Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1197514
`
`Filing date:
`
`03/18/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91274418
`
`Party
`
`Correspondence
`address
`
`Defendant
`Utility Therapeutics Ltd
`
`JOHN PAUL OLEKSIUK
`COOLEY LLP
`1299 PENNSYLVANIA AVE., N.W., SUITE 700
`WASHINGTON, DC 20004-2004
`UNITED STATES
`Primary email: trademarks@cooley.com
`Secondary email(s): mmurphy@cooley.com
`202-842-7800
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer and Counterclaim
`
`Dina Roumiantseva
`
`droumiantseva@cooley.com
`
`/Dina Roumiantseva/
`
`03/18/2022
`
`Attachments
`
`Answer and Counterclaim Opp. No. 91274418.pdf(198492 bytes )
`
`Registration subject to the submission
`
`Registration no.
`
`6473605
`
`Registration date
`
`09/07/2021
`
`Register
`
`International re-
`gistration no.
`
`Registrant
`
`Principal
`
`NONE
`
`Novartis AG
`CH-4002 BASEL
`SWITZERLAND
`Email: keyster@teiplaw.com
`
`International re-
`gistration date
`
`NONE
`
`Goods/services subject to the submission
`
`Class 005. First Use: None First Use In Commerce: None
`All goods and services in the class are requested, namely: Anti-infectives; anti-inflammatories; anti-
`bacterial pharmaceuticals; antibiotics; antifungal preparations; antivirals; cardiovascular pharmaceut-
`icals; dermatological pharmaceutical preparations; inhaled pharmaceutical preparations for the pre-
`vention and treatment of respiratory diseases and disorders; pharmaceutical preparations acting on
`the central nervous system; pharmaceutical preparations and substances for the prevention and
`treatment of gastro-intestinal diseases; pharmaceutical preparations for the prevention and treatment
`of diseases and disorders of the autoimmune system, the metabolic system, the endocrine system,
`the musculo-skeletal system and the genitourinary system; pharmaceutical preparations for use in
`hematology and in tissue and organ transplantation; pharmaceutical preparations for the prevention
`and treatment of eye diseases and conditions; pharmaceutical preparations for the prevention and
`treatment of heart rhythm disorders; pharmaceutical preparations for the prevention and treatment of
`immune system related diseases and disorders; pharmaceutical preparations for the preventionand
`treatment of kidney diseases; pharmaceutical preparations for the prevention and treatment of dia-
`betes; pharmaceutical preparations for the prevention and treatment of hypertension; pharmaceutical
`preparations for the prevention and treatment of skin disorders; pharmaceutical preparations for use
`in dermatology; pharmaceutical preparations for use in urology; pharmaceutical preparations for use
`in ophthalmology; pharmaceutical preparations for the prevention and treatment of cancer and tu-
`
`

`

`mors; pharmaceutical preparations for the prevention and treatment of allergies; pharmaceutical pre-
`parations for the prevention and treatment of bone diseases; pharmaceutical preparations for the pre-
`vention and treatment of respiratory diseases and asthma
`
`Grounds for cancellation
`
`Other
`
`Registrant did not have bona fide intent to use
`the mark in connection with the applied-for goods
`at the time of application.
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposer,
`
`
`In the matter of application Serial No. 90/531,880
`
`)
`NOVARTIS AG,
`)
`
`)
`
`)
`
`)
`
`)
`
`)
`UTILITY THERAPEUTICS LTD,
`)
`
`)
`Applicant.
`
`__________________________________________)
`
`
`v.
`
`Opposition No. 91274418
`
`ANSWER TO NOTICE OF OPPOSITION AND COUNTERCLAIM
`
`
`
`
`
`Applicant Utility Therapeutics Ltd. (“Applicant”) hereby answers the Notice of
`
`Opposition filed by Novartis AG (“Opposer”) against Applicant’s pending trademark application
`
`Serial No. 90/531,880 to register the mark PIVYA (“Applicant’s Mark”) as follows.
`
`
`
`Answering the preamble of the Notice, Applicant denies that Opposer will be damaged
`
`by the registration of the PIVYA mark. Applicant lacks knowledge or information sufficient to
`
`form a belief as to the truth of the remaining allegations in the preamble of the Notice, and on
`
`that basis denies the same.
`
`1.
`
`Applicant admits that it filed Application Serial No. 90/531,880 on or about
`
`February 17, 2021, to register the mark PIVYA in connection with “Pharmaceutical preparations,
`
`namely, antibiotics for the treatment of urinary tract infections” in International Class 5.
`
`2.
`
`3.
`
`Denied.
`
`Applicant admits that the records of the United States Patent and Trademark
`
`Office (“USPTO”) identify Opposer as the owner of Registration No. 6,473,605 (“Opposer’s
`
`
`
`

`

`
`
`Registration”) filed December 1, 2020 and registered September 7, 2021, for the mark PAIVUA
`
`(“Opposer’s Mark”) in connection with:
`
`antibiotics;
`antibacterial pharmaceuticals;
`anti-inflammatories;
`“Anti-infectives;
`antifungal preparations; antivirals; cardiovascular pharmaceuticals; dermatological
`pharmaceutical preparations; inhaled pharmaceutical preparations for the prevention and
`treatment of respiratory diseases and disorders; pharmaceutical preparations acting on the
`central nervous system; pharmaceutical preparations and substances for the prevention
`and
`treatment of gastro-intestinal diseases; pharmaceutical preparations for
`the
`prevention and treatment of diseases and disorders of the autoimmune system, the
`metabolic system,
`the endocrine system,
`the musculo-skeletal system and
`the
`genitourinary system; pharmaceutical preparations for use in hematology and in tissue
`and organ transplantation; pharmaceutical preparations for the prevention and treatment
`of eye diseases and conditions; pharmaceutical preparations for the prevention and
`treatment of heart rhythm disorders; pharmaceutical preparations for the prevention and
`treatment of immune system related diseases and disorders; pharmaceutical preparations
`for the prevention and treatment of kidney diseases; pharmaceutical preparations for the
`prevention and treatment of diabetes; pharmaceutical preparations for the prevention and
`treatment of hypertension; pharmaceutical preparations for the prevention and treatment
`of skin disorders; pharmaceutical preparations for use in dermatology; pharmaceutical
`preparations for use in urology; pharmaceutical preparations for use in ophthalmology;
`pharmaceutical preparations for the prevention and treatment of cancer and tumors;
`pharmaceutical preparations for the prevention and treatment of allergies; pharmaceutical
`preparations for the prevention and treatment of bone diseases; pharmaceutical
`preparations for the prevention and treatment of respiratory diseases and asthma”
`
`in International Class 5. Applicant lacks knowledge or information sufficient to form a belief as
`
`to the truth of the remaining allegations in Paragraph 3 and on that basis denies the same.
`
`4.
`
`Applicant admits that the application that matured into Opposer’s Registration,
`
`Application Serial No. 79/304,721, was filed on the basis of Section 66(a) of the Lanham Act
`
`and its USPTO record indicates a “Date of Section 67 Priority Claim” of November 27, 2020.
`
`Applicant lacks knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations in Paragraph 4 and on that basis denies the same.
`
`5.
`
`Denied.
`
`
`
`
`
`2
`
`
`
`

`

`
`
`AFFIRMATIVE DEFENSES
`
`
`
`In asserting the following affirmative defenses, Applicant does not concede that it has the
`
`burden of proof as to each separate defense.
`
`1.
`
`2.
`
`3.
`
`Opposer fails to state a claim upon which relief can be granted.
`
`Opposer’s claim is barred by the doctrine of unclean hands.
`
`Upon information and belief, Opposer’s Registration is void on the ground that
`
`Opposer did not have a bona fide intent to use Opposer’s Mark in United States commerce in
`
`connection with the identified goods at the time of filing of the underlying application pursuant
`
`to Section 66(a) of the Lanham Act, 15 U.S.C. § 1141f (a); 37 CFR § 2.33(e).
`
`
`
`Applicant bases its affirmative defenses on the knowledge and information currently
`
`available to it, including but not limited to those facts pled in the Counterclaim below, as well as
`
`the contents of the public files for the Opposer’s Registration. Applicant reserves its right to
`
`assert additional affirmative defenses in the event that further discovery or investigation indicates
`
`such defenses are appropriate.
`
`WHEREFORE, Applicant requests that the Notice of Opposition be dismissed in its
`
`entirety.
`
`COUNTERCLAIM FOR CANCELLATION OF
`U.S. REGISTRATION NO. 6,473,605
`BASED ON LACK OF BONA FIDE INTENT TO USE MARK IN COMMERCE
`
`Applicant alleges the following in support of its counterclaim for cancellation of U.S.
`
`Registration No. 6,473,605 on the grounds of lack of bona fide intent to use mark in commerce:
`
`1.
`
`Applicant Utility Therapeutics Ltd. is a United Kingdom private limited company,
`
`having its principal place of business at 3rd Floor, 1 Ashley Road, Altrincham, Cheshire UK
`
`WA142DT.
`
`
`
`3
`
`

`

`
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`2.
`
`Upon information and belief, Registrant Novartis AG
`
`is a Switzerland
`
`Aktiengesellschaft (AG) with offices at CH-4002 Basel, SWITZERLAND.
`
`3.
`
`Upon information and belief, on or about December 1, 2020, Registrant filed a
`
`request for extension of protection, seeking to extend Swiss Trademark No. 755843 to the United
`
`States. The request was assigned USPTO application Serial No. 79/304,721, and it matured into
`
`Registration No. 6,473,605 for the trademark PAIVUA (“Registrant’s Mark”) on the basis of
`
`Section 66(a) of the Lanham Act in connection with:
`
`antibiotics;
`antibacterial pharmaceuticals;
`anti-inflammatories;
`“Anti-infectives;
`antifungal preparations; antivirals; cardiovascular pharmaceuticals; dermatological
`pharmaceutical preparations; inhaled pharmaceutical preparations for the prevention and
`treatment of respiratory diseases and disorders; pharmaceutical preparations acting on the
`central nervous system; pharmaceutical preparations and substances for the prevention
`and
`treatment of gastro-intestinal diseases; pharmaceutical preparations for
`the
`prevention and treatment of diseases and disorders of the autoimmune system, the
`metabolic system,
`the endocrine system,
`the musculo-skeletal system and
`the
`genitourinary system; pharmaceutical preparations for use in hematology and in tissue
`and organ transplantation; pharmaceutical preparations for the prevention and treatment
`of eye diseases and conditions; pharmaceutical preparations for the prevention and
`treatment of heart rhythm disorders; pharmaceutical preparations for the prevention and
`treatment of immune system related diseases and disorders; pharmaceutical preparations
`for the prevention and treatment of kidney diseases; pharmaceutical preparations for the
`prevention and treatment of diabetes; pharmaceutical preparations for the prevention and
`treatment of hypertension; pharmaceutical preparations for the prevention and treatment
`of skin disorders; pharmaceutical preparations for use in dermatology; pharmaceutical
`preparations for use in urology; pharmaceutical preparations for use in ophthalmology;
`pharmaceutical preparations for the prevention and treatment of cancer and tumors;
`pharmaceutical preparations for the prevention and treatment of allergies; pharmaceutical
`preparations for the prevention and treatment of bone diseases; pharmaceutical
`preparations for the prevention and treatment of respiratory diseases and asthma”
`
`(“Registrant’s Claimed Goods”) in International Class 5.
`
`4.
`
`Section 66(a) of the Lanham Act requires that a request for extension of
`
`protection of an international registration to the United States shall be deemed to be properly
`
`filed in the United States if such request, when received by the International Bureau, has attached
`
`to it a verified statement alleging, among other things, that the applicant/holder has a bona fide
`
`
`
`4
`
`

`

`
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`intention to use the mark in commerce that the U.S. Congress can regulate on or in connection
`
`with the goods or services specified in the international application/subsequent designation. 15
`
`U.S.C. § 1141f (a); 37 CFR § 2.33(e).
`
`5.
`
`Upon information and belief, at the time of the application, Registrant did not
`
`have bona fide intention to use Registrant’s Mark in United States commerce in connection with
`
`the applied-for goods.
`
`6.
`
`Professor McCarthy explains in his seminal treatise that when the Trademark Law
`
`Revision Act of 1988 first provided for intent-based filings, the accompanying Senate Report1
`
`gave “an illustrative list of circumstances that ‘may case doubt on the bona fide nature of the
`
`intent or even disprove it entirely[,]” an excerpt of which is provided here:
`
`a. “One Mark—Many Products: The filing of numerous ITU applications for
`
`the same mark for many more new products than are seriously intended”
`
`b. “One Product—Many Marks: Numerous ITU applications for a variety of
`
`marks to be used on one new product”
`
`c. “Many Re-filings: Numerous ITU applications to replace application
`
`which have lapsed because no timely statement of use was filed”
`
`d. “Many Marks—Many Products: An ‘excessive number’ of ITU
`
`applications in relation to the number of products the applicant is likely to
`
`introduce during the statutory period under the applied for marks”
`
`e. “Vague Description of Goods or Services: Application unreasonably
`
`lacking in specificity in describing the proposed goods.”2
`
`
`1 Senate Judiciary Committee Report on S. 1883, S. Rep. No. 100-515, pp. 23-24 (Sept. 15, 1988).
`2 3 McCarthy on Trademarks and Unfair Competition § 19:14 (5th ed.)
`
`
`
`5
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`

`

`
`
`7.
`
`One Mark—Many Products. Registrant’s Claimed Goods include a laundry list
`
`of pharmaceutical preparations and treatments for the same mark for many more new products
`
`than are seriously intended, for the following reasons:
`
`a. In the United States, pharmaceuticals are regulated by the Food and Drug
`
`Administration, which approves a pharmaceutical for commercial
`
`distribution only for a specific indication for use that is substantiated by
`
`the applicant’s integrated summary of effectiveness for each claimed
`
`indication. 21 U.S.C. § 355(a); 21 CFR 314.50(d)(5)(v). This specific use
`
`is made part of the product’s label, which must convey in a concise
`
`manner “that the drug is indicated for the treatment, prevention,
`
`mitigation, cure, or diagnosis of a recognized disease or condition, or of a
`
`manifestation of a recognized disease or condition, or for the relief of
`
`symptoms associated with a recognized disease or condition.” 21 CFR
`
`201.57(c)(2).
`
`b. Given
`
`the robust clinical study and
`
`labelling requirements for
`
`pharmaceutical preparations, and the extremely complex and dissimilar
`
`nature of the medical conditions and systems of the human body listed in
`
`Registrant’s Claimed Goods, it is simply not plausible that Registrant had
`
`a bona fide intention to use Registrant’s Mark in commerce with each and
`
`every specific use included in Registrant’s Claimed Goods. A single drug
`
`name would not be used to overlap such disparate medical conditions and
`
`be applicable to so many systems of the human body.
`
`
`
`6
`
`

`

`
`
`c. For example, what is used for the prevention and treatment of diabetes is
`
`not the same class or type of medication used for the prevention and
`
`treatment of respiratory diseases because they work on different biological
`
`systems of the body (e.g. endocrine vs. respiratory) and in different ways
`
`(e.g. protecting or increasing performance of the pancreas vs. protecting
`
`and increasing lung performance).
`
`d. In this case, Registrant has claimed that it intends a single drug name will
`
`be used for the treatment of at least five different systems and the
`
`prevention and treatment of twelve different medical conditions, namely:
`
`the autoimmune system;
`
`the metabolic system;
`
`the endocrine system;
`
`the musculo-skeletal system;
`
`genitourinary system;
`
`respiratory diseases and disorders;
`
`gastro-intestinal diseases;
`
`hematology and in tissue and organ transplantation;
`
`eye diseases and conditions;
`
`heart rhythm disorders;
`
`kidney diseases;
`
`diabetes;
`
`hypertension;
`
`skin disorders;
`
`
`
`7
`
`

`

`
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`cancer and tumors;
`
`allergies;
`
`bone diseases;
`
`Even at first glance, it is clear that many of these conditions would require
`
`different targeted therapies and that no single drug could be responsible
`
`for the prevention and treatment of all of these conditions, all of which
`
`have different root causes.
`
`e. In addition, Registrant has also claimed that the identical name would be
`
`used for antibiotics, antifungals and antivirals, which are not used for the
`
`prevention of the conditions listed above. Thus, the list of goods is self-
`
`contradictory.
`
`f. Furthermore, because of the FDA’s naming convention process and the
`
`very different and targeted needs of patients with chronic conditions,
`
`consumers would simply not expect the identical name to be used for the
`
`prevention and treatment of completely unrelated conditions. This is
`
`because the needs of these conditions, especially life-long chronic
`
`conditions, are targeted and specialized.
`
`8.
`
`One Product—Many Marks. A search of the USPTO’s Trademark Electronic
`
`Search Systems (TESS) Registrant is the owner of over 5,000 trademark filings at the USPTO.
`
`By way of example only, the following recent trademark applications filed by Registrant include
`
`intent-to-use applications for the identical list or substantially the same list of goods in
`
`Registrant’s Claimed Goods:
`
`a. U.S. Application 97253726 filed February 4, 2022 for PRESCIDO
`
`
`
`8
`
`

`

`
`
`b. U.S. Application 97194842 filed December 29, 2021 for FLEXYDO
`
`c. U.S. Application 97194839 filed December 29, 2021 for FLEXIDO
`
`d. U.S. Application 97090507 filed October 25, 2021 for RAEDYONT
`
`e. U.S. Application 90708338 filed May 13, 2021 for RHAPSYDO
`
`f. U.S. Application 90708335 filed May 13, 2021 for RAPSYDO
`
`g. U.S. Application 90708333 filed March 13, 2021 for RAPSIDO
`
`h. U.S. Application 90492029 filed January 28, 2021 for ZORDOBA
`
`i. U.S. Application 90771714 filed June 14, 2021 for SPEERSTA
`
`9.
`
`Many Re-filings. For example, Registrant filed Application No. 88115403 for
`
`PRESCIDO, which included all of Registrant’s Claimed Goods, on September 13, 2018, only to
`
`abandon that application on March 7, 2022 because no timely statement of use was filed.
`
`Registrant refiled U.S. Application 97253726 filed February 4, 2022 for PRESCIDO in
`
`connection with Registrant’s Claimed Goods – the same goods that are in the PAIVUA
`
`registration that is the basis for the present opposition.
`
`10. Many Marks—Many Products. Registrant’s track record described above
`
`indicates an excessive number of intent-based applications in relation to the number of products
`
`it is likely to introduce under its pending and registered marks.
`
`11.
`
`Vague Description of Goods or Services. By including such a wide range of
`
`disparate indications in Registrant’s Claimed Goods, Registrant unreasonably lacks specificity in
`
`describing its goods.
`
`12.
`
`As explained herein, each of these circumstances indicates that Registrant does
`
`not have, and did not have at the time of filing, a bona fide intent to use Registrant’s Mark for all
`
`of Registrant’s Claimed Goods.
`
`
`
`9
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`

`

`
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`13.
`
`Upon information and belief, Registrant is a sophisticated trademark owner that
`
`has been, at all relevant time periods, fully aware of the significance the representations made to
`
`the USPTO in connection with Application Serial No. 79/304,721.
`
`14. While Registrant is permitted to file more than one proposed mark for a product,
`
`“it is equally clear that Congress intended ‘bona fide’ and ‘good faith’ to act as a filter to bar the
`
`filing of application for ‘numerous’ or an ‘excessive number’ of marks or the ‘stockpiling’ of
`
`marks” when it enacted the Trademark Law Revision Act of 1988.3 As set forth above,
`
`Registrant does file an excessive number of applications as it engages in “stockpiling” of
`
`trademarks.
`
`15.
`
`Registrant’s conduct is part of a larger ongoing problem that has received
`
`renewed attention of the U.S. Congress and motivated the passage of the Trademark
`
`Modernization Act of 2020. In providing the background and need for the new legislation,
`
`Congress identified “Threats to the Proper Functioning of the Trademark Registration System.”
`
`H.R. Rep. No. 116-645 (2020).4 Among these threats, the “cluttering” of the register with marks
`
`that are not used in commerce has created a trademark “depletion problem.” See id. “[A]s
`
`depletion worsens, entrants face higher costs than incumbents had faced earlier in locating or
`
`devising a mark that is not confusingly similar with already registered marks and that is
`
`competitively effective.” Id. (citations omitted). In this case, Registrant’s marks lack even a
`
`bona fide intent to use the mark in commerce with the relevant goods – making the cluttering and
`
`depletion caused by Registrant’s activities particularly harmful to Applicant and to others who
`
`are similarly situated to Applicant.
`
`
`3 3 McCarthy on Trademarks and Unfair Competition § 19:17 (5th ed.)
`4 https://www.congress.gov/congressional-report/116th-congress/house-report/645.
`
`
`
`10
`
`

`

`
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`16.
`
`A fair, objective determination of Registrant’s
`
`intent based on all the
`
`circumstances indicates that Registrant did not have bona fide intention to offer a pharmaceutical
`
`preparation with the listed indications at the time of the application that resulted in Registration
`
`No. 6,473,605.
`
`17.
`
`Accordingly, Registration No. 6,473,605 is void and should be cancelled in its
`
`entirety.
`
`18.
`
`As Registrant is relying upon Registration No. 6,473,605 as a basis to oppose
`
`Applicant’s U.S. trademark application for the mark PIVYA, and for the other reasons identified
`
`above, Registration No. 6,473,605 is causing damage and injury to Applicant.
`
`WHEREFORE, Applicant requests that this Counterclaim for Cancellation be sustained
`
`and Registration No. 6,473,605 be cancelled.
`
`
`
`
`
`Date: March 18, 2022
`
`
`
`
`
`
`
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`
`
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`11
`
`COOLEY LLP
`
`
`
`
`
`
`
`
`
`
`
`/John Paul Oleksiuk/
`John Paul Oleksiuk
`Dina Roumiantseva
`COOLEY LLP
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, D.C. 20004
`Tel: (202) 4790-6000
`Email: jpo@cooley.com
`droumiantseva@cooley.com
`
`Counsel for Applicant
`
`
`
`
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing ANSWER TO NOTICE
`
`OF OPPOSITION AND COUNTERCLAIM was transmitted via e-mail to Opposer’s counsel
`
`of record at the following address:
`
`
`
`MAURY M. TEPPER, III
`TEPPER & EYSTER, PLLC
`3724 BENSON DR
`RALEIGH, NC 27609
`UNITED STATES
`mtepper@teiplaw.com, athompson@teiplaw.com
`
`
`Date: March 18, 2022
`
`
`
`
`
`
`
`
`/Dina Roumiantseva/
`Dina Roumiantseva
`
`
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`12
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