Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1208882
`05/13/2022
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`ESTTA Tracking number:
`
`Filing date:
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`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
`
`Coloplast A/S
`
`05/15/2022
`
`HOLTEDAM 1
`HUMLEBAEK, DK-3050
`DENMARK
`
`SIMOR L. MOSKOWITZ
`WESTERMAN, HATTORI, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`UNITED STATES
`Primary email: smoskowitz@whda.com
`Secondary email(s): tjeffery@whda.com, trademarkmail@whda.com
`703-827-3800
`
`Docket no.
`
`OT210009US00
`
`Applicant information
`
`Application no.
`
`90573147
`
`Opposition filing
`date
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`Applicant
`
`05/13/2022
`
`Publication date
`
`11/16/2021
`
`Opposition period
`ends
`
`05/15/2022
`
`Titan Medical Inc.
`750-155 UNIVERSITY AVE.
`TORONTO, ONTARIO, M5H3B7
`CANADA
`
`Goods/services affected by opposition
`
`Class 010. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Computer-assisted surgical apparatus kit
`primarily comprised of a surgical workstation comprised of a robotic control device and surgical
`devices and instruments, surgeon's workstation, electrical video display monitors, input control-
`lers,and surgical patient cart; Computer-assisted surgical device and apparatus, in particular endo-
`scopic cameras for medical use, surgical instruments, electrosurgical instruments, and surgical
`products in the nature of surgical drapes
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`

`

`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`2872319
`
`Register
`
`Principal
`
`Registration date
`
`08/10/2004
`
`Word mark
`
`Design mark
`
`TITAN
`
`Application date
`
`08/28/2002
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 010. First use: First Use: Sep 11, 2002 First Use In Commerce: Sep 11,
`2002
`Medical devices, namely penile prostheses
`
`Attachments
`
`76444451#TMSN.png( bytes )
`Titan Medical Notice of Opposition.pdf(85354 bytes )
`TITAN Reg. No. 2872319.pdf(12311 bytes )
`TITAN 2872319 TSDR screenshot.pdf(147612 bytes )
`
`Signature
`
`/Simor L. Moskowitz/
`
`Name
`
`Date
`
`SIMOR L. MOSKOWITZ
`
`05/13/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
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`COLOPLAST A/S,
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`vs.
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`Titan Medical Inc.,
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`Opposer,
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`Opposition No.:
`Ser. No. 90/573,147
`
`Mark:
`
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`Applicant.
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`In the matter of an application to register a trademark under the Trademark Act of
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`1946, Serial No. 90/573,147 for the above-referenced mark, filed March 11, 2021, in the
`name of Titan Medical Inc. (hereinafter “Applicant”), published for opposition in the
`Trademark Official Gazette of November 16, 2021, the Opposer, Coloplast A/S,
`believes it may be damaged by registration of said alleged trademark and hereby
`opposes same. The grounds for opposition are as follows:
`
`
`NOTICE OF OPPOSITION
`
`The Opposer Coloplast A/S (hereinafter “Coloplast” or “Opposer”), is a
`1.
`Denmark corporation, located and doing business at Holtedam 1, Humlebaek
`DENMARK 3050.
`
`2.. On information and belief, Applicant, Titan Medical Inc., is a Canadian
`corporation, whose address is 750-155 University Ave., Toronto, Ontario Canada M5H
`3B7.
`
`
`On information and belief, on March 11, 2021, Applicant filed Application
`3.
`Serial No. 90/573147 (“Applicant’s ‘147 Application”) seeking registration of the mark
` (hereinafter “TITAN MEDICAL” or “Applicant’s Mark”), based
`upon intent-to-use, in connection with “Computer-assisted surgical apparatus kit
`primarily comprised of a surgical workstation comprised of a robotic control device and
`
`

`

`surgical devices and instruments, surgeon's workstation, electrical video display
`monitors, input controllers, and surgical patient cart; Computer-assisted surgical device
`and apparatus, in particular endoscopic cameras for medical use, surgical instruments,
`electrosurgical instruments, and surgical products in the nature of surgical drapes” in
`Class 10.
`
`
`Long prior to the filing date of Applicant’s ‘147 Application, Opposer
`4.
`adopted, and itself and/or through its related company Coloplast Corp., has used and is
`now using the trademark TITAN (hereinafter “Opposer’s Mark”) in connection with
`“Medical devices, namely penile prostheses” in Class 10. Opposer’s said use has been
`valid and continuous and has not been abandoned.
`
`
`Opposer is the owner of Registration No. 2872319 issued August 10,
`5.
`2004, for the mark TITAN for “Medical devices, namely penile prostheses” in Class 10.
`Said registration is valid and subsisting and constitutes conclusive evidence of
`Registrant’s exclusive right to use the mark for the goods recited therein. A copy of said
`registration, together with a TSDR print-out showing status and title, is attached hereto
`as Exhibit A.
`
`
`Since the initial use of Opposer’s Mark, Opposer has used, promoted,
`6.
`advertised, marketed, distributed and sold its goods, and promoted its business under
`and in connection with said mark to the public, through various channels of trade and in
`commerce, with the result that Opposer’s customers and the public in general have
`come to know and recognize Opposer’s Mark and associate same with Opposer and/or
`the goods produced, advertised, marketed, distributed and sold directly or indirectly by
`Opposer. Opposer thus has built up extensive goodwill in connection with the sale of its
`goods sold under Opposer’s Mark.
`
`
`Applicant’s mark TITAN MEDICAL mark sought to be registered and
`7.
`opposed herein is virtually identical to, a colorable imitation of, and/or confusingly
`similar to, Opposer's prior and aforesaid TITAN mark.
`
`
`Upon information and belief, the goods identified in the TITAN MEDICAL
`8.
`application opposed herein are similar and/or related to the goods in connection with
`which Opposer uses its TITAN mark, and are and/or will be sold and/or offered through
`the same and/or similar channels of trade, and/or to the same general class of
`purchasers, in and to which Opposer’s products are marketed, offered and/or sold.
`
`

`

`Upon information and belief, Applicant had actual knowledge of Opposer’s
`9.
`prior TITAN mark and Opposer’s products offered under its TITAN mark; and sought to
`trade off of the goodwill and reputation in said mark in adopting the TITAN MEDICAL
`mark opposed herein.
`
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`The registration and/or use of the TITAN MEDICAL mark set forth in the
`10.
`opposed application is likely to cause confusion, mistake, and/or to deceive as to origin,
`sponsorship, and/or association of Applicant's products sold (and any services
`rendered) under the TITAN MEDICAL mark sought to be registered by Applicant vis a
`vis Opposer and/or its TITAN mark, and/or to mislead purchasers of Applicant's goods
`and/or Opposer's goods, and/or the public in general, into believing that Applicant's
`goods are sold by, emanate from, and/or in some way, directly or indirectly, are
`associated with and/or sponsored by Opposer, and/or it’s TITAN mark and/or Opposer's
`products, and/or business, or vice versa, to the damage and detriment of Opposer.
`
`
`If Applicant is granted registration of the TITAL MEDICAL mark opposed
`11.
`herein, and Applicant obtains such rights as are conferred under the Principal Register
`of the Trademark Act of 1946, Applicant will obtain unlawful gain and advantage to
`which it is not entitled under the Trademark Act of 1946, to the detriment and harm of
`Opposer.
`
`WHEREFORE, Opposer, Coloplast A/S, believes and avers that it will be
`
`damaged by registration of the published TITAN mark, and respectfully requests that
`Application Serial No. 90/573,147 be rejected, and that no registration issue thereon,
`and that this Opposition be sustained by issuance of judgment in favor of Opposer.
`
`
`
`
`
`
`Date: May 13, 2022
`Atty. Dkt No.: OT210009US00
`
`Respectfully submitted,
`
`COLOPLAST A/S
`
`By: /Simor L. Moskowitz/
`Simor L. Moskowitz
`WESTERMAN, HATTORI, LLP
`8500 Leesburg Pike, Suite 7500
`Tysons, Virginia 22182
`(703) 827-3800 (phone)
`(571) 395-8753 (facsimile)
`smoskowitz@whda.com (email)
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`

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`Int. Cl: 10
`
`Reg. No. 2,872,319
`United States Patent and Trademark Office__Registered Aug. 10, 2004
`
`Prior U.S. Cs.: 26, 39, and 44
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`TITAN
`
`MENTOR CORPORATION (MINNESOTA COR-
`PORATION)
`201 MENTOR DRIVE
`SANTA BARBARA,CA 93111
`
`FOR: MEDICAL DEVICES, NAMELY PENILE
`PROSTHESES, IN CLASS 10 (U.S. CLS. 26,39 AND 44).
`
`FIRST USE9-11-2002; IN COMMERCE9-11-2002.
`
`SN 76-444,451, FILED 8-28-2002.
`
`KELLEY WELLS, EXAMINING ATTORNEY
`
`

`

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`Generated on: This page was generated by TSDR on 2022-05-12 11:51:18 EDT
`Mark: TITAN
`
`
`
`US Serial Number: 76444451
`US Registration Number: 2872319
`Register: Principal
`Mark Type: Trademark
`TM5 Common Status Descriptor:
`
`ApplicationFiling Date: Aug. 28, 2002
`Registration Date: Aug. 10, 2004
`
`LIVE/REGISTRATION/Issued and Active
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`Status Date:
`Jun. 04, 2014
`Publication Date:
`Jan. 14, 2003
`~ Mark Information
`Mark Literal Elements: TITAN
`Standard Character Claim: No
`Mark Drawing Type: 1- TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`~ Goods and Services
`Note:
`The following symbolsindicate that the registrant/owner has amended the goods/services.
`+ Brackets [..] indicate deleted goods/services,
`+ Double parenthesis ((..)) identify any goods/services not claimed ina Section 15 affidavil of incontestability, and
`« Asterisks *..* identify additional (new) wording in the goods/services.
`For: Medical devices, namely penile prostheses
`Intemational Class(es): 010 - Primary Class
`Class Status: ACTIVE
`Basis: 1(a)
`First Use: Sep. 11, 2002
`+ Basis Information (Case Level)
`~ Current Owner(s) Information
`Owner Name: COLOPLASTA/S
`Owner Address: HOLTEDAM 1
`HUMLEBAEK DENMARK DK3050
`Legal Entity Type: CORPORATION
`+ Attorney/Correspondence Information
`~ Prosecution History
`Date
`Dec. 03, 2019
`Dec. 03, 2019
`dun, 04, 2074
`dun. 04, 2014
`dun. 04, 2014
`May 13, 2014
`dun, 04,2014
`May 13, 2014
`Oct. 14, 2010
`Oct. 12, 2010
`Oct. 10, 2010
`dul. 26, 2006
`Aug. 10, 2004
`Jun. 03, 2004
`dun. 03, 2004
`May 28, 2004
`May 14, 2004
`May 25, 2004
`May 17, 2004
`Dec. 16, 2003
`Oct. 14, 2003
`Oct. 14, 2003
`dun. 06, 2003
`Feb. 10, 2003
`dan, 14, 2003
`Dec. 25, 2002
`Nov. 16, 2002
`TM Staff and Location Information
`+ Assignment Abstract Of Title Information
`~ Proceedings - Click to Load
`
`Notice of Allowance Date: Dec. 16, 2003
`
`* Collaase All
`
`U.S Class{es): 026, 039, 044
`
`Use in Commerce: Sep. 11, 2002
`
`State or Country Where Organized: DENMARK
`
`Description
`ATTORNEY/DOM.REP. REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`NOTICE OF ACCEPTANCEOF SEC. 8 & 9- E-MAILED
`REGISTERED AND RENEWED(FIRST RENEWAL - 10 YRS)
`REGISTERED- SEC. 8 (10-YR} ACCEPTED/SEC. 9 GRANTED
`REGISTERED - COMBINED SECTION8 (10-YR) & SEC. 9 FILED
`‘CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 15 RECEIVED
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`REGISTERED-PRINCIPAL REGISTER,
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`ASSIGNED TO EXAMINER:
`STATEMENT OF USE PROCESSING COMPLETE
`USE AMENDMENTFILED
`‘CASEFILE IN TICRS
`PAPER RECEIVED
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`OPPOSITION TERMINATED NO.999999
`OPPOSITION DISMISSED NO. $99999
`OPPOSITION INSTITUTED NO. 999999
`EXTENSION OF TIME TO OPPOSE RECEIVED
`PUBLISHED FOR OPPOSITION
`NOTICE OF PUBLICATION
`APPROVED FOR PUB- PRINCIPAL REGISTER
`
`Proceeding Number
`
`69471
`69471
`69471
`69471
`
`67723
`67723
`
`67659
`
`156530
`156530
`156530
`
`
`
`