Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1050094
`04/20/2020
`
`ESTTA Tracking number:
`
`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91252778
`
`Defendant
`Imvax, Inc.
`
`ROBERT C PFEILSTICKER JR
`PFEILSTICKER LAW PC
`PO BOX 1321
`NEWTOWN, PA 18940
`UNITED STATES
`bob@pfeilsticker.com
`215-757-1230
`
`Answer and Counterclaim
`
`Alfred W. Zaher
`
`azaher@mmwr.com, kkrajicek@mmwr.com, rmoss@mmwr.com,
`mschwarz@mmwr.com, bvinci@mmwr.com
`
`/alfred w. zaher/
`
`04/20/2020
`
`Imvax Answer and Counterclaim.pdf(218417 bytes )
`Exhibit A - Cert of Incorp.pdf(716246 bytes )
`Exhibit B - Proof of Domain Ownership.pdf(253227 bytes )
`Exhibit C - PA Foreign Corp Cert.pdf(383893 bytes )
`Exhibit D - TJU Impact Report.pdf(1883818 bytes )
`Exhibit E - Slide Deck final.pdf(5464442 bytes )
`Exhibit F - Paychex Enrollment.pdf(2615615 bytes )
`Exhibit G - Life Sciences Photo.pdf(55643 bytes )
`Exhibit H - Letter.pdf(96034 bytes )
`Exhibit I - Email Chain.pdf(347516 bytes )
`
`Registration Subject to the filing
`
`Registration No.
`
`5706102
`
`Registration date
`
`03/26/2019
`
`International Re-
`gistration No.
`
`Registrant
`
`NONE
`
`International Re-
`gistration Date
`
`NONE
`
`Enesi Pharma Limited
`120 A&B Olympic Avenue,
`Milton Park
`UNITED KINGDOM
`
`Goods/Services Subject to the filing
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are requested, namely: Pharmaceutical and veterinary prepara-
`tions and substances for the treatment of and protection against infectious and autoimmune dis-
`eases; pharmaceutical and veterinary preparations and substances forthe treatment of or protection
`against viral, metabolic, musculoskeletal, cardiovascular, genitourinary, central nervous system, en-
`docrinological, immunological, obstetrical, gynaecological, oncological, respiratory, neurological,
`gastrointestinal, hormonal, dermatological and psychiatric related diseases and disorders; prophylact-
`ic pharmaceutical and veterinary preparations and substances against infectious and autoimmune
`diseases; vaccines, prophylactic vaccines, therapeutic vaccines; contraceptive preparations and sub-
`
`

`

`stances
`
`Class 010. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are requested, namely: Surgical, medical, dental and veterinary
`apparatus and instruments, namely, drug delivery systems for delivery of drugsand vaccines; needle-
`free drug deliverysystems sold empty; actuator devices, namely, medical solid dose injectors sol-
`dempty for injecting pharmaceutical and veterinary preparations into the skin; drug cassettes in the
`nature of drug and vaccine delivery systems sold empty; medical needle-free injection systems,
`needle-free injectors, namely, injection devices for administering drugs and vaccines sold empty;
`drug delivery injection devices for administering drugs and vaccines, namely, medical injectors,
`needle-free injectors and structural parts therefor sold empty; actuator devices for use in drug deliv-
`ery devices, namely, handheld spring-powered devices in the nature of needle-free injection systems
`for injecting pharmaceutical and veterinary preparations into the skin sold empty; drugcassettes for
`use in drug delivery devices in the nature of drug and vaccine delivery systems sold empty to contain
`pharmaceutical preparations and substances for therapeutic, prophylactic and diagnostic use; re-
`placement parts for all the aforesaid goods
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`ENESI PHARMA LIMITED,
`
`
`
`
`
`
`IMVAX, INC.,
`
`
`Opposer,
`
`v.
`
`Applicant.
`
`
`
`
`Opposition No. 91252778
`IMVAX (Serial No. 87/934,880)
`
`Interlocutory Attorney
`ANN LINNEHAN VOGLER
`
`
`
`
`
`APPLICANT’S ANSWER AND COUNTERCLAIM FOR CANCELLATION OF
`OPPOSER’S REGISTRATION NO. 5706102 FOR IMPLAVAX
`
`Imvax, Inc. (“Applicant”), for its Answer to the Notice of Opposition (“Notice”) of Enesi
`
`ANSWER
`
`Pharma Limited (“Opposer”), states as follows:
`
`1.
`
`Applicant avers that the records of the United States Patent and Trademark Office
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`speak for themselves and otherwise denies knowledge or information sufficient to form a belief
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`as to the truth of the allegations of paragraph 1 of the Notice.
`
`2.
`
`Applicant avers that the records of the United States Patent and Trademark Office
`
`speak for themselves and otherwise denies knowledge or information sufficient to form a belief
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`as to the truth of the allegations of paragraph 2 of the Notice.
`
`3.
`
`Applicant avers that the records of the United States Patent and Trademark Office
`
`speak for themselves and otherwise denies knowledge or information sufficient to form a belief
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`as to the truth of the allegations of paragraph 3 of the Notice.
`
`
`
`

`

`4.
`
`Applicant avers that the records of the United States Patent and Trademark Office
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`speak for themselves and otherwise denies knowledge or information sufficient to form a belief
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`as to the truth of the allegations of paragraph 4 of the Notice.
`
`5.
`
`Applicant avers that the records of the United States Patent and Trademark Office
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`speak for themselves. Applicant admits that it filed an application for federal registration of the
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`IMVAX Mark on May 24, 2018, pursuant to 15 U.S.C. § 1051(b).
`
`6.
`
`Applicant avers that the records of the United States Patent and Trademark Office
`
`speak for themselves. Applicant admits that it filed an application for federal registration of the
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`IMVAX Mark on May 24, 2018, pursuant to 15 U.S.C. § 1051(b).
`
`7.
`
`Applicant admits that Opposer’s filing date and priority date predate May 24,
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`2018, but otherwise denies the allegations set forth in paragraph 7 of the Notice.
`
`8.
`
`9.
`
`Denied.
`
`Denied.
`
`10.
`
`Applicant admits that Opposer’s Mark and Applicant’s IMVAX mark each
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`include the letters “I,” “M,” “V,” “A,” and “X.”
`
`11.
`
`Denied.
`
`12.
`
`Applicant denies Opposer’s beliefs and allegations set forth in paragraph 12 of the
`
`Notice. Broad and dominating trademark protection is not available for “IM …VAX”
`
`trademarks in the immunology/vaccine related space. Applicant notes that a number of
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`trademarks variously containing the letter groupings “I” and “M” and “V,” “A” and “X” have
`
`long coexisted on the USPTO’s principal register in the immunology/vaccine related space –
`
`including (i) IMOVAX for “vaccines for human use” in IC 005 (Registration No. 1537890, May
`
`9, 1989) owned by Sanofi Pasteur Corporation France, and (ii) IVAX for “metered dose inhalers
`
`
`
`-2-
`
`

`

`for therapeutic use, sold empty” in IC 010 (Registration No. 2986008, August 16, 2005) owned
`
`by Ivax LLC, a subsidiary of Teva Pharmaceuticals. Indeed, both Sanofi and Ivax have agreed
`
`with Applicant that their respective marks can coexist with Applicant’s IMVAX mark without
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`likelihood of confusion and have consented to suspend their co-pending oppositions against
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`Applicant’s IMVAX mark (i.e., Opposition Nos. 91252792 and 91252789) pending the final
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`determination of this Opposition.
`
`13.
`
`The allegations of paragraph 13 of the Notice state a legal conclusion to which no
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`response is required. To the extent a response is required, Applicant denies the allegations of
`
`paragraph 13 of the Notice.
`
`14.
`
`The allegations of paragraph 14 of the Notice state a legal conclusion to which no
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`response is required. To the extent a response is required, Applicant denies the allegations of
`
`paragraph 14 of the Notice.
`
`15.
`
`The allegations of paragraph 15 of the Notice state a legal conclusion to which no
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`response is required. To the extent a response is required, Applicant denies the allegations of
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`paragraph 15 of the Notice. Applicant specifically denies that Opposer has suffered, or will
`
`suffer, any damage or injury as a result of Applicant’s use or registration of its IMVAX mark.
`
`WHEREFORE, Applicant demands judgment dismissing the Notice of Opposition with
`
`prejudice and granting to Applicant such other and further relief as the Board may deem just and
`
`proper.
`
`COUNTERCLAIM
`
`PETITION FOR CANCELLATION
`
`
`
`Applicant/Counterclaimant, Imvax, Inc. (“Applicant” or “Imvax”), a Delaware
`
`corporation having a place of business at #440, 601 Walnut Street, Philadelphia, PA 19106,
`
`through its undersigned counsel, petitions to cancel U.S. Trademark Registration No. 5706102
`
`
`
`-3-
`
`

`

`(“Opposer’s Registration”) for the word “IMPLAVAX” (“Opposer’s Mark”), which was
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`registered on March 26, 2019 to Opposer/Respondent Enesi Pharma Limited, a United Kingdom
`
`limited company with an address of 45B Western Ave., Milton Park Abingdon, Oxfordshire,
`
`OX14 4RU, United Kingdom (“Opposer” or “Enesi”). This Petition is timely filed within five
`
`years from the U.S. registration date of Opposer’s Mark. 15 U.S.C. § 1064. As grounds for its
`
`Petition to cancel, pursuant to § 14 of the Lanham Trademark Act of 1946, 15 U.S.C. § 1064,
`
`Applicant alleges as follows:
`
`1.
`
`Applicant owns pending Application Serial No. 87/934,880 for registration of the
`
`mark IMVAX, for “Biological preparations for the treatment of cancer; Pharmaceutical
`
`preparations for the treatment of cancer; Pharmaceutical products for the prevention and
`
`treatment of cancer” in International Class 005; “Medical apparatus for introducing
`
`pharmaceutical preparations into the human body; Medical apparatus for use in treating cancer”
`
`in International Class 010; “Research and development in the pharmaceutical and biotechnology
`
`fields; Providing medical and scientific research information in the field of pharmaceuticals and
`
`clinical trials” in International Class 042; and “Providing a web site featuring medical
`
`information” in International Class 042.
`
`2.
`
`Opposer’s Registration for Opposer’s Mark covers “Pharmaceutical and
`
`veterinary preparations and substances for the treatment of and protection against infections and
`
`autoimmune diseases; pharmaceutical and veterinary preparations and substances for the
`
`treatment of or protection against viral, metabolic, musculoskeletal, cardiovascular,
`
`genitourinary, central nervous system, endocrinological, immunological, obstetrical,
`
`gynaecological, oncological, respiratory, neurological, gastrointestinal, hormonal, dermatological
`
`and psychiatric related diseases and disorders; prophylactic pharmaceutical and veterinary
`
`
`
`-4-
`
`

`

`preparations and substances against infectious and autoimmune diseases; vaccines, prophylactic
`
`vaccines, therapeutic vaccines; contraceptive preparations and substances” in International Class
`
`005, and “Surgical, medical, dental and veterinary apparatus and instruments, namely, drug
`
`delivery systems for delivery of drugs and vaccines; needle-free drug delivery systems sold
`
`empty; actuator devices, namely, medical solid dose injectors sold empty for injecting
`
`pharmaceutical and veterinary preparations into the skin; drug cassettes in the nature of drug and
`
`vaccine delivery systems sold empty; medical needle-free injection systems, needle-free
`
`injectors, namely, injection devices for administering drugs and vaccines, namely, medical
`
`injectors, needle-free injectors and structural parts therefor sold empty; actuator devices for use
`
`in drug delivery devices, namely, handheld spring-powered devices in the nature of needle-free
`
`injection systems for injecting pharmaceutical and veterinary preparations into the skin sold
`
`empty; drug cassettes for use in drug delivery devices in the nature of drug and vaccine delivery
`
`systems sold empty to contain pharmaceutical preparations and substances for therapeutic,
`
`prophylactic and diagnostic use; replacement parts for all the aforesaid goods” in International
`
`Class 010.
`
`3.
`
`Opposer’s Registration issued from Application Serial No. 79/233,134 filed
`
`pursuant to § 66(a) of the Lanham Trademark Act (15 U.S.C. § 1141f) based on International
`
`Registration No. 1,404,355 and claims a foreign priority date of September 21, 2017.
`
`4.
`
`On information and belief, as of the registration date of Opposer’s Registration,
`
`Opposer has not used Opposer’s Mark in commerce in the United States in connection with the
`
`goods in International Class 005 covered by Opposer’s Registration.
`
`
`
`-5-
`
`

`

`5.
`
`On information and belief, as of the registration date of Opposer’s Registration,
`
`Opposer has not used Opposer’s Mark in commerce in the United States in connection with the
`
`goods in International Class 010 covered by Opposer’s Registration.
`
`6.
`
`Applicant, however, has been using its IMVAX mark in commerce in the United
`
`States for years, including before the September 21, 2017 priority date of Opposer’s Registration,
`
`including for goods and services recited in Applicant’s Application Serial No. 87/934,880.
`
`7.
`
`Indeed, Applicant’s use of its IMVAX mark began at least as early as 2015, when
`
`Imvax, Inc. was incorporated in the state of Delaware. See Ex. A, Certificate of Incorporation.
`
`Since at least that date, Applicant has continuously been performing business operations under
`
`the IMVAX name.
`
`8.
`
`Applicant registered an internet domain in the “IMVAX” name in 2015 and
`
`maintains that registration to this day. See Ex. B, Proof of Domain Ownership.
`
`9.
`
`Applicant maintains a website prominently displaying the IMVAX name at
`
`https://www.imvax.com/.
`
`10.
`
`Applicant was registered to do business in the state of Pennsylvania as a foreign
`
`corporation on October 20, 2016. See Ex. C, Foreign Registration Statement.
`
`11.
`
`Since at least as early as 2016, Applicant has provided research services under the
`
`IMVAX name focused on the development of novel patient-specific vaccines and
`
`immunotherapy strategies for the treatment of malignant gliomas and other cancers with unmet
`
`medical needs. See https://www.imvax.com/.
`
`12.
`
`In or about 2016, Applicant partnered with Strategic Compliance International
`
`Inc. (“SCI”) for regulatory support in the development of an orphan drug therapy product for
`
`glioma indication. SCI assisted Applicant with regulatory applications and the organization of
`
`
`
`-6-
`
`

`

`clinical trials designed to research the safety and efficacy of cancer treatments developed by
`
`Applicant.
`
`13.
`
`Applicant also partnered with Thomas Jefferson University to conduct clinical
`
`trials. Thomas Jefferson University, New Glioblastoma Vaccine Shows Promise in Clinical
`
`Trial, https://hospitals.jefferson.edu/news/2019/04/glioblastoma-vaccine-shows-promise-in-
`
`clinical-trial.html (April 1, 2019); see also Ex. D, Impact Report. Additionally, Applicant and
`
`Thomas Jefferson University entered into a patent licensing agreement in June 2016. See Ex. E,
`
`Imvax Slide Deck.
`
`14.
`
`Indeed, by 2016, Applicant had made significant, publicly recognized
`
`contributions to cancer research. See Ex. E, Imvax Slide Deck. Applicant developed a three-
`
`pronged therapeutic platform for treatment of cancers such as glioblastoma. Id. Applicant has
`
`performed at least three Phase I clinical trials testing the safety and efficacy of this platform. Id.;
`
`see also Antisense 102: Pilot Immunotherapy for Newly Diagnosed Malignant Glioma,
`
`NATIONAL INSTITUTE OF HEALTH,
`
`https://clinicaltrials.gov/ct2/show/NCT02507583?term=Imvax&draw=2&rank=1 (last accessed
`
`April 14, 2020) [hereinafter “Phase 1B Trial”]. These clinical trials utilized Applicant’s
`
`Antisense treatment. Ex. E; see also Phase 1B Trial. The trials proved extremely successful and
`
`showed positive patient outcomes. Ex. E.
`
`15.
`
`Applicant produced and published a “patient success stories” video, which
`
`memorializes its successful clinical trial outcomes over the years. See Imvax, Imvax Treatise –
`
`Minus MoA June 2019, VIMEO, https://vimeo.com/343078275/db23754e86 (last accessed April
`
`14, 2020).
`
`
`
`-7-
`
`

`

`16.
`
`Applicant has, over the years, successfully raised many millions of dollars to fund
`
`its research. See Ex. E, Slide Deck. Applicant’s fundraising success was highlighted in an
`
`article published by the Philadelphia Business Journal. Imvax raises $25 million to advance
`
`experimental brain cancer treatment, PHILADELPHIA BUSINESS JOURNAL,
`
`https://www.bizjournals.com/philadelphia/news/2019/05/30/imvax-immunotherapy-
`
`glioblastoma-brain-cancer.html (Sept. 10, 2019).
`
`17.
`
`Applicant employs a team of employees, contractors, and consultants including
`
`scientists, clinical researchers, and product development contributors and has been distributing
`
`payroll since at least April 2017. See Ex. F, Paychex Enrollment Form; see also Imvax, Our
`
`Team, https://www.imvax.com/ (last accessed April 17, 2020).
`
`18.
`
`Applicant has been a member of Life Sciences Pennsylvania since 2016. Through
`
`Life Sciences Pennsylvania, Applicant has attended conferences and presented on its research.
`
`This includes a presentation at the Life Sciences conference in 2016. See Ex. G (photo of
`
`Imvax’s Dr. David Andrews speaking to conference attendees at Imvax booth sporting IMVAX
`
`signage).
`
`19.
`
`Applicant’s activities, including those recited supra in paragraphs 7-18, constitute
`
`use or otherwise create priority rights in Applicant’s IMVAX Mark. See, e.g., 15 U.S.C. § 1127
`
`(defining “use in commerce”); Kythera Biopharmaceuticals, Inc. v. Litera, Inc., 998 F. Supp. 2d
`
`890, 900 (C.D. Cal. 2014) (finding that an entity that “actually offers its research services” and
`
`engages in licensing and development efforts to that end had used its mark in commerce); Dexas
`
`Int’l, Ltd. v. Ideavillage Prods. Corp., 2108 WL 3586101, at *3 (TTAB July 24, 2018) (finding
`
`that prior use of a term in “advertising brochures, . . . in press releases,” and in a trade show
`
`display can demonstrate priority).
`
`
`
`-8-
`
`

`

`20.
`
`Opposer has, on multiple occasions, represented that Opposer’s Mark and
`
`Applicant’s IMVAX mark are confusingly similar. See Notice of Opposition; see also Ex. H,
`
`Opposer’s December 11, 2019 Letter.
`
`21.
`
`Applicant has pursued resolution of this matter with Opposer in an appropriate,
`
`reasonable fashion (including conducting business leader meetings with Opposer) and has
`
`proposed concessions including amendments to its Application Serial No. 87/934,880 to further
`
`that goal. See Ex. H, Dec. 11, 2019 Letter. Applicant made similar efforts in its discussions with
`
`Sanofi and Ivax to resolve co-pending Opposition Nos. 91252792 and 91252789; those efforts
`
`were successful, and the Oppositions have been suspended on consent pending the final
`
`determination of the instant Opposition.
`
`22.
`
`Opposer has, however, not negotiated with Applicant in good faith. Indeed,
`
`Opposer has pre-conditioned discussion between the parties and the granting of reasonable
`
`extension requests upon Applicant’s compliance with Opposer’s terms. See Ex. I, Email
`
`Conditioning Settlement Discussions and Extension of Time Upon Receipt of Evidence of Use.
`
`23. Moreover, Opposer has attempted to utilize this Opposition in bad faith to coerce
`
`Applicant into paying it exorbitant sums of money and giving up the freedom to use and right to
`
`register Applicant’s IMVAX mark. See Ex. H, December 11, 2019 Letter (acknowledging
`
`Opposer’s willingness to settle but reiterating demand to cease use and withdraw application).
`
`This behavior by Opposer is especially problematic in light of the incontrovertible fact that
`
`Applicant has been using its IMVAX mark in U.S. commerce since before Opposer’s alleged
`
`priority date.
`
`
`
`
`
`
`
`-9-
`
`

`

`COUNT I: LACK OF BONA FIDE INTENT TO USE
`
`Applicant repeats and realleges paragraphs 1-23 of its Counterclaim, which are
`
`24.
`
`incorporated herein by reference.
`
`25.
`
`Upon information and belief, Opposer did not have a bona fide intent to use
`
`Opposer’s Mark in United States commerce when it filed Application Serial No. 79/233,134 that
`
`would become Opposer’s Registration.
`
`26. Moreover, upon information and belief, Opposer presently lacks a bona fide intent
`
`to use Opposer’s Mark in United States commerce for the goods recited in Opposer’s
`
`Registration.
`
`27.
`
`“There can be a period of time during which the holder of a registration based on
`
`§ 66(a) has not actually used the mark in commerce but still asserts a bona fide intention to do
`
`so. It is in this liminal state that a petition to cancel a registration on the ground of a lack of bona
`
`fide intent to use the mark can be heard.” Koninkijke Philips Electronics N.V. v. Hunt Control
`
`Sys., Inc., No. 11-3684, 2016 WL 3545529, at *11 (D. N.J. June 29, 2016) (internal alterations
`
`and quotation marks omitted) (quoting Sandro Andy, S.A. v. Light Inc., No. 12-civ-2392, 2012
`
`WL 6709268, at *3 (S.D.N.Y. Dec. 27, 2012)); see also L’Oreal S.A. v. Macron, 102 U.S.P.Q.2d
`
`1434, 1444 (TTAB 2012) (noting that registration based on foreign filing must be accompanied
`
`by bona fide intent to use the mark in U.S. commerce).
`
`28.
`
`As indicated in paragraphs 4 and 5, supra, upon information and belief Opposer
`
`has not used Opposer’s Mark in commerce in the United States for the goods recited in
`
`Opposer’s Registration since the date of Opposer’s Registration.
`
`
`
`-10-
`
`

`

`29.
`
`Opposer’s Registration is therefore squarely within the “liminal state” during
`
`which it is subject to cancellation “on the ground of a lack of bona fide intent to use.”
`
`Koninkijke Philips Elecs. N.V., 2016 WL 3545529, at *11.
`
`30. More particularly, upon information and belief, Opposer has no bona fide intent to
`
`use Opposer’s Mark in International Class 005 in connection with “Pharmaceutical and
`
`veterinary preparations and substances for the treatment of and protection against infections and
`
`autoimmune diseases and disorders.”
`
`31.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against viral . . . diseases and disorders.”
`
`32.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . metabolic . . . diseases and
`
`disorders.”
`
`33.
`
` Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . musculoskeletal . . . diseases and
`
`disorders.”
`
`34.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . cardiovascular . . . diseases and
`
`disorders.”
`
`
`
`-11-
`
`

`

`35.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . genitourinary . . . diseases and
`
`disorders.”
`
`36.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . central nervous system . . . diseases
`
`and disorders.”
`
`37.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . endocrinological . . . diseases and
`
`disorders.”
`
`38.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . immunological . . . diseases and
`
`disorders.”
`
`39.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . obstetrical . . . diseases and
`
`disorders.”
`
`40.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`
`
`-12-
`
`

`

`and substances for the treatment of or protection against . . . gynaecological . . . diseases and
`
`disorders.”
`
`41.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
`
`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
`
`and substances for the treatment of or protection against . . . oncological . . . diseases and
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`disorders.”
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`42.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
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`and substances for the treatment of or protection against . . . respiratory . . . diseases and
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`disorders.”
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`43.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
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`and substances for the treatment of or protection against . . . neurological . . . diseases and
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`disorders.”
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`44.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
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`and substances for the treatment of or protection against . . . gastrointestinal . . . diseases and
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`disorders.”
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`45.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
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`and substances for the treatment of or protection against . . . hormonal . . . diseases and
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`disorders.”
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`46.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
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`and substances for the treatment of or protection against . . . dermatological . . . diseases and
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`disorders.”
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`47.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “pharmaceutical and veterinary preparations
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`and substances for the treatment of or protection against . . . psychiatric related diseases and
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`disorders.”
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`48.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “prophylactic pharmaceutical and veterinary
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`preparations and substances against infectious and autoimmune diseases.”
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`49.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “vaccines, prophylactic vaccines, therapeutic
`
`vaccines.”
`
`50.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 005 in connection with “contraceptive preparations and substances.”
`
`51.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “Surgical, medical, dental and veterinary
`
`apparatus and instruments.”
`
`52.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “drug delivery systems for delivery of drugs
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`and vaccines.”
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`-14-
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`53.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “needle-free drug delivery systems sold
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`empty.”
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`54.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “actuator devices, namely, medical solid dose
`
`injectors sold empty for injecting pharmaceutical and veterinary preparations into the skin.”
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`55.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “drug cassettes in the nature of drug and
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`vaccine delivery systems sold empty.”
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`56.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “medical needle-free injection systems,
`
`needle-free injectors, namely, injection devices for administering drugs and vaccines, namely,
`
`medical injectors, needle-free injectors and structural parts therefor sold empty.”
`
`57.
`
`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “actuator devices for use in drug delivery
`
`devices, namely, handheld spring-powered devices in the nature of needle-free injection systems
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`for injecting pharmaceutical and veterinary preparations into the skin sold empty.”
`
`58.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “drug cassettes for use in drug delivery
`
`devices in the nature of drug and vaccine delivery systems sold empty to contain pharmaceutical
`
`preparations and substances for therapeutic, prophylactic and diagnostic use.”
`
`
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`-15-
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`59.
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`Upon information and belief, Opposer has no bona fide intent to use Opposer’s
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`Mark in International Class 010 in connection with “replacement parts for all the aforesaid
`
`goods,” as represented in paragraphs 50-57, supra.
`
`60.
`
`Because Opposer lacks the bona fide intent to use Opposer’s Mark in commerce,
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`Opposer’s Registration should be cancelled.
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`COUNT II: LIKELIHOOD OF CONFUSION
`
`61.
`
`Applicant repeats and realleges paragraphs 1-60 of its Counterclaim, which are
`
`incorporated herein by reference.
`
`62.
`
`Upon information and belief, Applicant’s first use in commerce of its IMVAX
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`mark in the United States occurred earlier than the September 21, 2017 foreign priority date to
`
`which Opposer claims priority.
`
`63.
`
`Opposer has admitted—in correspondence with Applicant and through binding
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`admissions to this Board—that Opposer’s Mark is confusingly similar to Applicant’s IMVAX
`
`mark, that the goods covered by Applicant’s IMVAX mark and Opposer’s Mark are
`
`“substantially related,” and that there is a likelihood of confusion between the two marks as
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`applied to the goods listed in Applicant’s Application Serial No. 87/934,880. Notice; see also
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`Opposer’s Dec. 11, 2019 Letter.
`
`64. When a party to an opposition makes factual admissions in a pleading, it is bound
`
`by those admissions and estopped from making contrary arguments. See, e.g., Brown Co. v. Am.
`
`Stencil Mfg. Co., Inc., 180 U.S.P.Q. 344, 345 n.5 (T.T.A.B. 1973). Thus, Opposer is bound by
`
`its factual admissions relating to likelihood of confusion.
`
`
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`-16-
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`

`

`65.
`
`A party, like Applicant, with priority of use, that shows a likelihood of confusion
`
`between its mark and that of another, is entitled to continued use and registration of its mark
`
`while the other is subject to cancellation. E.g., TBMP § 309.03(c)(2).
`
`66.
`
`Continued registration of Opposer’s Mark is inconsistent with Applicant’s priority
`
`of use and prior exclusive rights in its IMVAX mark and threatens to destroy Applicant’s
`
`substantial investment and goodwill in its IMVAX mark.
`
`67.
`
`For the foregoing reasons, Applicant will be damaged by the continued
`
`registration of Opposer’s Mark.
`
`
`
`WHEREFORE, Applicant/Counterclaimant respectfully requests that Opposer’s
`
`Registration No. 5706102 be cancelled in whole or in part.
`
`
`
`Applicant appoints attorneys Alfred W. Zaher, Richard L. Moss and Brianna M. Vinci
`
`along with the law firm Montgomery McCracken Walker & Rhoads LLP, 1735 Market Street,
`
`Philadelphia, PA 19103, to transact all business on its behalf in connection with this Opposition.
`
`Dated: April 20, 2020
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`Respectfully submitted,
`
`
`/s/ Alfred W. Zaher
`
`Montgomery McCracken Walker &
`Rhoads LLP
`Alfred W. Zaher
`Richard L. Moss
`Brianna M. Vinci
`1735 Market Street
`Philadelphia, PA 19103
`(215) 772-1500
`Attorneys for Applicant/Countercl