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`LH/CH/JMM
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`April 3, 2024
`
`Opposition No. 91287494
`
`Novocure GmbH
`
`v.
`
`Septodont Holding SAS
`
`
`
`Jill M. McCormack, Interlocutory Attorney:
`
`On February 13, 2024, Applicant filed a proposed amendment to its application
`
`Serial No. 88221050 with Opposer’s written consent.
`
`The notice of opposition was filed only against International Classes 5, 10, and 35,
`
`and only those classes are subject to the Board’s jurisdiction. Applicant was free to
`
`file a post-publication amendment with respect to International Classes 40, 42, and
`
`45, and does not require Opposer’s consent to amend those services. However, because
`
`the amendment to the services in International Classes 40, 42, and 45 presumably
`
`are part of the parties’ settlement agreement, and because the Board applies the same
`
`standard for amendment as Trademark examination, as a service to the parties, the
`
`Board will act upon the amendment in all classes.
`
`
`
`

`

`Opposition No. 91287494
`
`
`By the proposed amendment, Applicant seeks to amend the identification of goods
`
`and services in International Classes 5, 10, 35, 40, 42, and 45 as follows:1
`
`INTERNATIONAL CLASS 5
`
`FROM: 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;
`
`1 Proposed deletions are shown in strike-though and proposed additions in bold.
`
`
`
`
`2
`
`

`

`Opposition No. 91287494
`
`
`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, 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
`
`
`
`3
`
`

`

`Opposition No. 91287494
`
`
`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 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
`
`
`
`4
`
`

`

`Opposition No. 91287494
`
`
`
`TO:
`
`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
`
`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
`
`
`
`5
`
`

`

`Opposition No. 91287494
`
`
`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 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, 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
`
`
`
`6
`
`

`

`Opposition No. 91287494
`
`
`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 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 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
`
`
`
`7
`
`

`

`Opposition No. 91287494
`
`
`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
`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 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
`
`
`INTERNATIONAL CLASS 10
`
`
`FROM: 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
`
`
`TO:
`
`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
`
`
`INTERNATIONAL CLASS 35
`
`
`FROM: 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
`
`
`TO:
`
`
`
`
`
`Business consulting services relating to pharmaceutical manufacturing,
`clinical evaluation and testing, regulatory registration, stability studies,
`method development, formal stability, registration batches and
`commercial production; none of the foregoing for the treatment of
`cancer or oncological diseases and disorders
`
`8
`
`

`

`Opposition No. 91287494
`
`
`INTERNATIONAL CLASS 40
`
`
`FROM: 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
`
`
`TO:
`
`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
`
`
`INTERNATIONAL CLASS 42
`
`
`FROM: 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;
`
`
`TO:
`
`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; none of the
`foregoing for the treatment of cancer or oncological diseases
`and disorders
`
`
`INTERNATIONAL CLASS 45
`
`
`FROM: Consulting services to assist companies with obtaining regulatory
`compliance and licenses for pharmaceuticals and medical devices;
`
`
`
`9
`
`

`

`Opposition No. 91287494
`
`
`Consulting services relating to pharmaceuticals relating to regulatory
`compliance in the field of pharmaceuticals, namely, regulatory
`registration
`
`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
`
`
`TO:
`
`
`
`The amendment is limiting in nature, as required by Trademark Rule 2.71(a).
`
`Because Opposer consents thereto, the amendment is approved and entered. See
`
`Trademark Rule 2.133(a).
`
`If the amendment resolves this proceeding, Opposer is allowed until THIRTY (30)
`
`DAYS from the date of this order to file a withdrawal of the opposition, failing which
`
`the opposition will go forward on the application as amended. See Trademark Rule
`
`2.106(c).
`
`If no response is filed, proceedings will be resumed and dates reset, as appropriate.
`
`Proceedings are otherwise suspended.2
`
`
`2 Applicant’s consent motion to extend, filed March 12, 2024, is granted, but dates therein
`are superseded by this order.
`
`
`
`10
`
`