Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1039699
`03/03/2020
`
`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
`
`Virbac
`03/29/2020
`
`1Ã#RE AVENUE 2065M, L.I.D
`CARROS, 06516
`FRANCE
`
`ELIZABETH K. RUCKI
`BAKER BOTTS LLP
`2001 ROSS AVENUE SUITE 900
`DALLAS, TX 75201
`UNITED STATES
`elizabeth.rucki@bakerbotts.com, cecily.porterfield@bakerbotts.com, daltm-
`dept@bakerbotts.com, paul.reilly@bakerbotts.com
`214-953-6500
`
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`88231782
`03/03/2020
`
`Stephen A. Merlo
`P.O. Box 8621
`St. Louis, MO 63126
`UNITED STATES
`
`Publication date
`Opposition Peri-
`od Ends
`
`10/01/2019
`03/29/2020
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 2017/07/19 First Use In Commerce: 2017/07/19
`All goods and services in the class are opposed, namely: surface cleaner, plant wash, laundry addit-
`ives for cleaning clothes
`Class 005. First Use: 2017/07/19 First Use In Commerce: 2017/07/19
`All goods and services in the class are opposed, namely: Hand sanitizer, and air mist sanitizer
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(d)
`Trademark Act Section 2(a)
`
`

`

`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`1262810
`
`01/03/1984
`
`Application Date
`
`02/17/1981
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`VIRBAC
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`VETERINARY PREPARATIONS-NAMELY, AUTIBIOTICS, [ VACCINES, DIUR-
`ETICS, ] ANTIPARASITIC PREPARATIONS, PREPARATIONS FOR TREAT-
`ING INFECTIONS, [ ANALGESICS, VITAMINS,] ANTISEPTICS, DISINFECT-
`ANTS, [ AND HORMONAL PREPARATIONS FOR PROMOTING GROWTH, ]
`
`U.S. Registration
`No.
`Registration Date
`
`2878337
`
`08/31/2004
`
`Word Mark
`Design Mark
`
`VIRBAC
`
`Application Date
`
`05/22/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Color is claimed as a feature of the mark. The mark consists of a blue rectangle
`(pantone Reflex Blue) with inside an italic upper-case and lower-case white
`typeface; a little red (pantone 485 C) square dotting the "i"; "Virbac" is under-
`lined by a red line (pantone 485 C) tapered at the ends.
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Veterinary and sanitary products and substances, namely vaccines, antibiotics,
`medicated dermatological preparations, anti-parasitics, anti-inflammatories, hor-
`mones and preparations for the suppression of hormones, eye drops, topical an-
`esthetics, anti-infectives, anti-bacterial pharmaceuticals and antiseptics; medic-
`ated mouthwash, lozenges and toothpaste for veterinary use; dietetic products
`and substances adapted for medical use, namely, nutritional supplements; disin-
`fectants for veterinary use; preparations for destroying vermin; fungicides and
`herbicides for domestics use
`Class 038. First use: First Use: 0 First Use In Commerce: 0
`[ Telecommunications services, namely, personal communications services;
`electronic mail services; providing connections to a global computer network for
`
`

`

`the transmission of data and access to web sites; electronic transmission of
`data, images and documents by computer terminals; providing information about
`telecommunication services; providing multiple user dial-up and dedicated ac-
`cess to the Internet ]
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Veterinary services
`
`U.S. Registration
`No.
`Registration Date
`
`4093340
`
`01/31/2012
`
`Word Mark
`Design Mark
`
`VIRBAC
`
`Application Date
`
`04/12/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "VIRBAC" in white with a red square as the dot
`ofthe letter "i" and a red line tapered at the ends beneath with a blue rectangular
`background that is outlined in white. The black outline is not a feature of the
`mark and merely represents the placement of the white outline.
`Class 041. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`Education services, namely, providing training in the nature of classes, confer-
`ences and workshops for specialists in the field of animal health
`Class 044. First use: First Use: 2003/08/00 First Use In Commerce: 2003/08/00
`Providing online information to veterinaries regarding veterinary care, medicine
`and animal health in the field of veterinary services
`
`U.S. Registration
`No.
`Registration Date
`
`4651302
`
`12/09/2014
`
`Word Mark
`
`VIRBACEF
`
`Application Date
`
`05/28/2013
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Broad spectrum antibiotic, namely, ceftiofur sodium, for use in cattle, swine,
`sheep, goats, horses, dogs, day-old chicken and day-old turkey polts
`
`4763407
`
`Application Date
`
`08/07/2014
`
`06/30/2015
`
`Foreign Priority
`Date
`VIRBAC SHAPING THE FUTURE OF ANIMAL HEALTH
`
`04/09/2014
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Veterinary preparations, namely, vaccines, antibiotics, medicated dermatological
`preparations, anti-parasitics, anti-inflammatories, hormones and preparations for
`the suppression of hormones, eye drops, topical anesthetics, anti-infectives,
`anti-bacterial pharmaceuticals and antiseptics for domestic animals and live-
`stock; Sanitary preparations for veterinary purposes; Dietetic substances in the
`nature of nutrional supplements for animal nutrition; All-purpose disinfectants;
`Preparations for killing weeds and destroying vermin; Vaccines for veterinary
`use
`Class 035. First use: First Use: 0 First Use In Commerce: 0
`Advertising; Business management; Business administration; Office functions;
`Arranging newspaper subscriptions for others; Arranging subscriptions to tele-
`communication services for others; Business management and organization
`consultancy; Providing business information via a website; Computerised file
`management; Business efficiency expert services; Demonstration of goods
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Veterinary services
`
`

`

`Attachments
`
`76411691#TMSN.png( bytes )
`85292924#TMSN.png( bytes )
`85943837#TMSN.png( bytes )
`86360245#TMSN.png( bytes )
`VIBAC 88231782 - Notice of Opposition with Exhibits.pdf(1870610 bytes )
`
`Signature
`Name
`Date
`
`/Paul J. Reilly/
`Paul J. Reilly
`03/03/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`VIRBAC S.A.,
`
`Opposer,
`
`vs.
`
`STEPHEN A. MERLO,
`
`Applicant.
`
`
`
`Opposition No. _____________
`
`Mark: VIBAC
`(Serial No: 88/231,782)
`Publication Date: October 1, 2019
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`NOTICE OF OPPOSITION
`
`Opposer, Virbac S.A., a société anonyme, organized and existing under the laws of France,
`
`having an address of 1 ère Avenue, 2065 m-L.I.D. 06516 Carros, France (“Opposer” or
`
`“Virbac”), believes that it will be damaged by the registration of U.S. Appl. Serial No. 88/231,782,
`
`filed on December 17, 2018, in the name of Stephen A. Merlo (“Applicant”), for the alleged mark
`
`VIBAC, based on use of the mark on or in connection with “Surface cleaner, plant wash, laundry
`
`additives for cleaning clothes” in International Class 3 and “Hand sanitizer, and air mist sanitizer”
`
`in International Class 5, and having been previously granted an extension of time to oppose, hereby
`
`opposes the foregoing application.
`
`The specific grounds for this Notice of Opposition (“Opposition”), are as follows:
`
`1.
`
`2.
`
`Virbac is a French company dedicated to improving animal health.
`
`Virbac, itself, and through its predecessors in interest, subsidiaries and affiliates,
`
`has been engaged in the animal health and animal pharmaceuticals business for over 50 years and
`
`has become well and favorably known to members of the public, as well as to veterinarians,
`
`farmers and pet owners and the animal health care industry generally, for quality animal health
`
`products and related products and services. Virbac, itself, and its subsidiaries and affiliates, own
`
`a portfolio of brands to identify its animal health products and animal pharmaceuticals, and related
`
`products and services.
`
`Active 44164638.5
`
`- 1 -
`
`

`

`3.
`
`Since at least as early as 1984 and continuing through to the present, Virbac has
`
`used the mark VIRBAC and variants in the United States to identify and in connection with various
`
`animal health and animal pharmaceutical products and related products and services. Further,
`
`since at least as early as 1997, Virbac has used the mark VIRBAC and variants in connection with
`
`products for use in destroying vermin such as fleas and ticks around the home.
`
`4.
`
`For over 35 years, Virbac has used the mark VIRBAC in connection with various
`
`animal health and animal pharmaceutical products and related products, as well as in advertising,
`
`marketing, sales, and promotional services to veterinarians, farmers and pet owners in the United
`
`States. The majority of those products have been identified using the mark VIRBAC in association
`
`with other terms and source identifiers, e.g., VIRBAC KNOCKOUT, etc. As such, consumers are
`
`accustomed to seeing and understanding such variants as being a part of Virbac’s portfolio of
`
`animal health and animal pharmaceutical products.
`
`5.
`
`Since long prior to the filing date of the application at issue and any purported use
`
`by Applicant of the alleged mark, VIBAC, Opposer’s VIRBAC mark has been identified with
`
`Virbac and its animal health and animal pharmaceutical products, among other related goods and
`
`services.
`
`6.
`
`The products and services provided by Virbac under its VIRBAC mark and variants
`
`are marketed, sold and provided in tremendous quantities around the world, supported by tens of
`
`thousands of dollars of advertising and promotion each year. Opposer’s VIRBAC branded
`
`products are sold in national retail chains, specialty pet stores, animal hospitals, veterinarian’s
`
`offices, and through online retailers, among other outlets.
`
`7.
`
`The vast commercial acceptance and success of Virbac and its products and
`
`services for well over 35 years is due in large measure to substantial marketing, advertising and
`
`promotion by Virbac. By virtue of such extensive efforts, Virbac has built up a very high level of
`
`consumer recognition symbolized by its mark VIRBAC and variants across the U.S.
`
`8.
`
`Complementing such extensive consumer exposure to and commercial impressions
`
`of the VIRBAC mark, Virbac also has a strong internet presence through which it markets,
`
`Active 44164638.5
`
`- 2 -
`
`

`

`advertises and promotes its products and services under the mark VIRBAC and variants. For
`
`example, Virbac’s website at VIRBAC.COM and its United States focused micro-site at
`
`US.VIRBAC.COM, are operational twenty-four hours a day, seven days a week. Virbac’s U.S.
`
`website – US.VIRBAC.COM – is visited upwards of 40,000 times each month by consumers.
`
`9.
`
`Virbac also maintains social media accounts on Twitter, Facebook, LinkedIn, and
`
`YouTube for its business, products and services, through which it advertises, markets and
`
`promotes its products and services under and in connection with the mark VIRBAC and variants.
`
`In addition to its social media accounts and websites, Virbac also spends substantial time, effort
`
`and resources on digital online marketing, advertising, postings and promotional incentives
`
`featuring the VIRBAC products. By way of example only, and in addition to the foregoing
`
`activities, Virbac regularly publishes and distributes e-mails to thousands of veterinary hospitals
`
`and veterinary practitioners, which market, promote and/or advertise the VIRBAC brand.
`
`Specifically, in 2019, Virbac sent 15 e-mails to more than 35,000 veterinary hospitals and
`
`veterinary practitioners. Virbac’s marketing efforts prompt thousands if not millions of
`
`commercial impressions upon consumers each featuring the mark VIRBAC and variants.
`
`10.
`
`Sales of Virbac’s products marketed under the VIRBAC mark and variants in the
`
`United States alone have exceeded many millions of dollars each year for each of the last five (5)
`
`years alone as a result of such advertising and promotions by Virbac.
`
`11.
`
`Due to such extensive and continuous marketing, advertising, promotion and sale
`
`of its animal health products and related products and services under or in connection with the
`
`mark VIRBAC and variants for many decades, the VIRBAC mark has not only acquired
`
`substantial public and consumer recognition throughout the United States, but also enjoys valuable
`
`goodwill, and has become famous, solely signifying Virbac as the source of products and services
`
`of high quality.
`
`12.
`
`Indeed, Opposer has established strong common law rights in its mark VIRBAC
`
`and variants, on or in connection with animal health and animal pharmaceutical products,
`
`including, but not limited to, products for use in destroying vermin such as fleas and ticks around
`
`Active 44164638.5
`
`- 3 -
`
`

`

`the home, and related products or services, long prior to the filing date of the mark in the
`
`application at issue.
`
`13.
`
`In addition to its prior common law rights in the mark VIRBAC and variants,
`
`Virbac is the owner of several active United States trademark and service mark registrations for
`
`VIRBAC or variants, including, but not limited to, the following:
`
`
`
`Mark
`
`VIRBAC
`
`VIRBAC &
`Design
`
`
`VIRBAC &
`Design
`
`
`VIRBACEF
`
`
`
`
`
`Reg.
`No.
`
`Reg. Date
`
`Goods and Services
`
`1262810 Jan. 3, 1984
`
`Class 5 - Veterinary preparations-namely,
`autibiotics, antiparasitic preparations,
`preparations for treating infections, antiseptics,
`disinfectants.
`2878337 Aug. 31, 2004 Class 5 - Veterinary and sanitary products and
`substances, namely vaccines, antibiotics,
`medicated dermatological preparations, anti-
`parasitics, anti-inflammatories, hormones and
`preparations for the suppression of hormones, eye
`drops, topical anesthetics, anti-infectives, anti-
`bacterial pharmaceuticals and antiseptics;
`medicated mouthwash, lozenges and toothpaste
`for veterinary use; dietetic products and
`substances adapted for medical use, namely,
`nutritional supplements; disinfectants for
`veterinary use; preparations for destroying
`vermin; fungicides and herbicides for domestics
`use.
`
`Class 44 – Veterinary services.
`Class 41 - Education services, namely, providing
`training in the nature of classes, conferences and
`workshops for specialists in the field of animal
`health.
`
`Class 44 - Providing online information to
`veterinaries regarding veterinary care, medicine
`and animal health in the field of veterinary
`services.
`Class 5 - Broad spectrum antibiotic, namely,
`ceftiofur sodium, for use in cattle, swine, sheep,
`goats, horses, dogs, day-old chicken and day-old
`turkey polts.
`
`4093340 Jan. 31, 2012
`
`4651302 Dec. 9, 2014
`
`Active 44164638.5
`
`- 4 -
`
`

`

`Mark
`
`Reg.
`No.
`
`Reg. Date
`
`Goods and Services
`
`4763407 Jun. 30, 2015
`
`VIRBAC
`SHAPING THE
`FUTURE OF
`ANIMAL
`HEALTH
`
`Class 5 - Veterinary preparations, namely
`vaccines, antibiotics, medicated dermatological
`preparations, anti-parasitics, anti-inflammatories,
`hormones and preparations for the suppression of
`hormones, eye drops, topical anesthetics, anti-
`infectives, anti-bacterial pharmaceuticals and
`antiseptics for domestic animals and livestock;
`Sanitary preparations for veterinary purposes;
`Dietetic substances in the nature of nutritional
`supplements for animal nutrition; All-purpose
`disinfectants; Preparations for killing weeds and
`destroying vermin; Vaccines for veterinary use.
`
`Class 35 - Advertising; Business management;
`Business administration; Office functions;
`Arranging newspaper subscriptions for others;
`Arranging subscriptions to telecommunication
`services for others; Business management and
`organization consultancy; Providing business
`information via a web site; Computerised file
`management; Business efficiency expert services;
`Demonstration of goods.
`
`Class 42 – Veterinary services.
`
`14.
`
`Copies of the United States Patent & Trademark Office’s (“USPTO”) Trademark
`
`Status & Document Retrieval (“TSDR”) Status Pages, USPTO Section 8 or Section 9 Renewal
`
`Acceptances, where applicable, and Certificates of Registration for each of the above-referenced
`
`marks are attached hereto as “Exhibit A.”
`
`15.
`
`Virbac’s registrations for these marks are valid, subsisting, in full force and effect,
`
`un-cancelled and unrevoked, and serve as evidence of Virbac’s exclusive right to use VIRBAC in
`
`commerce on or in connection with the goods or services identified in the registrations, as provided
`
`by Section 33(a) of the United States Trademark (Lanham) Act, 15 U.S.C. § 1115(a).
`
`16.
`
`Virbac’s registrations for the following marks have become incontestable pursuant
`
`to Section 15 of the Lanham Act, 15 U.S.C. § 1065: Reg. Nos. 1262810, 2878337, and 4093340.
`
`Active 44164638.5
`
`- 5 -
`
`

`

`17.
`
`Hereinafter, Virbac’s foregoing VIRBAC marks and variants, including those
`
`registered and/or used in commerce, are referred to individually and/or collectively as the
`
`“VIRBAC Marks.”
`
`18.
`
`Because of the long, extensive and widespread use, advertising, promotion and
`
`registration of the VIRBAC Marks on and in association with Virbac’s various goods and services,
`
`including, but not limited to, animal health and animal pharmaceutical products, consumers have
`
`become accustomed to associating products/services and marks consisting of, including or
`
`containing VIRBAC and variants with a single source, that is Virbac.
`
`19.
`
`In view of such substantial use, Virbac has built up tremendous goodwill in the
`
`VIRBAC Marks, including, VIRBAC, which became a highly regarded, well-known and famous
`
`brand long before the filing date of the application at issue or any claimed use by Applicant of the
`
`applied-for mark at issue. The VIRBAC Marks represent assets of enormous goodwill and of
`
`inestimable value to Virbac.
`
`20.
`
`On information and belief, on December 17, 2018, Applicant Stephen A. Merlo, an
`
`individual having an address at P.O. Box 8621, St. Louis, Missouri 63126, filed Application Serial
`
`No. 88/231,782, to register the mark VIBAC, based on alleged use of the purported mark since at
`
`least as early as July 19, 2017 in connection with “Surface cleaner, plant wash, laundry additives
`
`for cleaning clothes” in International Class 3 and “Hand sanitizer, and air mist sanitizer” in
`
`International Class 5.
`
`
`First Claim for Relief under Lanham Act Section 2(d)
`(Likelihood of Confusion)
`
`21.
`
`Opposer repeats and realleges each and every allegation contained in Paragraphs 1
`
`through 20 as if fully set forth herein.
`
`22.
`
`Registration of Applicant’s alleged mark, VIBAC, is barred by the provisions of
`
`Section 2(d) of the Trademark Act of 1946 because said mark consists of or comprises a mark
`
`which so resembles Virbac’s VIRBAC Marks, including, but not limited to, VIRBAC and variants,
`
`which have been in use and are also the subject of prior registrations with the USPTO, as to be
`
`Active 44164638.5
`
`- 6 -
`
`

`

`likely, when used in connection with the alleged goods of Applicant to cause confusion, mistake
`
`or deception.
`
`23.
`
`Virbac has standing and priority over Applicant given that, in part, Virbac’s use of
`
`the name and mark VIRBAC and variants, and/or application filing dates and/or registration dates
`
`for the VIRBAC Marks, precede Applicant’s filing date for Applicant’s purported VIBAC mark,
`
`and/or any alleged priority date or date of first use in commerce of Applicant’s purported mark
`
`VIBAC, and the use and registration of the opposed mark causes damage to Virbac and its highly
`
`regarded and well-known, if not famous, VIRBAC brand as it will not have control over
`
`Applicant’s use of the alleged mark VIBAC.
`
`24.
`
`Applicant’s alleged mark VIBAC, which is the subject of the application at issue,
`
`and Virbac’s VIRBAC Marks, including, but not limited to, VIRBAC and variants, are virtually
`
`identical if not similar.
`
`25.
`
`On information and belief, the goods in connection with which Applicant’s alleged
`
`mark is applied for or used and the goods in connection with which Opposer’s VIRBAC Marks
`
`are registered and/or used are similar, closely related or of a complementary nature. The
`
`application at issue filed by Applicant has no limitations with respect to the nature or purpose of
`
`use of the described goods.
`
`26.
`
`On information and belief, Virbac’s VIRBAC products and the goods of Applicant
`
`are or will be marketed and sold through similar, if not identical, channels of trade such as national
`
`retail chains, online and in other ways and target similar customers. Further, Applicant’s
`
`application at issue has no restrictions as to the channels of trade or target markets for the described
`
`goods.
`
`27.
`
`The similarities between the parties’ marks, the parties’ goods, the channels of trade
`
`and target markets, along with the reputation, renown and fame of the VIRBAC brand, strongly
`
`supports a determination that the applied for mark, VIBAC, is likely to cause confusion with the
`
`VIRBAC brand.
`
`Active 44164638.5
`
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`
`

`

`28.
`
`In view of the foregoing, Applicant’s claimed mark, VIBAC, as shown in the
`
`application at issue so resembles Virbac’s foregoing and previously used and/or registered
`
`VIRBAC Marks, including VIRBAC, as to be likely to cause confusion, to cause mistake or to
`
`deceive with consequent injury to Virbac. The likelihood of confusion, mistake or deception that
`
`would also arise from concurrent use and registration of the applied for mark with Virbac’s use
`
`and registration of its VIRBAC Marks, including but not limited to VIRBAC and variants, is that
`
`persons are likely to believe that (a) Applicant’s goods have their source in Virbac, or (b) Applicant
`
`and Applicant’s goods are a version of Opposer’s VIRBAC Marks or are in some way legitimately
`
`connected or affiliated with, associated with, sponsored, approved, endorsed or licensed by Virbac
`
`when, in fact, they are not.
`
`29.
`
`In view of the foregoing, registration of Applicant’s alleged mark VIBAC is barred
`
`by the provisions of Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), because the
`
`said mark consists of or comprises a mark which so resembles Virbac’s previously used and/or
`
`registered VIRBAC Marks, including VIRBAC, as to be likely, when used in connection with the
`
`alleged products of Applicant, to cause confusion, mistake or deception.
`
`
`
`30.
`
`Second Claim for Relief under Lanham Act Section 2(a)
`(False Suggestion of Connection with Persons, Living or Dead)
`
`Opposer repeats and realleges each and every allegation contained in Paragraphs 1
`
`through 29 as if set forth herein.
`
`31.
`
`Applicant’s alleged mark VIBAC, which is the subject of Application Serial No.
`
`88/231,782, is virtually identical to, if not the same as or a close proximation of, Opposer’s
`
`VIRBAC Marks, previously used by another person or institution, namely, Virbac.
`
`32.
`
`Consumers are likely to recognize that Applicant’s alleged mark VIBAC points
`
`uniquely and unmistakably to Opposer, given the renown, fame or reputation of Virbac.
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`33.
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`Opposer is not connected to or affiliated with Applicant, Applicant’s alleged mark,
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`VIBAC, or the alleged goods claimed by Applicant under Applicant’s alleged mark, VIBAC.
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`Active 44164638.5
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`34.
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`As set forth above, the renown, fame or reputation of Virbac and its VIRBAC
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`Marks, including, the name and mark VIRBAC, are of such a nature that consumers would
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`presume a connection between Virbac and Applicant when they encounter Applicant’s application
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`for and/or alleged use of VIBAC in connection with those goods claimed in Application Serial No.
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`88/231,782.
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`35.
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`By reason of the foregoing, Opposer is likely to be harmed by the registration of
`
`VIBAC, which is the subject of Application Serial No. 88/231,782. Indeed, Virbac would be
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`injured by the granting of a certificate of registration to Applicant because Applicant’s VIBAC
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`mark would falsely suggest a connection between Applicant and Opposer, when there is none.
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`Registration of the VIBAC mark in connection with the goods set forth in the application at issue
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`therefore violates Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a).
`
`36.
`
`By reason of the foregoing, Virbac will be damaged by the issuance of a registration
`
`sought by Applicant within the meaning of 15 U.S.C. § 1063 because such registration would
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`support and assist Applicant in the confusing, misleading, deceptive, false and/or dilutive use of
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`the alleged VIBAC mark, which is not within Virbac’s control, and would give color of exclusive
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`statutory rights to Applicant in violation and derogation of the prior and superior rights of Virbac
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`in the VIRBAC Marks and its name.
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`WHEREFORE, Virbac prays that this Opposition be sustained in its favor, that registration
`
`of Application Serial No. 88/231,782 be refused and/or denied to Applicant, and that the Board
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`grant all further relief favorable to Virbac that is necessary and just in these circumstances.
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`Respectfully submitted this the 3rd day of March, 2020.
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`BAKER BOTTS L.L.P.
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`By:
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`Paul J. Reilly
`Elizabeth K. Rucki
`Julie Beth Albert
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`Active 44164638.5
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`- 9 -
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`2001 Ross Avenue, Suite 900
`Dallas, Texas 75201-2900
`Telephone: (214) 953-6500
`E-mail: paul.reilly@bakerbotts.com
`
` elizabeth.rucki@bakerbotts.com
`
` daltmdept@bakerbotts.com
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`ATTORNEYS FOR OPPOSER
`VIRBAC S.A.
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`Active 44164638.5
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 3rd day of March, 2020, a true and correct copy of the
`
`
`foregoing Notice of Opposition was served, via e-mail to:
`
`
`
`David H. Chervitz
`David H. Chervitz, Esq.
`458 Whitestone Farm Drive
`Chesterfield, Missouri 63017
`dhcherv@aol.com
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`_______________________________
`Elizabeth K. Rucki
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`Active 44164638.5
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`- 11 -
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`EXHIBIT A
`EXHIBIT A
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`
`
`1
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`

`

`Generated on: This page was generated by TSDR on 2020-03-03 12:29:02 EST
`
`Mark: VIRBAC
`
`US Serial Number: 73297285
`
`US Registration
`Number:
`
`1262810
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Feb. 17, 1981
`
`Registration Date: Jan. 03, 1984
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Dec. 07, 2013
`
`Publication Date: Oct. 11, 1983
`
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`VIRBAC
`
`Standard Character
`Claim:
`
`No
`
`Mark Drawing
`Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`929,642
`
`Foreign
`Registration
`Number:
`
`Foreign
`Application/Registration
`Country:
`
`FRANCE
`
`Foreign Information
`
`Foreign
`Registration Date:
`
`Jul. 31, 1975
`
`Foreign Expiration
`Date:
`
`Jul. 31, 1985
`
`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: VETERINARY PREPARATIONS-NAMELY, AUTIBIOTICS, [ VACCINES, DIURETICS, ] ANTIPARASITIC PREPARATIONS,
`PREPARATIONS FOR TREATING INFECTIONS, [ ANALGESICS, VITAMINS,] ANTISEPTICS, DISINFECTANTS, [ AND
`HORMONAL PREPARATIONS FOR PROMOTING GROWTH, ]
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 44(e)
`
`U.S Class(es): 018
`
`Basis Information (Case Level)
`
`

`

`Filed Use: No
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: Yes
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: No
`
`Currently ITU: No
`
`Currently 44E: Yes
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: VIRBAC (S.A.)
`
`Owner Address: 1ère avenue 2065m, L.I.D
`06516 CARROS FRANCE
`
`Legal Entity Type: LIMITED LIABILITY CO.
`
`State or Country
`Where Organized:
`
`FRANCE
`
`Attorney/Correspondence Information
`
`Attorney Name: Paul J. Reilly
`
`Attorney Primary
`Email Address:
`
`daltmdept@bakerbotts.com
`
`Correspondent
`Name/Address:
`
`Paul J. Reilly
`Baker Botts L.L.P.
`2001 Ross Avenue
`Suite 600
`Dallas, TEXAS UNITED STATES 75201
`
`Attorney of Record
`
`Docket Number: 026730.0915
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Phone: 214.953.6849
`
`Fax: 214.661.4849
`
`Correspondent e-
`mail:
`
`daltmdept@bakerbotts.com
`
`Domestic
`Representative
`Name:
`
`Bassam N. Ibrahim
`
`Fax:
`
`(703) 836-2021
`
`Domestic
`Representative e-
`mail:
`
`bassam.ibrahim@bipc.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative
`
`Phone:
`
`(703) 836-6620
`
`Domestic
`Representative e-
`mail Authorized:
`
`Yes
`
`Prosecution History
`
`Date
`
`Description
`
`Sep. 22, 2016
`Sep. 22, 2016
`Dec. 07, 2013
`Dec. 07, 2013
`Dec. 07, 2013
`Nov. 20, 2013
`Dec. 07, 2013
`Nov. 20, 2013
`Aug. 03, 2011
`Aug. 03, 2011
`May 09, 2008
`Feb. 29, 2004
`Feb. 29, 2004
`Dec. 18, 2003
`Nov. 09, 1990
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`CASE FILE IN TICRS
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Proceeding
`Number
`
`76874
`76874
`76874
`76874
`
`88888
`
`

`

`Oct. 17, 1990
`Apr. 17, 1990
`Jan. 03, 1990
`Jan. 03, 1984
`Oct. 11, 1983
`Oct. 11, 1983
`Aug. 30, 1983
`Aug. 29, 1983
`Aug. 26, 1983
`Jul. 29, 1983
`Jul. 25, 1983
`Jun. 13, 1983
`Jan. 28, 1982
`
`RESPONSE RECEIVED TO POST REG. ACTION
`POST REGISTRATION ACTION MAILED - SEC. 8 & 15
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`REGISTERED-PRINCIPAL REGISTER
`PUBLISHED FOR OPPOSITION
`PUBLISHED FOR OPPOSITION
`NOTICE OF PUBLICATION
`NOTICE OF PUBLICATION
`NOTICE OF PUBLICATION
`APPROVED FOR PUB - PRINCIPAL REGISTER
`ASSIGNED TO EXAMINER
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`LETTER OF SUSPENSION MAILED
`TM Staff and Location Information
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Dec. 07, 2013
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Total Assignments: 1
`
`Registrant: Centre De Recherches Biologiques Virbac
`Societe Anonyme
`
` 
`
`Assignment 1 of 1
`
`Conveyance: CHANGE OF NAME 19810303
`
`Reel/Frame: 0442/0663
`
`Date Recorded: Jun. 13, 1983
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Name: CENTRE DE RECHERCHES BIOLOGIQUES
`VIRBAC A SOCIETE A RESPONSABILITE
`LIMITEE
`
`Legal Entity Type: UNKNOWN
`
`Pages: 5
`
`Assignor
`
`Execution Date: Mar. 15, 1983
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`Name: CENTRE DE RECHERCHES BIOLOGIQUES VIRBAC SOCIETE ANONYME
`
`Legal Entity Type: UNKNOWN
`
`Address: No Assignee Address Found
`
`Correspondent
`Name:
`
`WEISS, DAWID, FROSS ET AL.
`
`Correspondent
`Address:
`
`750 THIRD AVE.
`NEW YORK, NY 10017-2773
`
`State or Country
`Where Organized:
`
`No Place Where Organized Found
`
`Correspondent
`
`Domestic Representative - Not Found
`
`

`

`From:
`Sent:
`To:
`Subject:
`
`TMOfficialNotices@USPTO.GOV
`Saturday, December 7, 2013 11:00 PM
`bassam.ibrahim@bipc.com
`Trademark RN 1262810: Official Notice of Acceptance and Renewal under Sections 8 and 9 of the Trademark Act
`
`Serial Number:   73297285
`Registration Number:   1262810
`Registration Date:   Jan 3, 1984
`Mark:   VIRBAC
`Owner:   VIRBAC (S.A.)
` 
` 
`
`  Dec 7, 2013
`
`NOTICE OF ACCEPTANCE UNDER SECTION 8
`
`The declaration of use or excusable nonuse filed for the above-identified registration meets the requirements of Section 8 of the Trademark Act, 15 U.S.C. §1058.  The Section
`8 declaration is accepted.
` 
`
`NOTICE OF REGISTRATION RENEWAL UNDER SECTION 9
`
`The ren