ESTTA Tracking number:
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`ESTTA1339842
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`Filing date:
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`02/13/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91287494
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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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`Defendant
`Septodont Holding SAS
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`JASON J. MAZUR
`ARENTFOX SCHIFF LLP
`1717 K STREET, NW
`WASHINGTON, DC 20006-5344
`UNITED STATES
`Primary email: tmdocket@arentfox.com
`Secondary email(s): jason.mazur@afslaw.com, justine.mitchell@afslaw.com
`202-857-6000
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`Other Motions/Submissions
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`Jason J. Mazur
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`jason.mazur@afslaw.com, tmdocket@afslaw.com, justine.mitchell@afslaw.com,
`danielle.bulger@afslaw.com
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`/Jason J. Mazur/
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`02/12/2024
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`Novocure v. Septodont - Consent Motion to Amend (12-Feb-2024 executed
`).pdf(167406 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposer,
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`v.
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`In re Application Serial No. 88/221,050
`Filed: December 7, 2018
`For Mark: NOVOCOL PHARMA
`Published in the Official Gazette: June 6, 2023
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`NOVOCURE GMBH,
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`Applicant.
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`Commissioner for Trademarks
`Attn: Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
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`Opposition No. 91287494
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`SEPTODONT HOLDING SAS,
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`MOTION ON CONSENT TO AMEND APPLICATION
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`Pursuant to Rule 2.133 of the Trademark Rules of Practice, Applicant Septodont
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`Holding SAS respectfully requests that its above-captioned application be amended by (a)
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`deleting the following goods from the identification in Class 5: “pharmaceutical
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`preparations for the treatment of cancer,” “pharmaceutical preparations for the treatment
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`of oncological diseases and disorders,” and “pharmaceutical preparations for use in
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`oncology”; (b) deleting the following services from the identification in Class 35: “clinical
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`trial services, namely, business and information management of clinical studies to fast
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`track drug products to market”; (c) deleting the following services from the identification
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`in Class 42: “conducting clinical trials for others, namely, managing clinical studies to fast
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`track drug products to market”; and (d) adding the following bolded language to the very
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`end of the identifications in Classes 5, 10, 35, 40, 42, and 45: “none of the foregoing for
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`the treatment of cancer or oncological diseases and disorders”, thereby reading as
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`follows:
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`Class 5: Pharmaceutical preparations, namely, acne medication, allergy medication,
`antacids, anthelmintics, antiarrhythmics, antibiotic creams and ointments, antibiotics,
`anticoagulants,
`anticonvulsants,
`antidepressants,
`antiemetics,
`antiflatulants,
`antihistamines, antihypertensives anti-infectives, anti-inflammatories, antiparasites,
`antivirals, burn relief medication, calcium channel blockers, central nervous system
`depressants, central nervous system stimulants, cough treatment medication, diarrhea
`medication, fungal medications, gastro-intestinal pharmaceutical preparations, glaucoma
`agents, hydrocortisone, hypnotic agents, sedatives, pain relief medication, and topical and
`injectable pharmaceutical preparations for dental, endodontic and periodontal disorders;
`anti-epileptic pharmaceutical preparations; bismuth preparations for pharmaceutical use;
`bromine for pharmaceutical purposes; cardiovascular pharmaceutical preparations;
`frostbite salve for pharmaceutical purposes; guaiacol for pharmaceutical purposes;
`intravenous fluids used for rehydration, nutrition and the delivery of pharmaceutical
`preparations; inhaled pharmaceutical preparations for the treatment of respiratory diseases
`and disorders; injectable pharmaceutical contraceptives; pharmaceutical anti-allergic
`preparations and substances; pharmaceutical for the treatment of erectile dysfunction;
`pharmaceutical hormonal preparations, namely, corticosteroids, hormone replacement
`therapy preparations, oral contraceptives, thyroid hormone preparations; pharmaceutical
`preparations and substances for the treatment of gastro-intestinal diseases; pharmaceutical
`preparations for the treatment of bone fractures; pharmaceutical preparations for inhalation
`for the treatment of pulmonary hypertension; pharmaceutical preparations for ocular or
`intraocular surgery; pharmaceutical preparations for reducing cholesterol; pharmaceutical
`preparations for the prevention of osteoporosis; pharmaceutical preparations for the relief
`of pain; pharmaceutical preparations for the treatment of acne; pharmaceutical preparations
`for the treatment of bacterial skin infections, fungal skin infections, viral skin infections
`and parasitic skin infections; pharmaceutical preparations for the treatment of allergies;
`pharmaceutical preparations for the treatment of blood disorders; pharmaceutical
`preparations for the treatment of cancer; pharmaceutical preparations for the treatment
`of cardiovascular diseases; pharmaceutical preparations for the treatment of carpal tunnel
`syndrome; pharmaceutical preparations for the treatment of chronic pain; pharmaceutical
`preparations for the treatment of cranial or facial nerve disorders; pharmaceutical
`preparations for the treatment of degenerative nerve diseases and disorders, namely,
`Alzheimer's disease, Parkinson's disease, Huntington's disease and multiple sclerosis;
`pharmaceutical preparations for the treatment of dental and oral diseases; pharmaceutical
`preparations for the treatment of diseases, disorders and infections of the endocrine system,
`namely, growth and thyroid disorders; pharmaceutical preparations for the treatment of
`diseases, disorders and infections of the spinal cord systems and related cartilage and
`tissue; pharmaceutical preparations for the treatment of drug and alcohol abuse;
`pharmaceutical preparations for the treatment of gastro-intestinal diseases; pharmaceutical
`preparations for the treatment of genito-urinary and pelvic diseases, disorders and
`infections, namely, infertility, sexually transmitted diseases, incontinence and sexual
`dysfunction; pharmaceutical preparations for the treatment of genitourinary diseases,
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`namely, urological diseases, infertility, sexually transmitted diseases, inflammatory pelvic
`diseases; pharmaceutical preparations for the treatment of glaucoma; pharmaceutical
`preparations for the treatment of headaches; pharmaceutical preparations for the treatment
`of hypercholesteremia; pharmaceutical preparations for the treatment of hyperlipidemia;
`pharmaceutical preparations for the treatment of immunologic diseases, namely,
`autoimmune diseases, immunologic deficiency syndromes; pharmaceutical preparations
`for the treatment of infectious diseases, namely, respiratory infections, eye infections;
`pharmaceutical preparations for the treatment of inflammatory connective tissue diseases
`and injuries; pharmaceutical preparations for the treatment of inflammatory diseases,
`namely,
`inflammatory bowel diseases,
`inflammatory connective
`tissue diseases;
`pharmaceutical preparations for the treatment of inflammatory muscle diseases and
`disorders; pharmaceutical preparations for the treatment of metabolic diseases and
`disorders, namely, gout, osteoarthritis, muscular dystrophy, anemia; pharmaceutical
`preparations for the treatment of metabolic disorders, namely, bulimia nervosa, anorexia,
`and hypothyroidism; pharmaceutical preparations for the treatment of migraine;
`pharmaceutical preparations for the treatment of motion sickness; pharmaceutical
`preparations for the treatment of multiple sclerosis; pharmaceutical preparations for the
`treatment of myalgia and neuralgia; pharmaceutical preparations for the treatment of
`neurological diseases, namely, Alzheimer's, Huntington's Disease, cerebral palsy;
`pharmaceutical preparations for the treatment of neurological disorders, namely, brain
`injury, spinal cord injury, seizure disorders; pharmaceutical preparations for the treatment
`of neuromuscular diseases and disorders, namely, cerebrovascular accident (stroke),
`Parkinson's disease, multiple sclerosis, myasthenia gravis, Huntington's disease;
`pharmaceutical preparations for the treatment of oncological diseases and disorders;
`pharmaceutical preparations for the treatment of ophthalmological diseases and disorders;
`pharmaceutical preparations for the treatment of physical and psychological addictions,
`namely, gambling addiction, eating disorders and addictions, nicotine addiction, Internet
`addiction, drug addiction; pharmaceutical preparations for the treatment of psychiatric and
`other brain diseases and disorders, namely, anxiety, mood disorders, schizophrenia,
`cognitive and bipolar disorders, epilepsy, Alzheimer's, cerebral palsy, Parkinson's disease,
`multiple sclerosis; pharmaceutical preparations for the treatment of psychiatric diseases,
`namely, mood disorders, anxiety disorders, cognitive disorders, schizophrenia;
`pharmaceutical preparations for the treatment of respiratory diseases, disorders and
`infections; pharmaceutical preparations for the treatment of skin irritations, namely, bee
`stings, sunburn, rashes, sores, corns, calluses, and acne; pharmaceutical preparations for
`the treatment of smoking cessation; pharmaceutical preparations for the treatment of the
`central nervous system, namely, central nervous system infections, brain diseases, central
`nervous system movement disorders, ocular motility disorders, spinal cord diseases;
`pharmaceutical preparations for the treatment of the central nervous system, namely,
`encephalitis, epilepsy, Alzheimer's, cerebral palsy, Parkinson's disease; pharmaceutical
`preparations for the treatment of the diseases, disorders and infections of the central
`nervous system, namely, brain, movement, ocular motility and spinal cord diseases;
`pharmaceutical preparations for the treatment of the musculoskeletal system, namely,
`connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains,
`cartilage injuries; pharmaceutical preparations for the treatment of the respiratory system;
`pharmaceutical preparations for the treatment of varicose veins; pharmaceutical
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`preparations for the treatment of vascular diseases; pharmaceutical preparations for the
`treatment of viral diseases, namely, herpes, hepatitis, Acquired Immune Deficiency
`Syndrome (AIDS); pharmaceutical preparations for treating allergic rhinitis and asthma;
`pharmaceutical preparations for treating asthma; pharmaceutical preparations for treating
`dandruff; pharmaceutical preparations for use in dermatology, namely, dermatitis, skin
`pigmentation diseases, sexually transmitted diseases; pharmaceutical preparations for use
`in discouraging
`the smoking habit; pharmaceutical preparations
`for use
`in
`gastroenterology; pharmaceutical preparations for use in ocular disorders; pharmaceutical
`preparations for use in oncology; pharmaceutical preparations for use in ophthalmology;
`pharmaceutical preparations for wounds; pharmaceutical preparations against dry skin
`caused by pregnancy; pharmaceutical preparations for hydrating the skin during
`pregnancy; pharmaceutical preparations for ophthalmological use; pharmaceutical
`preparations for the treatment of cancer; pharmaceutical preparations for treating
`respiratory diseases; pharmaceutical solutions used in dialysis; radioactive pharmaceutical
`preparations for in vivo diagnostic or therapeutic use; sunburn preparations for
`pharmaceutical purposes; synthetic peptides for the treatment of all of the foregoing
`diseases and conditions; disinfection systems, namely, all-purpose disinfectants; none of
`the foregoing for the treatment of cancer or oncological diseases and disorders
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`Class 10: Drug delivery systems, namely, needles, syringes, nasal spray bottles, injection
`devices, oral and nasal inhalation devices, patch pumps, and anesthetic delivery apparatus
`for medical purposes, but not for use in the fields of diabetes and obesity; none of the
`foregoing for the treatment of cancer or oncological diseases and disorders
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`Class 35: Business consulting services relating to pharmaceutical manufacturing, clinical
`evaluation and testing, regulatory registration, stability studies, method development,
`formal stability, registration batches and commercial production; clinical trial services,
`namely, business and information management of clinical studies to fast track drug
`products to market none of the foregoing for the treatment of cancer or oncological
`diseases and disorders
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`Class 40: Contract manufacturing of clinical batches of pharmaceuticals; Consulting
`services relating to pharmaceutical manufacturing, batch biological treatment batches, and
`pharmaceutical manufacturing; custom manufacture of pharmaceuticals, namely, the
`formulation of new dosage forms and the reformulation of existing drug products; none of
`the foregoing for the treatment of cancer or oncological diseases and disorders
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`Class 42: Consulting services relating to the clinical testing, inspection, or research of
`pharmaceuticals; Consulting services relating to conducting pharmaceutical stability
`studies and formal stability studies; Consulting services relating to the development of
`chemical production methods; Consulting services relating to registration batch research
`and commercial pharmaceutical products development; Pharmaceutical drug development
`services, namely, the formulation of new dosage forms and the reformulation of existing
`drug products; conducting clinical trials for others, namely, managing clinical studies
`to fast track drug products to market none of the foregoing for the treatment of
`cancer or oncological diseases and disorders
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`Class 45: Consulting services to assist companies with obtaining regulatory compliance
`and licenses for pharmaceuticals and medical devices; Consulting services relating to
`pharmaceuticals relating to regulatory compliance in the field of pharmaceuticals, namely,
`regulatory registration; none of the foregoing for the treatment of cancer or oncological
`diseases and disorders
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`It is respectfully submitted that these amendments to the identifications of goods
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`and services do not require republication of the above-captioned application since the
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`amendments narrow, rather than broaden, the scope of the application.
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`These amendments are made pursuant to a settlement that has been reached
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`between Applicant and Opposer Novocure GmbH, who has consented to these
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`amendments. Applicant respectfully requests that the request to amend be granted in its
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`entirety. Applicant and Opposer further request that the opposition proceeding be suspended
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`pending disposition of this motion.
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`Dated: February 12, 2024
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`Respectfully submitted,
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`ARENTFOX SCHIFF LLP
`Attorneys for Applicant
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`By: _ /Jason J. Mazur/_________
`Jason J. Mazur, Esq.
`Danielle W. Bulger, Esq.
`1717 K Street NW
`Washington, DC 20006
`202-857-6000
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`CONSENTED TO:
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`BALLARD SPAHR LLP
`Attorneys for Opposer
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`By: _/Eric M. Sable/_____________
` Eric M. Sable, Esq.
`Hara K. Jacobs, Esq.
`1735 Market Street
`51st Floor
`Philadelphia, PA 19103
`215-864-8209
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`CERTIFICATE OF SERVICE
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`I hereby certify that the foregoing Motion On Consent to Amend Application was
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`served on this 12th day of February, 2024 via e-mail on Opposer’s counsel of record at the
`following addresses:
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`tmdocketing@ballardspahr.com, jacobsh@ballardspahr.com, sablee@ballardspahr.com,
`frankenfieldb@ballardspahr.com
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`_ /Jason J. Mazur/_________
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