Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1050073
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`Filing date:
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`04/20/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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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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`91254614
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`Defendant
`AbbVie AB
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`CHERYL A. WITHYCOMBE
`ABBVIE INC.
`1 NORTH WAUKEGAN ROAD AP34-2/V377
`NORTH CHICAGO, IL 60064
`trademarks@abbvie.com
`no phone number provided
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`Answer
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`Brett M. Tolpin
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`docket@tolpinlaw.com
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`/bmt/
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`04/20/2020
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`2020-04-20 Answer TTAB Opposition No 91254614 for VYALEV.pdf(233810
`bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of U.S. App. Ser. No. 88/640,320
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`Mark: VYALEV
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` BAYER HEALTHCARE LLC,
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`Opposer,
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`ABBVIE AB,
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`Applicant.
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`ANSWER
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`Opposition No. 91254614
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`Applicant AbbVie AB, through its counsel, hereby answers the Notice of Opposition as
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`follows:
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`1.
`Opposer and its predecessors have for many years been engaged in the manufacture,
`distribution, advertising and sale of products in the medical and healthcare fields, including
`products for the treatment of pain, inflammation, fever, and colds.
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`ANSWER: Applicant lacks knowledge or information sufficient to form a belief about
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`the truth of the allegations in Paragraph 1 and therefore denies the same.
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`2.
`Since long prior to the filing date of the Application, Opposer and its predecessors
`have continuously used the trademark ALEVE in commerce throughout the United States in
`connection with the advertising, promotion and sale of products for the treatment of pain,
`inflammation, fever and colds.
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`ANSWER: Applicant lacks knowledge or information sufficient to form a belief about
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`the truth of the allegations in Paragraph 2 and therefore denies the same.
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`3.
`Opposer owns the trademark registrations shown below, all comprised of its
`ALEVE Trademark:
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`REG. NO. REG. DATE
`1,536,042 April 25, 1989
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`3,287,780
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`September 4, 2007
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`3,719,030 December 1, 2009
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`MARK
`ALEVE
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`ALEVE
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`ALEVE-D
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`ALEVE
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`ALEVE
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`GOODS AND SERVICES
`Anti-inflammatory, analgesic, and
`antipyretic pharmaceutical preparations in
`Class 5
`Pharmaceutical antitussive-cold
`preparations; Preparations for treating
`colds in Class 5
`Antitussive-cold preparations;
`preparations for treating colds in Class 5
`4,459,303 December 31, 2013 Healthcare information services on pain
`relief, namely providing an online
`resource of information on joint, muscle
`and back pain, headache pain and
`osteoarthritis, including treatment options
`and tips in Class 44
`Electrical stimulation apparatus for nerves
`for therapeutic purposes in Class 10
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`5,279,528
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`September 5, 2017
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`ANSWER: Applicant admits that Opposer is the currently listed owner of the foregoing
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`trademark registrations in the online records of the U.S. Patent and Trademark Office. Applicant
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`lacks knowledge or information sufficient to form a belief about the truth of any other allegations
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`in Paragraph 3 and therefore denies the same.
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`By virtue of Opposer’s and its predecessors’ extensive sales, advertising and
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`promotion of pain, inflammation, fever, and cold relief products under its ALEVE trademark,
`Opposer and its predecessors have built up and Opposer now owns valuable goodwill symbolized
`by its ALEVE trademark.
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`ANSWER: Applicant lacks knowledge or information sufficient to form a belief about
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`the truth of the allegations in Paragraph 4 and therefore denies the same.
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`5.
`By virtue of the aforesaid extensive sales, advertising and promotion, the ALEVE
`trademark is famous among the general consuming public of the United States.
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`ANSWER: Applicant lacks knowledge or information sufficient to form a belief about
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`the truth of the allegations in Paragraph 5 and therefore denies the same.
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`Applicant applied to register the mark VYALEV for “pharmaceutical preparations
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`and substances for the treatment of viral, metabolic, endocrine, musculoskeletal, cardiovascular,
`cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic,
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`respiratory, neurological, gastrointestinal, hormonal, dermatological, psychiatric and immune
`system related diseases and disorders” in Class 5.
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`ANSWER: Admitted.
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`7.
`Upon information and belief, neither Applicant nor any predecessor or related
`company of Applicant has any basis for claiming rights in the VYALEV trademark before October
`3, 2019, the filing date of the Application opposed herein.
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`ANSWER: Denied.
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`8.
`Use of the VYALEV mark identified in the Application in connection with the
`goods stated therein is likely to cause confusion, mistake or deception as to the source of origin,
`sponsorship or approval of Applicant’s goods in that purchasers are likely to believe that
`Applicant’s goods are Opposer’s goods, or are in some way legitimately connected with, licensed
`or approved by Opposer.
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`ANSWER: Denied.
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`9.
`Use of the mark shown in the Application in connection with the goods stated
`therein is likely to dilute the distinctiveness of Opposer’s famous ALEVE trademark.
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`ANSWER: Denied.
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`Applicant’s use of the VYALEV mark shown in the Application is without
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`Opposer’s consent or permission.
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`ANSWER: Admitted that Opposer has not given Applicant consent or permission to use
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`the VYALEV mark shown in the Application, but denied that any such consent or permission is
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`needed.
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`APPLICANT’S DEFENSES
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`In further response to the Notice of Opposition, and as additional defenses thereto,
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`Applicant asserts the following affirmative defenses, without admitting any allegations of the
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`Notice of Opposition not otherwise admitted, and without assuming any burden when such
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`burden would otherwise be on Opposer. Applicant reserves the right to assert additional
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`defenses in the event that further discovery, investigation, or analysis indicates that they are
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`proper.
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`FIRST AFFIRMATIVE DEFENSE
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`Opposer will not sustain any damage, harm, loss, or detriment if Applicant’s mark is
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`registered.
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`SECOND AFFIRMATIVE DEFENSE
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`Opposer’s Notice fails to state a claim upon which relief can be granted because
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`Applicant’s mark does not so resemble Opposer’s mark as to be likely to cause confusion or to
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`cause mistake or to deceive.
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`WHEREFORE, Applicant prays that the Opposition be dismissed in its entirety, and that
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`Application Serial No. 88/640,320 proceed to registration.
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`Respectfully submitted,
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`Dated: April 20, 2020
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`By
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`_____
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`Brett M. Tolpin
`Mark R. Bagley
`Tolpin & Partners, PC
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`100 North LaSalle Street, Suite 501
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` Chicago, Illinois 60602
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`Telephone: (312) 698-8971
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`Fax: (312) 803-9602
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`E-mail: docket@tolpinlaw.com
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` Attorneys for Applicant AbbVie AB
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`CERTIFICATE OF SERVICE
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` hereby certify that a true and complete copy of the foregoing Answer is being served upon Phillip
`Barengolts via e-mail at pbarengolts@pattishall.com on this 20th day of April, 2020.
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`Brett M. Tolpin
`Tolpin & Partners, PC.
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`4
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