Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1074342
`08/12/2020
`
`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
`Entity
`Address
`
`Sanofi
`Corporation
`54, RUE LA BOéTIE
`PARIS, 75008
`FRANCE
`
`Citizenship
`
`France
`
`Attorney informa-
`tion
`
`RICHARD LEHV
`FROSS ZELNICK LEHMRAN & ZISSU, P.C.
`151 WEST 42ND STREET 17TH FLOOR
`17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: rlehv@fzlz.com
`Secondary Email(s): klim@fzlz.com, cliu@fzlz.com, tmonaco@fzlz.com
`2128135928
`
`Docket Number
`
`SYN 2007893
`
`Applicant Information
`
`Application No.
`Opposition Filing
`Date
`Applicant
`
`88698496
`08/12/2020
`
`Publication date
`Opposition Peri-
`od Ends
`
`07/14/2020
`08/13/2020
`
`KIM, AN SOON
`(SHINWOL-DONG)
`11, NAMBUSUNHWAN-RO 31-GIL, YANGCHEON-GU
`SEOUL, 07904
`REPUBLIC OF KOREA
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Non-medicated toiletry preparations; Cos-
`metics; Tissues impregnated with cosmetic lotions; Essential oils; Patches containing sun screen and
`sun block for use on the skin; Perfumes; Make-up removing preparations; Nail polish; Body wash
`forhumans; Mask pack for cosmetic purposes
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Transdermal skin patches for the trans-
`dermal delivery of pharmaceuticals for the treatment of rosacea, melasma, acne, skin dryness, rash,
`cellulite, telangiectasia, aging skin, wrinkles, hyperpigmentation, freckles, puffy eyes, scaly
`skin,couperose, psoriasis, dermatoses, dermatitis, dermatophytosis, ichthyosos, candidiasis, onycho-
`mycosis, tinea, tinea unguium, basal cell carcinoma, squamous cell carcinoma, actinic keratosis,
`warts, scars, keloids, pimples and saborrheic dermatitis; Adhesive skin patches for medical use for
`the treatment of rosacea, melasma, acne, skin dryness, rash, cellulite, telangiectasia, aging skin,
`
`

`

`wrinkles, hyperpigmentation, freckles, puffy eyes, scaly skin, couperose, psoriasis, dermatoses,
`dermatitis, dermatitis, dermatophytosis, ichthyosos, candidiasis, onychomycosis, tinea, tinea ungui-
`um, basal cell carcinoma, squamous cell carcinoma, actinic keratosis, warts, scars, keloids,pimples
`and saborrheic dermatitis; Medicated skin care preparations; Impregnated medicated skin pads for
`the treatment of acne; Bandages for skin wounds; Medicated skin patches impregnated with hydro-
`colloid for acne treatment; Acne treatment preparations; Adhesive plasters for medical purposes;
`Corn pad; Adhesive bandages for skin wounds
`
`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)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`4178199
`
`07/24/2012
`
`Application Date
`
`08/12/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SANOFI
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`[ non-medicated skin care preparations;cosmetics; skin soaps and skin
`cleansers ]
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`house mark for a full line of pharmaceuticals [ ; full line of veterinary preparation
`for medical use ]
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`[ computer software for database management in the field of pharmaceutical
`and medical developments; CD-ROMs featuring health care information; medic-
`al imagingsoftware; software downloadable via theinternet or mobile phone ap-
`plications for monitoring and tracking blood glucoselevels ]
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`[ blood glucose monitors, lancets and control solutions; insulin injectors sol-
`dempty; asthma inhalers for medical and therapeutic use sold empty; diagnostic
`apparatus for medical purposes; radiological apparatus for medical purposes,
`radiological screens for medical purposes; surgical and medical apparatus and
`instruments in the field of ophthalmology and eye care; artificial eyes; suture ma-
`terials ]
`Class 016. First use: First Use: 0 First Use In Commerce: 0
`printed matter, namely, newsletters, [ magazines, ] journals, periodicals, pamph-
`lets, [ books and posters, ] all related to health matters
`Class 035. First use: First Use: 2011/05/06 First Use In Commerce: 2011/05/06
`[ business development and marketing services in the field of health care; or-
`ganizing sales promotions and consulting in the field of sales promotions for the
`pharmaceutical industry ]
`Class 041. First use: First Use: 0 First Use In Commerce: 0
`educational services, namely, providingconferences, seminars and workshops in
`the field of health care and pharmaceutical developments; [ publishing
`
`

`

`magazines, books, guides and databases in the field of medicine and pharma-
`ceuticals; ] on-line journals, namely, blogs in the field of health care
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`medical and scientific research, namely, conducting clinical trials; providing
`medical research and scientific researchinformation in the field of pharmaceutic-
`als
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`providing medical information
`
`Attachments
`
`FANOFI Notice of Opposition.pdf(106816 bytes )
`
`Signature
`Name
`Date
`
`/Richard Lehv/
`RICHARD LEHV
`08/12/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer's Ref: SYN 2007893
`
`
`
`
`
`
`In the Matter of Application Serial No. 88698496
`Mark: FANOFI
`---------------------------------------------------------------x
`Sanofi,
`
`:
`
`:
` Opposer,
`:
`
`: Opposition No. ________
` - against -
`:
`
`:
`An Soon Kim,
`
`:
`
`:
` Applicant.
`:
`
`:
`---------------------------------------------------------------x
`
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer, Sanofi, a limited liability company (société aononyme), organized and existing
`
`under the laws of France, having a principal place of business at 54, rue La Boétie, 75008 Paris,
`
`France, believes that it would be damaged by the issuance of a registration for the trademark
`
`FANOFI, as applied for in Application Serial No. 88698496, and therefore opposes the same. As
`
`grounds for its opposition, Opposer, by its attorneys, Fross Zelnick Lehrman & Zissu, P.C.,
`
`alleges as follows:
`
`1.
`
`Opposer, Sanofi, is a leading pharmaceutical company, offering a range of
`
`pharmaceuticals, both prescription and over-the-counter.
`
`2.
`
`Opposer owns the following United States trademark and service mark
`
`registration for SANOFI:
`
`TM/AN/RN
`
`Status/Key
`Dates
`
`Full Goods/Services
`
`SANOFI
`
`Registered July
`
`(Int'l Class: 05)
`
`{F2919637.2 }
`
`

`

`TM/AN/RN
`
`RN: 4178199
`SN: 85396658
`
`
`Status/Key
`Dates
`
`24, 2012
`Int'l Class: 35
`First Use: May
`6, 2011
`Filed: August
`12, 2011
`
`
`
`Full Goods/Services
`
`house mark for a full line of pharmaceuticals
`(Int'l Class: 16)
`printed matter, namely, newsletters, journals, periodicals,
`pamphlets, all related to health matters
`(Int'l Class: 41)
`educational services, namely, providing conferences, seminars
`and workshops in the field of health care and pharmaceutical
`developments; on-line journals, namely, blogs in the field of
`health care
`(Int'l Class: 42)
`medical and scientific research, namely, conducting clinical
`trials; providing medical research and scientific research
`information in the field of pharmaceuticals
`(Int'l Class: 44)
`providing medical information
`
`
`
`The registration is valid, subsisting and in full force and effect and constitutes prima facie
`
`evidence of Opposer’s ownership of and exclusive rights in the registered mark. A declaration of
`
`incontestability under Section 15 of the Lanham Act, 15 U.S.C. § 1065, has been filed and
`
`accepted.
`
`3.
`
`Opposer has used the trade name, trademark and service mark SANOFI in
`
`connection with pharmaceuticals since long prior to any date on which Applicant may rely. As a
`
`result of its use, the SANOFI name and mark are associated exclusively with Opposer and
`
`Opposer’s products and pharmaceutical business.
`
`4.
`
`5.
`
`The SANOFI name and mark well known and recognized.
`
`In view of the foregoing, Opposer is the owner of statutory and common law
`
`rights in the SANOFI name and mark in the United States and as such has standing to bring this
`
`opposition action.
`
`6.
`
`On information and belief, Applicant, An Soon Kim, is a Korean individual, with
`
`an address in Seoul, Republic of Korea.
`
`

`

`7.
`
`On November 19, 2019, Applicant filed an intent-to-use application for the mark
`
`FANOFI in Class 3 for “Non-medicated toiletry preparations; Cosmetics; Tissues impregnated
`
`with cosmetic lotions; Essential oils; Patches containing sun screen and sun block for use on the
`
`skin; Perfumes; Make-up removing preparations; Nail polish; Body wash for humans; Mask pack
`
`for cosmetic purposes” and in Class 5 for “Transdermal skin patches for the transdermal delivery
`
`of pharmaceuticals for the treatment of rosacea, melasma, acne, skin dryness, rash, cellulite,
`
`telangiectasia, aging skin, wrinkles, hyperpigmentation, freckles, puffy eyes, scaly skin,
`
`couperose, psoriasis, dermatoses, dermatitis, dermatophytosis, ichthyosos, candidiasis,
`
`onychomycosis, tinea, tinea unguium, basal cell carcinoma, squamous cell carcinoma, actinic
`
`keratosis, warts, scars, keloids, pimples and saborrheic dermatitis; Adhesive skin patches for
`
`medical use for the treatment of rosacea, melasma, acne, skin dryness, rash, cellulite,
`
`telangiectasia, aging skin, wrinkles, hyperpigmentation, freckles, puffy eyes, scaly skin,
`
`couperose, psoriasis, dermatoses, dermatitis, dermatitis, dermatophytosis, ichthyosos,
`
`candidiasis, onychomycosis, tinea, tinea unguium, basal cell carcinoma, squamous cell
`
`carcinoma, actinic keratosis, warts, scars, keloids, pimples and saborrheic dermatitis; Medicated
`
`skin care preparations; Impregnated medicated skin pads for the treatment of acne; Bandages for
`
`skin wounds; Medicated skin patches impregnated with hydrocolloid for acne treatment; Acne
`
`treatment preparations; Adhesive plasters for medical purposes; Corn pad; Adhesive bandages
`
`for skin wounds.” This application was assigned Serial. No. 88698496.
`
`8.
`
`The filing date of Applicant’s application, November 19, 2019, is long subsequent
`
`to the date of first use of Opposer’s SANOFI name and mark and the issuance of Opposer’s
`
`SANOFI registration. Accordingly, Opposer has established priority.
`
`9.
`
`As a matter of law, as a result of Opposer’s SANOFI registration, which predates
`
`any date upon which Applicant may rely, Applicant had constructive notice of Opposer’s
`
`

`

`exclusive and prior rights in the SANOFI mark prior to adopting its mark or filing the opposed
`
`application.
`
`10.
`
`There is no relationship between the parties, and Applicant is not affiliated with
`
`Opposer nor has Applicant obtained any permission or authorization to use the mark at issue.
`
`FIRST CLAIM FOR RELIEF UNDER SECTION 2(d)
`
`11.
`
`Opposer repeats and realleges the allegations contained in Paragraphs 1 through
`
`10 as if fully set forth herein.
`
`12.
`
` The mark Applicant seeks to register, FANOFI, is highly similar in sound,
`
`appearance and commercial impression to Opposer's SANOFI name and mark, and will be used
`
`on goods that are identical or closely related to the goods and services for which Opposer uses
`
`and has registered the mark SANOFI.
`
`13.
`
`Applicant’s application is unrestricted as to trade channels or consumers.
`
`Therefore, the goods and services are presumed to be sold to all consumers and through all
`
`customary trade channels for such goods and services. Since the goods and services of the
`
`parties are identical or closely related, as a matter of law their trade channels and consumers are
`
`the same.
`
`14.
`
`Based on the similarities of the marks and goods and services, the public is likely
`
`to falsely associate the goods and services intended to be sold by Applicant under the FANOFI
`
`mark with Opposer or with Opposer's SANOFI goods and services, or to falsely believe that
`
`Applicant's goods and services are sponsored, endorsed or licensed by Opposer, or that there is
`
`some relationship between Applicant and Opposer.
`
`15.
`
`For the above reasons, any use of the mark FANOFI by Applicant is likely to
`
`cause confusion, cause mistake or deceive the public, and cause the public to believe that the
`
`

`

`goods and services sold under the mark FANOFI emanate from or are otherwise sponsored by or
`
`endorsed by Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`16.
`
`By reason of the foregoing, Opposer will be damaged by the registration of the
`
`mark FANOFI to Applicant.
`
`SECOND CLAIM FOR RELIEF UNDER SECTION 2(a)
`
`17.
`
`Opposer repeats and realleges the allegations contained in Paragraphs 1 through
`
`10 as if fully set forth herein.
`
`18.
`
`The name SANOFI has been used as a business name by Opposer for many years
`
`and has come to designate uniquely and unmistakably Opposer and its business. Such use is
`
`prior to any claim of rights by Applicant.
`
`19.
`
`The FANOFI mark sought to be registered is a close approximation of the
`
`SANOFI trade name and trade identity previously used by Opposer. Thus, consumers are likely
`
`to assume that FANOFI and SANOFI are the same; the minor differences will not be readily
`
`perceived by consumers.
`
`20.
`
`Opposer has no connection with Applicant or its business.
`
`21.
`
`Opposer’s SANOFI trade name and trade identity is well known and has a strong
`
`reputation in connection with pharmaceuticals that are related to the Class 5 goods and Class 35
`
`services identified in the opposed application. As a result, a connection with Opposer trading
`
`under the name SANOFI would be presumed when Applicant’s mark is used on Applicant’s
`
`goods and services as identified in the opposed application.
`
`22.
`
`The adoption of the mark FANOFI falsely suggests a connection with Opposer
`
`and will cause consumers to make false connections between the goods and services offered by
`
`Applicant under the FANOFI mark and Opposer.
`
`

`

`23.
`
`Because the SANOFI name is associated with Opposer, and given that the use of
`
`the FANOFI mark will falsely suggest a connection between Opposer and Applicant and that
`
`consumers would likely presume a connection with Opposer, registration of the FANOFI mark
`
`violates Section 2(a) of the Lanham Act, 15 U.S.C. § 1025(a).
`
`24.
`
`By reason of the foregoing, Opposer is likely to be harmed by registration of the
`
`mark FANOFI to Applicant.
`
`
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`the registration sought by Application Serial No. 88698496 be denied.
`
`Dated:
`
`
`
`New York, New York
`August 12, 2020
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`FROSS ZELNICK LEHRMAN
` & ZISSU, P.C.
`
`
`By: __/Richard Lehv/______________
`Richard Lehv
`Attorneys for Opposer
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`(212) 813-5900
`
`