Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1273108
`03/20/2023
`
`ESTTA Tracking number:
`
`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
`
`Oasis Medical, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`03/19/2023
`
`514 SOUTH VERMONT AVENUE
`GLENDORA, CA 91741
`UNITED STATES
`
`JONATHAN A. HYMAN
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`Primary email: efiling@knobbe.com
`Secondary email(s): jonathan.hyman@knobbe.com
`3104073468
`
`Docket no.
`
`OASMD179GEN
`
`Applicant information
`
`Application no.
`
`90727534
`
`Opposition filing
`date
`
`Applicant
`
`03/20/2023
`
`Publication date
`
`09/20/2022
`
`Opposition period
`ends
`
`03/19/2023
`
`Oasis Mushrooms Inc.
`6TH FLOOR - 905 WEST PENDER STREET
`VANCOUVER, V6C1L6
`CANADA
`
`Goods/services affected by opposition
`
`Class 005. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: botanical supplements for general health
`and well-being made in whole or significant part of adaptogens; dietary supplements for general
`health and well-being made in whole or significant part of adaptogens; herbal supplements for gener-
`al health and well-being made in whole or significant part of adaptogens; nutritional supplements for
`general health and well-being made in whole or significant part of adaptogens; vitamin and mineral
`supplements made in whole or significant part of adaptogens; nutritional supplements for promoting
`mental health and well-being made in whole or significant part of adaptogens; nutritional supplements
`for promoting immune system health made in whole or significant part of adaptogens; nutritional sup-
`plements containing mushrooms or mushroom extracts made in whole or significant part of adapto-
`gens; nutritional supplements for promoting stress response system health made in whole or signific-
`ant part of adaptogens
`
`

`

`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Common law Priority and likelihood of confusion
`
`Marks cited by opposer as basis for opposition
`
`U.S. application
`no.
`
`88510722
`
`Application date
`
`07/11/2019
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS
`
`NONE
`
`Class 005. First use: First Use: Nov 2007 First Use In Commerce: Nov 2007
`(Based on Use in Commerce) Eye drops; Ophthalmic pharmaceutical prepara-
`tions, namely, viscoelastic solutions; Viscoelastic surgical fluid for use during
`ophthalmic surgical procedures; Collagen for medical purposes, namely, colla-
`gen corneal shields for placing on the eye to protect the cornea for medical pur-
`poses; Collagen for medical purposes, namely, corneal shields made of collagen
`for placing on the eye for protection of the cornea for medical purposes; (Based
`on Intent to Use) Medicated eyelid cleansers; Medicated eyelid cleansers, med-
`icated pre-moistened wipes, and medicated facial cleansers, namely, foams,
`solutions, creams, gels, lotions and ointments for eyelid cleansing and removal
`of encrustation and other foreign matter from the eyelids, eyelashes, and peri-
`ocular area; Antibacterial wipes for the eyelids, eyelashes, and periocular area;
`Antibacterial cleansers in the nature of antibacterial wipes for the eyelids, eye-
`lashes, and periocular area; Antibacterial gel for the eyelids, eyelashes, and
`periocular area; Antibacterial cleansers in the nature of antibacterial gels for the
`eyelids, eyelashes, and periocular area; Antibacterial spray for the eyelids, eye-
`lashes, and periocular area; Antibacterial cleansers in the nature of antibacterial
`sprays for the eyelids, eyelashes, and periocular area; Nutritional supplements
`for ocular wellness; Nutritional supplements for promoting healthy eyes and vis-
`ion; Nutritional supplements for treating dry eyes; Dietary supplements and nutri-
`tional supplements for antioxidant, anti-inflammatory, and treating vision issues;
`Nutritional and herbal supplements to treat eyesight problems and to improve
`vision; all the foregoing for optical wellness, treatment of the eyes, or ophthalmo-
`logic or vision care uses; none of the foregoing covering oral or dental products
`or for use in treating oral or dental issues
`
`U.S. registration
`no.
`
`6267537
`
`Register
`
`Principal
`
`Registration date
`
`02/09/2021
`
`Application date
`
`07/11/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS TEARS VISION
`
`NONE
`
`Class 005. First use: First Use: Nov 18, 2019 First Use In Commerce: Nov 18,
`2019
`Dietary and nutritional supplements; Nutritional supplements; Nutritional supple-
`ments for ocular wellness; Nutritional supplements for promoting healthy eyes
`
`

`

`and vision; Nutritional supplements for treating dry eyes; Dietary supplements
`and nutritional supplements for antioxidant, anti-inflammatory, and treating vis-
`ion issues; nutritional and herbal supplements to treat eyesight problems and to
`improve vision
`
`U.S. registration
`no.
`
`6316375
`
`Register
`
`Principal
`
`Registration date
`
`04/06/2021
`
`Application date
`
`07/11/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS TEARS OMEGA
`
`NONE
`
`Class 005. First use: First Use: Dec 17, 2019 First Use In Commerce: Dec 17,
`2019
`Dietary and nutritional supplements; Nutritional supplements; Nutritional supple-
`ments for ocular wellness; Nutritional supplements for promoting healthy eyes
`and vision; Nutritional supplements for treating dry eyes; Dietary supplements
`and nutritional supplements for antioxidant, anti-inflammatory, and treating vis-
`ion issues; nutritional and herbal supplements to treat eyesight problems and to
`improve vision
`
`U.S. registration
`no.
`
`6428911
`
`Register
`
`Principal
`
`Registration date
`
`07/20/2021
`
`Application date
`
`07/11/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS TEARS
`
`NONE
`
`Class 005. First use: First Use: Nov 2007 First Use In Commerce: Nov 2007
`Medicated eyelid cleansers; Medicated eyelid cleansers, medicated pre-
`moistened wipes, and medicated facial cleansers, namely, solutions for eyelid
`cleansing and removal of encrustation and other foreign matter from the eyelids,
`eyelashes, and periocular area; Antiseptic wipes; Antibacterial wipes; Antibac-
`terial cleansers in the nature of antibacterial wipes; Antiseptic spray; Antibacteri-
`al spray; Antibacterial cleansers in the nature of antibacterial sprays; Dietary and
`nutritional supplements; Nutritional supplements; Nutritional supplements for
`ocular wellness; Nutritional supplements for promoting healthy eyes and vision;
`Nutritional supplements for treating dry eyes; Dietary supplements and nutrition-
`al supplements for antioxidant, anti-inflammatory, and treating vision issues; Nu-
`tritional and herbal supplements to treat eyesight problems and to improve vis-
`ion
`
`U.S. registration
`no.
`
`6569817
`
`Register
`
`Principal
`
`Registration date
`
`11/23/2021
`
`Application date
`
`07/11/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`OASIS TEARS HYPOCHLOROUS
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: May 19, 2021 First Use In Commerce: May 19,
`2021
`Medicated eyelid cleansers; Medicated eyelid cleansers and medicated facial
`cleansers, namely, solutions for eyelid cleansing and removal of encrustation
`and other foreign matter from the eyelids, eyelashes, and periocular area; anti-
`septic spray; antibacterial spray; Antibacterial cleansers in the nature of antibac-
`terial sprays
`
`U.S. registration
`no.
`
`6639891
`
`Register
`
`Principal
`
`Registration date
`
`02/08/2022
`
`Application date
`
`01/09/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS TEARS OASIS LID & LASH
`
`NONE
`
`Class 003. First use: First Use: May 19, 2021 First Use In Commerce: May 19,
`2021
`Non-medicated cleansing solution for washing the area around the eye; Non-
`medicated cleansers, namely, eyelid cleansers and pre-moistened wipes for
`eyelids; Non-medicated cleansers, namely, pre-moistened wipes and eye
`cleansers, namely, solutions for eyelid cleansing and removal of encrustation
`and other foreign matter from the eyelids, eyelashes, and periocular area
`
`U.S. registration
`no.
`
`6331631
`
`Register
`
`Principal
`
`Registration date
`
`04/27/2021
`
`Application date
`
`01/09/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS LID & LASH
`
`NONE
`
`Class 003. First use: First Use: Aug 2, 2013 First Use In Commerce: Aug 2,
`2013
`Non-medicated cleansing solution for washing the area around the eye; Non-
`medicated cleansers, namely, eyelid cleansers and pre-moistened wipes for
`eyelids; Non-medicated cleansers, namely, pre-moistened wipes and eye
`cleansers, namely, foams, sprays, solutions, gels, lotions and ointments for eye-
`lid cleansing and removal of encrustation and other foreign matter from the eye-
`lids, eyelashes, and periocular area
`
`U.S. registration
`no.
`
`2039586
`
`Register
`
`Principal
`
`Registration date
`
`02/25/1997
`
`Word mark
`
`Design mark
`
`OASIS
`
`Application date
`
`04/25/1994
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 010. First use: First Use: Sep 1987 First Use In Commerce: Sep 1987
`medical devices; namely, scalpels; irrigation/aspiration apparatus and parts ther-
`for; I/A tips; cortex extractors; anterior chamber maintainers; capsule polishers;
`cannulas; needles; speculum; tonometer shields; nucleus bisecting devices,
`namely, cystomones; lens loops; lens loop amputators; capsulatomy instru-
`ments, namely; extractors and spatulas; phaco tips; lacrimal intubation sets,
`namely malleable wire, tubing and retrieval apparatus; ocular pressure reducers;
`eye packs; filters for delivery of medical solutions; cautery tools; lens holders
`and collagen corneal shields
`
`U.S. registration
`no.
`
`2082971
`
`Register
`
`Principal
`
`Registration date
`
`07/29/1997
`
`Application date
`
`04/25/1994
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS
`
`NONE
`
`Class 009. First use: First Use: Sep 1987 First Use In Commerce: Sep 1987
`sunglasses
`
`U.S. registration
`no.
`
`3485957
`
`Register
`
`Principal
`
`Registration date
`
`08/12/2008
`
`Application date
`
`06/27/2007
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS TEARS
`
`NONE
`
`Class 005. First use: First Use: Nov 2007 First Use In Commerce: Nov 2007
`Eye drops or solutions of artificial tears to provide lubrication to treat dry eye
`symptoms
`
`U.S. registration
`no.
`
`3496440
`
`Register
`
`Principal
`
`Registration date
`
`09/02/2008
`
`Application date
`
`11/20/2006
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS
`
`NONE
`
`Class 005. First use: First Use: Nov 2007 First Use In Commerce: Nov 2007
`Eye drops and solutions of artificial tears to provide lubrication to treat dry eye
`symptoms
`
`U.S. registration
`
`4608335
`
`Application date
`
`08/12/2013
`
`

`

`no.
`
`Register
`
`Principal
`
`Registration date
`
`09/23/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS LID & LASH
`
`NONE
`
`Class 003. First use: First Use: Jul 25, 2013 First Use In Commerce: Jul 25,
`2013
`Non-medicated cleansing solution for washing the area around the eye
`
`U.S. registration
`no.
`
`5117151
`
`Register
`
`Principal
`
`Registration date
`
`01/10/2017
`
`Application date
`
`11/04/2015
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OASIS REST & RELIEF
`
`NONE
`
`Class 010. First use: First Use: Mar 28, 2016 First Use In Commerce: Mar 28,
`2016
`Eye protection products for relief of dry eye symptoms, sinus pressure, head-
`aches, tension, swelling, and other eye issues, namely, eye mask for heat or
`cold therapy
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`OASIS
`
`supplements, surgical and eye care products and supplements,
`devices, and solutions, ophthalmic and optometric accessories, sup-
`plies, and instruments
`
`Attachments
`
`OASMD.179TIS-NoticeOpposition.pdf(49230 bytes )
`OASMD.179TIS-NoticeOppositionExhibitA.pdf(2454519 bytes )
`
`Signature
`
`/jhh/
`
`Name
`
`Date
`
`JONATHAN A. HYMAN
`
`03/20/2023
`
`

`

`OASMD.179TIS/OASMD.179M
`
`
`TTAB
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Oasis Medical, Inc.,
`
`
`
`
`Oasis Mushrooms Inc.,
`
`
`v.
`
`Opposer,
`
`Opposition No.: _________________
`Mark: OASIS ADAPTOGENS
`Serial No.: 90727534
`
`
`
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`
`United States Patent and Trademark Office
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`Oasis Medical, Inc., a California corporation, will be damaged by the registration of the
`
`mark OASIS ADAPTOGENS, as shown in U.S. Trademark Application Serial No.: 90727534
`
`(“Applicant’s Application”), filed by Oasis Mushrooms Inc. (“Applicant”), and hereby opposes
`
`the same. A description of Applicant’s Application is as follows:
`
`Mark: OASIS ADAPTOGENS
`Serial No.: 90727534
`Fling Date: May 21, 2021
`Filing Basis: 1(b)
`Goods: Botanical supplements for general health and well-being made in whole or
`significant part of adaptogens; dietary supplements for general health and well-being
`made in whole or significant part of adaptogens; herbal supplements for general health
`and well-being made in whole or significant part of adaptogens; nutritional supplements
`for general health and well-being made in whole or significant part of adaptogens;
`vitamin and mineral supplements made in whole or significant part of adaptogens;
`nutritional supplements for promoting mental health and well-being made in whole or
`significant part of adaptogens; nutritional supplements for promoting immune system
`health made in whole or significant part of adaptogens; nutritional supplements
`containing mushrooms or mushroom extracts made in whole or significant part of
`adaptogens; nutritional supplements for promoting stress response system health made in
`whole or significant part of adaptogens in Class 5
`Pub. Date: September 20, 2022
`
`
`
`As grounds for opposition, it is alleged:
`
`-1-
`
`

`

`1.
`
`Oasis Medical, Inc. (hereinafter referred to as “Oasis Medical”) is well known for
`
`its high-quality supplements, surgical and eye care products and supplements, devices, and
`
`solutions, ophthalmic and optometric accessories, supplies, and instruments provided to
`
`eye care professionals and consumers and as a distributor of such products.
`2.
`
`Since prior to the filing date Applicant’s Application, Oasis Medical has offered
`
`supplements, surgical and eye care products and supplements, devices, and solutions,
`
`ophthalmic and optometric accessories, supplies, and instruments provided to eye care
`
`professionals and consumers and as a distributor of such products under the mark OASIS.
`3.
`
`Oasis Medical owns the following trademark registrations and application for its
`
`OASIS mark (collectively hereinafter referred to as the “Oasis Medical Mark”):
`
`Mark
`
`OASIS
`
`Reg. No. or
`Serial No.
`88/510,722
`
`Class
`
`5
`
`Goods
`
`(Based on Use in Commerce) Eye drops; Ophthalmic
`pharmaceutical preparations, namely, viscoelastic solutions;
`Viscoelastic surgical fluid for use during ophthalmic surgical
`procedures; Collagen for medical purposes, namely, collagen
`corneal shields for placing on the eye to protect the cornea for
`medical purposes; Collagen for medical purposes, namely,
`corneal shields made of collagen for placing on the eye for
`protection of the cornea for medical purposes; (Based on Intent
`to Use) Medicated eyelid cleansers; Medicated eyelid cleansers,
`medicated pre-moistened wipes, and medicated facial cleansers,
`namely, foams, solutions, creams, gels, lotions and ointments
`for eyelid cleansing and removal of encrustation and other
`foreign matter from the eyelids, eyelashes, and periocular area;
`Antibacterial wipes for the eyelids, eyelashes, and periocular
`area; Antibacterial cleansers in the nature of antibacterial wipes
`for the eyelids, eyelashes, and periocular area; Antibacterial gel
`for the eyelids, eyelashes, and periocular area; Antibacterial
`cleansers in the nature of antibacterial gels for the eyelids,
`eyelashes, and periocular area; Antibacterial spray for the
`eyelids, eyelashes, and periocular area; Antibacterial cleansers
`in the nature of antibacterial sprays for the eyelids, eyelashes,
`and periocular area; Nutritional supplements for ocular
`wellness; Nutritional supplements for promoting healthy eyes
`and vision; Nutritional supplements for treating dry eyes;
`Dietary supplements and nutritional supplements for
`antioxidant, anti-inflammatory, and treating vision issues;
`Nutritional and herbal supplements to treat eyesight problems
`and to improve vision; all the foregoing for optical wellness,
`treatment of the eyes, or ophthalmologic or vision care uses;
`none of the foregoing covering oral or dental products or for use
`
`-2-
`
`

`

`OASIS TEARS
`VISION
`
`6,267,537
`
`OASIS TEARS
`OMEGA
`
`6,316,375
`
`OASIS TEARS
`
`6,428,911
`
`OASIS TEARS
`HYPOCHLOROUS
`
`
`
`6,569,817
`
`OASIS TEARS
`OASIS LID &
`LASH
`
`6,639,891
`
`OASIS LID &
`LASH
`
`6,331,631
`
`in treating oral or dental issues
`
`5
`
`5
`
`Dietary and nutritional supplements; Nutritional supplements;
`Nutritional supplements for ocular wellness; Nutritional
`supplements for promoting healthy eyes and vision; Nutritional
`supplements for treating dry eyes; Dietary supplements and
`nutritional supplements for antioxidant, anti-inflammatory, and
`treating vision issues; nutritional and herbal supplements to
`treat eyesight problems and to improve vision
`Dietary and nutritional supplements; Nutritional supplements;
`Nutritional supplements for ocular wellness; Nutritional
`supplements for promoting healthy eyes and vision; Nutritional
`supplements for treating dry eyes; Dietary supplements and
`nutritional supplements for antioxidant, anti-inflammatory, and
`treating vision issues; nutritional and herbal supplements to
`treat eyesight problems and to improve vision
`5 Medicated eyelid cleansers; Medicated eyelid cleansers,
`medicated pre-moistened wipes, and medicated facial cleansers,
`namely, solutions for eyelid cleansing and removal of
`encrustation and other foreign matter from the eyelids,
`eyelashes, and periocular area; Antiseptic wipes; Antibacterial
`wipes; Antibacterial cleansers in the nature of antibacterial
`wipes; Antiseptic spray; Antibacterial spray; Antibacterial
`cleansers in the nature of antibacterial sprays; Dietary and
`nutritional supplements; Nutritional supplements; Nutritional
`supplements for ocular wellness; Nutritional supplements for
`promoting healthy eyes and vision; Nutritional supplements for
`treating dry eyes; Dietary supplements and nutritional
`supplements for antioxidant, anti-inflammatory, and treating
`vision issues; Nutritional and herbal supplements to treat
`eyesight problems and to improve vision
`5 Medicated eyelid cleansers; Medicated eyelid cleansers and
`medicated facial cleansers, namely, solutions for eyelid
`cleansing and removal of encrustation and other foreign matter
`from the eyelids, eyelashes, and periocular area; antiseptic
`spray; antibacterial spray; Antibacterial cleansers in the nature
`of antibacterial sprays
`Non-medicated cleansing solution for washing the area around
`the eye; Non-medicated cleansers, namely, eyelid cleansers and
`pre-moistened wipes for eyelids; Non-medicated cleansers,
`namely, pre-moistened wipes and eye cleansers, namely,
`solutions for eyelid cleansing and removal of encrustation and
`other foreign matter from the eyelids, eyelashes, and periocular
`area
`Non-medicated cleansing solution for washing the area around
`the eye; Non-medicated cleansers, namely, eyelid cleansers and
`pre-moistened wipes for eyelids; Non-medicated cleansers,
`
`3
`
`3
`
`-3-
`
`

`

`OASIS
`
`2,039,586
`
`OASIS
`
`2,082,971
`
`OASIS TEARS
`
`3,485,957
`
`OASIS
`
`3,496,440
`
`OASIS LID &
`LASH
`OASIS REST &
`RELIEF
`
`4,608,335
`
`5,117,151
`
`10
`
`namely, pre-moistened wipes and eye cleansers, namely, foams,
`sprays, solutions, gels, lotions and ointments for eyelid
`cleansing and removal of encrustation and other foreign matter
`from the eyelids, eyelashes, and periocular are
`10 Medical devices; namely, scalpels; irrigation/aspiration
`apparatus and parts therfor; I/A tips; cortex extractors; anterior
`chamber maintainers; capsule polishers; cannulas; needles;
`speculum; tonometer shields; nucleus bisecting devices,
`namely, cystomones; lens loops; lens loop amputators;
`capsulatomy instruments, namely; extractors and spatulas;
`phaco tips; lacrimal intubation sets, namely malleable wire,
`tubing and retrieval apparatus; ocular pressure reducers; eye
`packs; filters for delivery of medical solutions; cautery tools;
`lens holders and collagen corneal shields
`Sunglasses
`
`9
`
`5
`
`5
`
`3
`
`Eye drops or solutions of artificial tears to provide lubrication to
`treat dry eye symptoms
`Eye drops or solutions of artificial tears to provide lubrication to
`treat dry eye symptoms
`Non-medicated cleansing solution for washing the area around
`the eye
`Eye protection products for relief of dry eye symptoms, sinus
`pressure, headaches, tension, swelling, and other eye issues,
`namely, eye mask for heat or cold therapy
`
`
`True and correct copies of printouts from the electronic database records of the PTO showing the
`
`current status and title of the registrations for these trademarks, as well as true and correct copies
`
`of the Certificates of Registration are attached hereto as Exhibit A.
`4.
`
`Since prior to the filing date Applicant’s Application, Oasis Medical has
`
`continuously used its Oasis Medical Mark in connection with supplements, surgical and eye
`
`care products and supplements, devices, and solutions, ophthalmic and optometric
`
`accessories, supplies, and instruments, and on an ever increasing scope of goods and services.
`
`By virtue of Opposer’s continuous and substantial use, the Oasis Medical Mark has become an
`
`identifier of Opposer and its goods and services, and distinguishes Opposer’s goods and services
`
`from the goods and services of others. As a result, Opposer has built up, at great expense and
`
`effort, extensive and valuable goodwill in its Oasis Medical Mark.
`5.
`6.
`
`Applicant did not use the OASIS ADAPTOGENS mark prior to May 21, 2021.
`
`Applicant did not use the OASIS ADAPTOGENS mark prior to April 25, 2021.
`
`-4-
`
`

`

`2020.
`
`2020.
`
`2019.
`
`7.
`
`8.
`
`9.
`
`10.
`11.
`12.
`13.
`14.
`15.
`16.
`
`Applicant did not use the OASIS ADAPTOGENS mark prior to October 20,
`
`Applicant did not use the OASIS ADAPTOGENS mark prior to October 23,
`
`Applicant did not use the OASIS ADAPTOGENS mark prior to December 17,
`
`Applicant did not use the OASIS ADAPTOGENS mark prior to April 25, 2021.
`
`Applicant did not use the OASIS mark prior to May 21, 2021.
`
`Applicant did not use the OASIS mark prior to October 20, 2020.
`
`Applicant did not use the OASIS mark prior to October 23, 2020.
`
`Applicant did not use the OASIS mark prior to December 17, 2019.
`
`Oasis Medical has priority of use with respect to the OASIS mark.
`
`By virtue of Oasis Medical widespread and continuous use of its Oasis Medical
`
`Mark, Oasis Medical has established extensive common law rights in the Oasis Medical Mark
`
`since prior to the filing date Applicant’s Application.
`17.
`
`All of the registrations relied upon herein by Oasis Medical are valid, subsisting,
`
`unrevoked and uncancelled. Oasis Medical’s registrations constitute prima facie evidence of the
`
`validity of these registered marks, the registration thereof, and of Oasis Medical’s ownership of
`
`the marks shown therein as provided in Section 33(a) of the Trademark Act. All of Oasis
`
`Medical’s registrations relied on herein constitute constructive use of the Oasis Medical Mark,
`
`conferring a right of priority nationwide in effect, as of the filing dates of the applications
`
`therefore as provided in Section 7(c) of the Trademark Act. The filing dates of Oasis Medical’s
`
`registrations and/or the date of actual first use of the Oasis Medical Mark relied on herein are all
`
`prior to the filing date of Applicant’s Application.
`18.
`
`Oasis Medical’s Registration Nos.: 2,039,586; 2,082,971; 3,485,957; 3,496,440;
`
`4,608,335; and 5,117,151 are incontestable. Oasis Medical’s incontestable Registration Nos.
`
`2,039,586; 2,082,971; 3,485,957; 3,496,440; 4,608,335; and 5,117,151 constitute conclusive
`
`evidence of the validity of the registered mark, the registration thereof, and of Oasis Medical’s
`
`ownership of the mark shown therein, as provided in Section 33(b) of the Trademark Act.
`19.
`
`Oasis Medical is the owner of and relies on U.S. Trademark Application Serial
`
`No. 88510722 for the OASIS mark for mark for “(Based on Use in Commerce) Eye drops;
`
`-5-
`
`

`

`Ophthalmic pharmaceutical preparations, namely, viscoelastic solutions; Viscoelastic surgical
`
`fluid for use during ophthalmic surgical procedures; Collagen for medical purposes, namely,
`
`collagen corneal shields for placing on the eye to protect the cornea for medical purposes;
`
`Collagen for medical purposes, namely, corneal shields made of collagen for placing on the eye
`
`for protection of the cornea for medical purposes; (Based on Intent to Use) Medicated eyelid
`
`cleansers; Medicated eyelid cleansers, medicated pre-moistened wipes, and medicated facial
`
`cleansers, namely, foams, solutions, creams, gels, lotions and ointments for eyelid cleansing and
`
`removal of encrustation and other foreign matter from the eyelids, eyelashes, and periocular area;
`
`Antibacterial wipes for the eyelids, eyelashes, and periocular area; Antibacterial cleansers in the
`
`nature of antibacterial wipes for the eyelids, eyelashes, and periocular area; Antibacterial gel for
`
`the eyelids, eyelashes, and periocular area; Antibacterial cleansers in the nature of antibacterial
`
`gels for the eyelids, eyelashes, and periocular area; Antibacterial spray for the eyelids, eyelashes,
`
`and periocular area; Antibacterial cleansers in the nature of antibacterial sprays for the eyelids,
`
`eyelashes, and periocular area; Nutritional supplements for ocular wellness; Nutritional
`
`supplements for promoting healthy eyes and vision; Nutritional supplements for treating dry
`
`eyes; Dietary supplements and nutritional supplements for antioxidant, anti-inflammatory, and
`
`treating vision issues; Nutritional and herbal supplements to treat eyesight problems and to
`
`improve vision; all the foregoing for optical wellness, treatment of the eyes, or ophthalmologic or
`
`vision care uses; none of the foregoing covering oral or dental products or for use in treating oral
`
`or dental issues,” in Class 5. This application was filed in the PTO on July 11, 2019. Thus, Oasis
`
`Medical filing date is prior to the filing date of Applicant’s Application. True and correct copies
`
`of the specifics of the this application obtained from the PTO’s TSDR and Assignment databases
`
`are attached hereto as Exhibit A and made of record.
`20.
`
`Upon registration of the U.S. Trademark Application Serial No. 88510722, Oasis
`
`Medical will be the owner of and rely upon the United States registration maturing therefrom.
`
`This registration, once issued, will constitute constructive use of the mark, conferring rights of
`
`priority, nationwide in effect, as of the filing dates pursuant to § 7(c), as well as prima facie
`
`evidence of the validity of the registered mark and of the registration thereof, of Oasis Medical’s
`
`ownership of the mark shown therein and/or of Oasis Medical’s exclusive right to use the mark
`
`in commerce in connection with the goods named therein, without condition or limitation as
`
`provided in Sections 7(b), 22 and 33(a) of the Trademark Act of 1946 as amended.
`
`-6-
`
`

`

`21.
`
`If Applicant is permitted to register the mark shown in Applicant’s Application,
`
`Applicant’s corresponding prima facie exclusive right to use the OASIS ADAPTOGENS mark
`
`in nationwide commerce will conflict with Oasis Medical’s lawful and prima facie and prior
`
`exclusive right to use the Oasis Medical Mark nationwide.
`22.
`
`The goods identified in Applicant’s Application are related to, or broad enough to
`
`encompass, the goods offered and/or registered by Oasis Medical under the Oasis Medical Mark,
`
`and the respective goods/services are marketed or will be marketed to the same consumers and
`
`potential consumers.
`23.
`
`Oasis Medical will be damaged by the registration of Applicant’s Application for
`
`the OASIS ADAPTOGENS mark in that the OASIS ADAPTOGENS mark so resembles the
`
`Oasis Medical Mark, registered in the PTO, and in which Oasis Medical’s owns common law
`
`rights, as to be likely, when used on or in connection with the goods identified in Applicant’s
`
`Application, to cause confusion, or to cause mistake or to deceive within the meaning of Section
`
`2(d) of the Trademark Act, 15 U.S.C. §1052(d).
`24.
`
`In view of Oasis Medical’s prior rights in the Oasis Medical Mark individually
`
`and as an overall family of marks, Applicant is not entitled to registration of the OASIS
`
`ADAPTOGENS mark, pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).
`25.
`
`By reason of the foregoing, Oasis Medical will be damaged by the registration of
`
`the mark shown in Applicant’s Application.
`
`WHEREFORE, Oasis Medical prays that Applicant’s Application Serial No. 90727534
`
`be rejected and stricken, that no registration be issued thereon to Applicant, and that this
`
`Opposition be sustained in favor of Oasis Medical.
`
`Please charge any additional fees, including any fees for additional extension of time, or
`
`credit overpayment to Deposit Account No. 11-1410.
`
`Dated: March 20, 2023
`
`
`
`Respectfully submitted,
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By: _ /jhh/
`Jonathan A. Hyman
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`(310) 551-3450
`Attorneys for Opposer, Oasis Medical, Inc.
`
`
`
`57318434
`
`-7-
`
`

`

`
`
`
`
`
`
`
`
`Exhibit A
`Exhibit A
`
`

`

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`

`

`For:
`
`International Class(es):
`
`005 - Primary Class
`
`U.S Class(es): 006, 018, 044, 046, O£
`
`(Based on Use in Commerce) Eye drops; Ophthalmic pharmaceutical preparations, namely, viscoelastic sol
`fluid for use during ophthalmic surgical procedures; Collagen for medical purposes, namely, collagen corne:
`eye to protect the cornea for medical purposes; Collagen for medical purposes, namely, corneal shields ma:
`the eyefor prot