936
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Jun. 27, 2014
`
`Assignment Abstract Of Title Information - Click to Load
`
`Proceedings - Click to Load
`
`http://tsdr.uspto.gov/#caseNumber=76540417&caseType=SERIAL_NO&searchType=statusSearch[11/13/2019 5:22:35 PM]
`
`

`

`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 Addr