ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1344569
`03/07/2024
`
`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
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Docket no.
`
`Mayo Foundation for Medical Research and Education
`Non-profit corporation
`Incorporated or
`Minnesota
`registered in
`
`200 FIRST STREET S.W.
`ROCHESTER, MN 55905
`UNITED STATES
`
`JEFFREY R. CADWELL
`DORSEY & WHITNEY LLP
`50 SOUTH SIXTH STREET
`SUITE 1500
`MINNEAPOLIS, MN 55402
`UNITED STATES
`Primary email: ip.docket@dorsey.com
`Secondary email(s): cadwell.jeffrey@dorsey.com, park.gloria@dorsey.com
`6124926842
`M318064
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`97868032
`03/07/2024
`
`Publication date
`Opposition period
`ends
`
`02/06/2024
`03/07/2024
`
`Yue, Li
`NO. 1103, BLOCK A, HUAPU GARDEN, BLDG. 9
`DONGZHIMEN SOUTH ST., DONGCHENG DISTRICT
`BEIJING, 100000
`CHINA
`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: Analgesics; Anti-inflammatories; Bath teas
`for therapeutic purposes; Capsules sold empty for pharmaceuticals; Cod liver oil; Diagnostic prepara-
`tions for medical purposes; Dietary fiber to aid digestion; Dietetic foods adapted for medical pur-
`poses; Glycerine for medical purposes; Haemoglobin; Lecithin for medical purposes; Linseed meal
`for pharmaceutical purposes; Liquid herbal supplements; Liquid nutritional supplement; Lutein dietary
`supplements; Medicinal drinks; Medicines for alleviating constipation; Syrups for making meal re-
`placement beverages adapted for medical use; Unit dose capsules sold empty for pharmaceutical
`use; Vitamin preparations
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`Dilution by blurring
`
`Trademark Act Section 2(d)
`Trademark Act Sections 2 and 43(c)
`
`

`

`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`Register
`Registration date
`
`1614853
`
`Principal
`09/25/1990
`
`Application date
`
`01/05/1990
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO CLINIC
`
`NONE
`
`Class 016. First use: First Use: 1926 First Use In Commerce: 1926
`MEDICAL JOURNALS; HEALTH CARE NEWSLETTERS; PATIENT EDUCA-
`TION BROCHURES
`Class 041. First use: First Use: 1914 First Use In Commerce: 1914
`educational services, namely, providing courses of instruction through a gradu-
`ate medical school, medical school and school of health-related sciences and
`providing continuing medical education
`Class 042. First use: First Use: 1914 First Use In Commerce: 1914
`medical and health care services, namely clinical services, physician services,
`pharmacy services, medical laboratory and testing services, and nursing care
`services; health care services in the nature of a health maintenance organiza-
`tion; hospital services
`
`U.S. registration
`no.
`Register
`Registration date
`
`1670238
`
`Principal
`12/31/1991
`
`Application date
`
`01/28/1991
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO
`
`NONE
`
`Class 016. First use: First Use: 1926 First Use In Commerce: 1926
`medical journals; health care newsletters; patient education pamphlets
`Class 041. First use: First Use: 1914 First Use In Commerce: 1914
`educational services; namely, providing courses of instruction through a gradu-
`ate medical school, medical school and school of health-related sciences and
`providing continuing medical education
`Class 042. First use: First Use: 1914 First Use In Commerce: 1914
`medical and health care services; namely, clinical services, physician services,
`pharmacy services, medical laboratory and testing services, and nursing care
`services; [health care services in the nature of a health maintenance organiza-
`tion;] hospital services
`
`U.S. registration
`no.
`Register
`Registration date
`
`2083263
`
`Principal
`07/29/1997
`
`Application date
`
`02/15/1996
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO CLINIC PROCEEDINGS
`
`NONE
`
`Class 016. First use: First Use: Jan 1964 First Use In Commerce: Jan 1964
`medical journal
`
`U.S. registration
`no.
`Register
`Registration date
`
`2397487
`
`Principal
`10/24/2000
`
`Application date
`
`07/07/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO CLINIC HOSPITAL
`
`NONE
`
`Class 042. First use: First Use: Oct 1998 First Use In Commerce: Oct 1998
`Health Care and Hospital Services
`
`U.S. registration
`no.
`Register
`Registration date
`
`2540462
`
`Principal
`02/19/2002
`
`Application date
`
`07/31/2001
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO CLINIC
`
`NONE
`
`Class 042. First use: First Use: Nov 17, 2000 First Use In Commerce: Nov 17,
`2000
`Providing Online News and Information in the Fields of Health Care, Pharmaco-
`logy, Medical Diseases and Conditions, Aging, Fitness, First Aid, Nutrition, Well-
`ness and Lifestyle Management; Providing Online Interactive Medical Diagnosis
`and Treatment Guides; Providing Online Interactive Planners for Healthy Life-
`styles
`
`U.S. registration
`no.
`Register
`Registration date
`
`2719318
`
`Principal
`05/27/2003
`
`Application date
`
`08/21/2002
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO CLINIC PHARMACY
`
`NONE
`
`Class 035. First use: First Use: Oct 2001 First Use In Commerce: Oct 2001
`Pharmacy Services
`
`U.S. registration
`no.
`
`2815561
`
`Application date
`
`06/05/2002
`
`

`

`Register
`Registration date
`
`Principal
`02/17/2004
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO CLINIC
`
`NONE
`
`Class 041. First use: First Use: Oct 31, 2001 First Use In Commerce: Oct 31,
`2001
`Educational Services, Namely, Providing Courses of Instruction in Medicine,
`Dentistry, Pharmacology, Nursing and Health Care Through a Graduate Medical
`School, Medical School and School of Health-Related Sciences, Providing Con-
`tinuing Medical Education and Seminars for Professionals in the Fields of Medi-
`cine, Dentistry, Pharmacology, Nursing and Health Care, Conducting Seminars
`and Workshops for Volunteers, Patients and Their Families in the Fields of
`Health Care and Wellness, and Distributing Course Materials in Connection
`Therewith
`
`U.S. registration
`no.
`Register
`Registration date
`
`2904357
`
`Principal
`11/23/2004
`
`Application date
`
`07/09/2003
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO CLINIC
`
`NONE
`
`Class 035. First use: First Use: Aug 31, 2002 First Use In Commerce: Aug 31,
`2002
`RETAIL PHARMACY SERVICES
`Class 044. First use: First Use: Oct 31, 2001 First Use In Commerce: Oct 31,
`2001
`Medical and Health Care Services, Namely, Clinical Services, Physician Ser-
`vices, Dentistry Services, Medical Testing Services, and Nursing Care Services;
`[ Managed Health Care Services; ] Hospital Services; Health Care Consulting
`Services; Providing Health Information
`
`4189092
`
`Application date
`
`06/16/2011
`
`Principal
`08/14/2012
`
`Foreign priority
`date
`MAYO CLINIC HEALTH SYSTEM
`
`NONE
`
`NONE
`
`Class 035. First use: First Use: May 23, 2011 First Use In Commerce: May 23,
`2011
`Retail pharmacy services
`Class 042. First use: First Use: May 23, 2011 First Use In Commerce: May 23,
`2011
`
`

`

`Medical laboratory services
`Class 044. First use: First Use: May 23, 2011 First Use In Commerce: May 23,
`2011
`Medical services; Health care services; Medical clinic services; Hospital ser-
`vices; Physician services; Dispensing of pharmaceuticals; Pharmacists' services
`to make up prescriptions; Medical testing services; Nursing care services;
`Providing health and medical information
`
`U.S. registration
`no.
`Register
`Registration date
`
`4879237
`
`Principal
`01/05/2016
`
`Application date
`
`05/20/2013
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`MAYO CLINIC
`
`NONE
`
`Class 041. First use: First Use: Nov 17, 2000 First Use In Commerce: Nov 17,
`2000
`Providing a website featuring blogs and non-downloadable publications in the
`nature of articles and newsletters in the fields of medicine, healthcare, wellness
`and mental health; entertainment services, namely, providing on-line podcasts
`and webcasts in the fields of medicine, healthcare, wellness and mental health;
`education services, namely, providing non-downloadable on-line webinars in the
`fields of medicine, healthcare, wellness and mental health; educational services,
`namely, providing on-line seminars, workshops, tutorials and courses of instruc-
`tion at the graduate medical school level and undergraduate and graduate
`school levels in the field of health-related sciences and distributing course ma-
`terials in connection therewith; educational services, namely, providing continu-
`ing professional education courses in the field of medicine and distributing
`course materials in connection therewith; providing on-line non-downloadable
`publications in the nature of interactive guides in the fields of medical self-
`assessments and treatments; providing on-line non-downloadable publications
`in the nature of interactive planner books in the field of healthy lifestyles
`
`Attachments
`
`M318064 Notice of Opposition re MAYODOC.pdf(201872 bytes )
`M318064 Notice of Opposition re MAYODOC - Exhibit A.pdf(288994 bytes )
`M318064 Notice of Opposition re MAYODOC - Exhibit B.pdf(201738 bytes )
`
`Signature
`Name
`Date
`
`/Jeffrey R. Cadwell/
`Jeffrey R. Cadwell
`03/07/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Trademark Application Serial No.:
`Filed:
`
`
`
`
`
`For the mark:
`
`
`
`
`Published in the Official Gazette on:
`
`
`
`
`
`
`
`
`97/868,032
`March 31, 2023
`MAYODOC
`February 6, 2024
`
`Opposer,
`
`
`
`v.
`
`
`
`Opposition No. __________
`
`
`
`
`Opposer’s File No.: M318064
`
`
`
`
`
`
`
`
`Mayo Foundation for Medical Education
`and Research
`
`
`
`
`
`Li Yue
`
`
`
`
`
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`
`
`Mayo Foundation for Medical Education and Research is a Minnesota non-profit
`
`corporation with its principal place of business at 200 First Street Southwest, Rochester,
`
`Minnesota, 55905 (“Opposer”). Opposer believes that it will be damaged by registration of the
`
`mark shown in the above-identified application, and hereby opposes the same.
`
`The grounds for opposition are as follows:
`
`1.
`
`Li Yue (“Applicant”) is an individual citizen of China, having a place of business of No.
`
`1103, Block A, Huapu Garden, Bldg. 9, Dongzhimen South Street, Dongcheng District,
`
`Beijing, China 100000.
`
`2.
`
`Applicant has applied for registration on the Principal Register for the mark MAYODOC
`
`(“Opposed Mark”) for use in connection with “Analgesics; Anti-inflammatories; Bath teas
`
`for therapeutic purposes; Capsules sold empty for pharmaceuticals; Cod liver oil;
`
`Diagnostic preparations for medical purposes; Dietary fiber to aid digestion; Dietetic foods
`
`adapted for medical purposes; Glycerine for medical purposes; Haemoglobin; Lecithin for
`
`
`
`

`

`medical purposes; Linseed meal for pharmaceutical purposes; Liquid herbal supplements;
`
`Liquid nutritional supplement; Lutein dietary supplements; Medicinal drinks; Medicines for
`
`alleviating constipation; Syrups for making meal replacement beverages adapted for
`
`medical use; Unit dose capsules sold empty for pharmaceutical use; Vitamin preparations”
`
`in Class 5 (“Opposed Application”).
`
`3.
`
`The Opposed Application was filed on March 31, 2023, assigned Serial No. 97/868,032,
`
`and published for opposition purposes on February 6, 2024.
`
`4.
`
`The Opposed Application was filed under Section 1(b) of the Lanham Act, 15 U.S.C. §
`
`1051(b), and the Applicant has not claimed a date of first use in commerce.
`
`COUNT I
`
`Priority and Likelihood of Confusion (Lanham Act § 2(d))
`
`5.
`
`Opposer is a wholly-owned subsidiary of Mayo Clinic, which is a worldwide leader in
`
`medical care, research, and education.
`
`6.
`
`Opposer’s business activities include medical and healthcare services, research and
`
`development, laboratory services, surgical methodology, surgical instruments, medical
`
`products, medical publications and journals, pharmacies and pharmaceuticals, and
`
`educational services.
`
`7.
`
`Every year, more than a million people from all 50 states and nearly 150 countries come
`
`to Mayo Clinic for care.
`
`8.
`
`Because of the world-renown of Mayo Clinic as well as the extensive and widespread use
`
`of Opposer’s marks consisting of or containing the word MAYO, Opposer’s marks have
`
`become well-known to the general public.
`
`9.
`
`Opposer is the owner of a large portfolio of trademark registrations and common law
`
`trademark rights of MAYO-variant marks for a variety of healthcare, medical, and
`
`pharmaceutical goods and services. Opposer is the owner of the following U.S. trademark
`
`
`
`2
`
`

`

`registrations and applications (among others) that pre-date the filing date of the Opposed
`
`Application:
`
`Mark
`
`Reg. No.
`
`Filing Date /
`Reg. Date
`
`Class: Goods/Services, First Use
`Dates
`
`MAYO CLINIC
`
`1,614,853 Jan 5, 1990 /
`Sep 5, 1990
`
`MAYO
`
`
`
`1,670,238 Jan 28, 1991 /
`Dec 31, 1991
`
`
`
`3
`
`16: Medical journals; health care
`newsletters; patient education
`brochures
`
`First Use: 1926
`First Use in Commerce: 1926
`
`41: Educational services, namely,
`providing courses of instruction
`through a graduate medical school,
`medical school and school of health-
`related sciences and providing
`continuing medical education
`
`First Use: 1914
`First Use in Commerce: 1914
`
`42: Medical and health care
`services, namely clinical services,
`physician services, pharmacy
`services, medical laboratory and
`testing services, and nursing care
`services; health care services in the
`nature of a health maintenance
`organization; hospital services
`
`First Use: 1914
`First Use in Commerce: 1914
`
`16: Medical journals; health care
`newsletters; patient education
`brochures
`
`First Use: 1926
`First Use in Commerce: 1926
`
`41: Educational services, namely,
`providing courses of instruction
`through a graduate medical school,
`medical school and school of health-
`
`

`

`Mark
`
`Reg. No.
`
`Filing Date /
`Reg. Date
`
`Class: Goods/Services, First Use
`Dates
`
`related sciences and providing
`continuing medical education
`
`First Use: 1914
`First Use in Commerce: 1914
`
`42: Medical and health care
`services, namely clinical services,
`physician services, pharmacy
`services, medical laboratory and
`testing services, and nursing care
`services; health care services in the
`nature of a health maintenance
`organization; hospital services
`
`First Use: 1914
`First Use in Commerce: 1914
`
`16: Medical journal
`
`First Use: Jan 1964
`First Use in Commerce: Jan 1964
`
`42: Health care and hospital services
`
`First Use: Jan 1988
`First Use in Commerce: Jan 1988
`
`42: Providing online news and
`information in the fields of health
`care, pharmacology, medical
`diseases and conditions, aging,
`fitness, first aid, nutrition, wellness
`and lifestyle management; providing
`online interactive medical diagnosis
`and treatment guides; providing
`online interactive planners for
`healthy lifestyles
`
`First Use: Nov 17, 2000
`First Use in Commerce: Nov 17,
`2000
`
`MAYO CLINIC
`PROCEEDINGS
`
`2,083,263 Feb 15, 1996 /
`Jul 29, 1997
`
`MAYO CLINIC HOSPITAL 2,397,487 Jul 7, 1999 /
`Oct 24, 2000
`
`MAYO CLINIC
`
`
`2,540,462 Jul 31, 2001 /
`Feb 19, 2002
`
`
`
`4
`
`

`

`Mark
`
`Reg. No.
`
`Filing Date /
`Reg. Date
`
`Class: Goods/Services, First Use
`Dates
`
`MAYO CLINIC
`PHARMACY
`
`2,719,318 Aug 21, 2002 /
`May 27, 2003
`
`MAYO CLINIC & Triple
`Shield Design
`
`2,815,561 Jun 5, 2002 /
`Feb 17, 2004
`
`
`
`
`
`MAYO CLINIC & Triple
`Shield Design
`
`2,904,357 Jul 9, 2003 /
`Nov 23, 2004
`
`
`
`
`
`35: Pharmacy services.
`
`First Use: Oct 2001
`First Use in Commerce: Oct 2001
`
`41: Educational services, namely,
`providing courses of instruction in
`medicine, dentistry, pharmacology,
`nursing and health care through a
`graduate medical school, medical
`school and school of health-related
`sciences, providing continuing
`medical education and seminars for
`professionals in the fields of
`medicine, dentistry, pharmacology,
`nursing and health care, conducting
`seminars and workshops for
`volunteers, patients and their
`families in the fields of health care
`and wellness, and distributing course
`materials in connection therewith
`
`First Use: Oct 31, 2001
`First Use in Commerce: Oct 31,
`2001
`
`35: Retail pharmacy services
`
`First Use: Aug 31, 2002
`First Use in Commerce: Aug 31,
`2002
`
`44: Medical and health care
`services, namely, clinical services,
`physician services, dentistry
`services, medical testing services,
`and nursing care services; hospital
`services; health care consulting
`services; providing health
`information
`
`First Use: Oct 31, 2001
`First Use in Commerce: Oct 31,
`2001
`
`
`
`5
`
`

`

`Mark
`
`Reg. No.
`
`Filing Date /
`Reg. Date
`
`Class: Goods/Services, First Use
`Dates
`
`MAYO CLINIC HEALTH
`SYSTEM
`
`4,189,092 Jun 16, 2011 /
`Aug 14, 2012
`
`MAYO CLINIC
`
`4,879,237 May 20, 2013 /
`Jan 5, 2016
`
`
`
`6
`
`35: Retail pharmacy services.
`
`First Use: May 23, 2011
`First Use in Commerce: May 23,
`2011
`
`42: Medical laboratory services.
`
`First Use: May 23, 2011
`First Use in Commerce: May 23,
`2011
`
`44: Medical services; health care
`services; medical clinic services;
`hospital services; physician services;
`dispensing of pharmaceuticals;
`pharmacists' services to make up
`prescriptions; medical testing
`services; nursing care services;
`providing health and medical
`information.
`
`First Use: May 23, 2011
`First Use in Commerce: May 23,
`2011
`
`41: Providing a website featuring
`blogs and non-downloadable
`publications in the nature of articles
`and newsletters in the fields of
`medicine, healthcare, wellness and
`mental health; entertainment
`services, namely, providing on-line
`podcasts and webcasts in the fields
`of medicine, healthcare, wellness
`and mental health; education
`services, namely, providing non-
`downloadable on-line webinars in
`the fields of medicine, healthcare,
`wellness and mental health;
`educational services, namely,
`providing on-line seminars,
`workshops, tutorials and courses of
`instruction at the graduate medical
`school level and undergraduate and
`graduate school levels in the field of
`
`

`

`Mark
`
`Reg. No.
`
`Filing Date /
`Reg. Date
`
`Class: Goods/Services, First Use
`Dates
`
`health-related sciences and
`distributing course materials in
`connection therewith; educational
`services, namely, providing
`continuing professional education
`courses in the field of medicine and
`distributing course materials in
`connection therewith; providing on-
`line non-downloadable publications
`in the nature of interactive guides in
`the fields of medical self-
`assessments and treatments;
`providing on-line non-downloadable
`publications in the nature of
`interactive planner books in the field
`of healthy lifestyles
`
`First Use: Nov 17, 2000
`First Use in Commerce: Nov 17,
`2000
`
`Current printouts of information from the electronic database records of the USPTO
`
`showing the current status and title of the MAYO-variant registrations and applications
`
`(“MAYO Marks”) are attached as Exhibit A.
`
`10.
`
`There is no question as to priority. Opposer’s registration of the MAYO Marks as detailed
`
`in Exhibit A began more than thirty years prior to the filing date of the Opposed
`
`Application. As indicated in the same Exhibit A, Opposer’s MAYO Marks have been in
`
`use to identify health care-related services since at least as early as 1914 and health care-
`
`related products since at least as early as 1926.
`
`11.
`
`Opposer’s rights in the MAYO Marks were established well prior to the filing date of the
`
`Opposed Application. The MAYO Marks have been in use since 1914 continuously. The
`
`MAYO Marks have not been abandoned.
`
`12.
`
`The mark in the Opposed Application is highly similar to Opposer’s MAYO Marks both
`
`aurally and visually. Applicant’s MAYODOC mark contains the whole of Opposer’s
`
`
`
`7
`
`

`

`Registrations for the MAYO mark and is highly similar in sound, appearance, and meaning
`
`to the MAYO portion of the remaining of Opposer’s Registrations.
`
`13.
`
`In this case, the mark covered by the Opposed Application begins with the term “MAYO,”
`
`which is Opposer’s key trademark followed by an additional term which could be read by
`
`potential customers as a second portion of the mark in the same format as many of
`
`Opposer’s other marks. The identical and prominent use of the term MAYO gives the
`
`Opposed Mark and the MAYO Marks a similar sound and appearance.
`
`14.
`
`Given that MAYO is the Opposer’s house mark, the additional term in Applicant’s mark,
`
`“DOC,” adds little distinctive value to the mark, as a number of the MAYO Marks include
`
`additional wording or elements. Moreover, the term “DOC” is commonly understood to be
`
`a shorthand for the term “doctor,” which would explicitly tie the Opposed Mark to the goods
`
`and services known to be connected to Opposer. See Exhibit B for a Google search of
`
`the term “DOC.”
`
`15.
`
`The goods and services of Applicant and Opposer are related, as both parties use or
`
`allegedly plan to use their marks in connection with healthcare and medical related goods
`
`and or services. The Applicant’s goods are pharmaceuticals and other medical
`
`preparations, which are a subset of Opposer’s broad medical and healthcare goods and
`
`services.
`
`16.
`
`The goods and services offered under Opposer’s MAYO Marks and the goods provided
`
`under the Opposed Mark are likely to be offered to overlapping customers and in
`
`overlapping channels of commerce. At a minimum, the goods in the Opposed Application
`
`are complementary to the goods and services offered under Opposer’s MAYO Marks.
`
`17. Moreover, given the well-known status of Opposer’s MAYO Marks, consumers would
`
`likely confuse the Opposed Mark as being related to Opposer and Opposer’s goods and
`
`services. Because Opposer provides similar goods, a consumer may be directed to the
`
`
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`8
`
`

`

`Applicant’s products, see the Opposed Mark, and believe the goods are associated with
`
`the Opposer.
`
`18.
`
`Applicant has not been licensed or in any way authorized by Opposer to use the mark
`
`MAYODOC for any goods or services.
`
`19.
`
`Applicant’s MAYODOC mark is likely to cause confusion, to cause mistake, or to deceive,
`
`if it were used on or registered for use on the goods identified in the Opposed Application.
`
`It is likely that consumers would mistakenly believe that those goods were offered by
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`Opposer or were in some way sponsored by or connected with Opposer. As such, the
`
`Opposed Application should be denied registration under Section 2(d) of the Lanham Act,
`
`15 U.S.C. § 1052(d).
`
`COUNT II
`
`Likelihood of Dilution (Lanham Act § 43(c))
`
`20.
`
`Opposer repeats and re-avers Paragraphs 1-19 of the Notice of Opposition.
`
`21.
`
`As a result of the long and extensive use of Opposer’s MAYO Marks, and the widespread
`
`advertising and promotion of its goods and services under the MAYO Marks, the MAYO
`
`Marks are “one of the best known—indeed, famous—names in the medical health field.”
`
`Frederick Gash, Inc. v. Mayo Clinic, 461 F.2d 1395, 1401 (C.C.P.A. 1972).
`
`22.
`
`The MAYO Marks became famous well prior to Applicant’s filing date. The MAYO Marks
`
`have continued to be famous at least through the date of this Notice of Opposition.
`
`23.
`
`Applicant’s use and registration of the designation MAYODOC is likely to dilute the
`
`distinctive quality of Opposer’s famous MAYO Marks.
`
`24.
`
`The granting of a trademark registration of MAYODOC to Applicant would be contrary to
`
`Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and would violate or diminish the
`
`prior rights of Opposer in its famous MAYO Marks.
`
`
`
`
`
`9
`
`

`

`WHEREFORE Opposer believes that it will be damaged by registration of Applicant’s
`
`MAYODOC mark and pray that this opposition be sustained, and that Application Serial No.
`
`97/868,032 be rejected and registration of the mark be refused.
`
`
`
`Please recognize as attorneys for Opposer in this proceeding Jeffrey R. Cadwell and
`
`Gloria E. Park, both members of the Bar of the State of Minnesota, both with the firm of Dorsey &
`
`DORSEY & WHITNEY LLP
`
`
`
`By: _/Jeffrey R. Cadwell/________
`Jeffrey R. Cadwell
`(cadwell.jeffrey@dorsey.com)
`Gloria E. Park
`(park.gloria@dorsey.com)
`50 South Sixth Street, Suite 1500
`Minneapolis, MN 55402-1498
`(612) 340-2600
`
`Attorneys for Opposer,
`Mayo Foundation for Medical
`Education and Research
`
`
`
`
`Whitney LLP.
`
`
`
`
`
`
`
`Dated: March 7, 2024
`
`
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`
`10
`
`

`

`CERTIFICATE OF ELECTRONIC TRANSMISSION
`
`I hereby certify that the foregoing document is being transmitted electronically through
`ESTTA pursuant to 37 C.F.R. § 2.195(a) on this 7th day of March, 2024.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Gloria E. Park/
`Gloria E. Park
`Attorney for Opposer
`
`
`
`
`
`
`
`
`
`
`
`4891-2976-7595\
`
`11
`
`

`

`Generated on: This page was generated by TSDR on 2024-03-06 02:54:25 EST
`
`Mark: MAYO CLINIC
`
`US Serial Number: 74016481
`
`US Registration
`Number:
`
`1614853
`
`Register: Principal
`
`Mark Type: Trademark, Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Status: The registration has been renewed.
`
`Status Date: May 21, 2020
`
`Publication Date:Jul. 03, 1990
` 
`
`Application Filing
`Date:
`
`Jan. 05, 1990
`
`Registration Date: Sep. 25, 1990
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Mark Information
`
`Mark Literal
`Elements:
`
`MAYO CLINIC
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Disclaimer: "CLINIC"
`
`Acquired
`Distinctiveness
`Claim:
`
`In whole
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: MEDICAL JOURNALS; HEALTH CARE NEWSLETTERS; PATIENT EDUCATION BROCHURES
`
`International
`Class(es):
`
`016 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1926
`
`U.S Class(es): 038
`
`Use in Commerce: 1926
`
`For: educational services, namely, providing courses of instruction through a graduate medical school, medical school and school of health-
`related sciences and providing continuing medical education
`
`International
`Class(es):
`
`041 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1914
`
`U.S Class(es): 107
`
`Use in Commerce: 1914
`
`

`

`For: medical and health care services, namely clinical services, physician services, pharmacy services, medical laboratory and testing
`services, and nursing care services; health care services in the nature of a health maintenance organization; hospital services
`
`International
`Class(es):
`
`042 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1914
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`U.S Class(es): 100, 101
`
`Use in Commerce: 1914
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: MAYO FOUNDATION FOR MEDICAL EDUCATION AND RESEARCH
`
`Owner Address: 200 FIRST STREET S.W.
`ROCHESTER, MINNESOTA UNITED STATES 55905
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`MINNESOTA
`
`Attorney/Correspondence Information
`
`Attorney Name: Elizabeth C. Buckingham
`
`Docket Number: T005903.US.0
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`ip.docket@dorsey.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Elizabeth C. Buckingham
`DORSEY & WHITNEY LLP
`50 South Sixth Street
`Suite 1500
`MINNEAPOLIS, MINNESOTA UNITED STATES 55402-1498
`
`Phone:
`
`(612) 343-2178
`
`Fax:
`
`(612) 340-8827
`
`Correspondent e-
`mail:
`
`ankarlo.patricia@dorsey.com ip.docket@dorsey.c
`om jarzyna.alison@dorsey.com buckingham.eliza
`beth@dorsey.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`May 21, 2020
`May 21, 2020
`May 21, 2020
`May 21, 2020
`Mar. 16, 2020
`Sep. 25, 2019
`May 05, 2016
`May 05, 2016
`Dec. 01, 2009
`Dec. 01, 2009
`Nov. 23, 2009
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 8 & 9 RECEIVED
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`NOTICE OF SUIT
`NOTICE OF SUIT
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`TEAS SECTION 8 & 9 RECEIVED
`
`Proceeding
`Number
`
`

`

`Oct. 02, 2007
`Feb. 20, 2001
`Feb. 20, 2001
`Sep. 21, 2000
`Jun. 19, 1996
`Dec. 12, 1995
`Sep. 25, 1990
`Jul. 03, 1990
`Jun. 02, 1990
`Mar. 28, 1990
`Mar. 23, 1990
`Mar. 22, 1990
`
`CASE FILE IN TICRS
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`REGISTERED-PRINCIPAL REGISTER
`PUBLISHED FOR OPPOSITION
`NOTICE OF PUBLICATION
`APPROVED FOR PUB - PRINCIPAL REGISTER
`EXAMINER'S AMENDMENT MAILED
`ASSIGNED TO EXAMINER
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: May 21, 2020
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 1900/0965
`
`Date Recorded: May 13, 1999
`
`Supporting
`Documents:
`
`assignment-tm-1900-0965.pdf
`
`Registrant: Mayo Foundation
`
`Assignment 1 of 1
`
`Pages: 6
`
`Name: MAYO FOUNDATION
`
`Execution Date: Feb. 10, 1999
`
`Assignor
`
`Legal Entity Type: NON-PROFIT CORPORATION
`
`State or Country
`Where Organized:
`
`Assignee
`
`No Place Where Organized Found
`
`Name: MAYO FOUNDATION FOR MEDICAL EDUCATION AND RESEARCH
`
`Legal Entity Type: NON-PROFIT CORPORATION
`
`State or Country
`Where Organized:
`
`MINNESOTA
`
`Address: 200 FIRST STREET S.W.
`ROCHESTER, MINNESOTA 55905
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`DORSEY & WHITNEY LLP
`
`ELIZABETH C. BUCKINGHAM
`220 SOUTH SIXTH STREET
`MINNEAPOLIS, MN 55402
`
`Correspondent
`
`Domestic Representative - Not Found
`Proceedings
`
`Summary
`
`Number of
`Proceedings:
`
`3
`
`Proceeding
`Number:
`
`91282115
`
`Status: Terminated
`
`Type of Proceeding: Opposition
`
`Filing Date: Dec 01, 2022
`
`Status Date: Mar 02, 2023
`
` 
`
` 
`
`

`

`Interlocutory
`Attorney:
`
`JENNIFER KRISP
`
`Name: Shenzhen Renrenren Technology Co., Ltd.
`
`Correspondent
`Address:
`
`WEI YANG
`36-54 MAIN ST 3RD FL
`FLUSHING NY UNITED STATES , 11354
`
`wei.yang@glacier.law , vivian.yang@glacier.law
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`MAYOMIMI
`
`Defendant
`
`Plaintiff(s)
`
`Name: Mayo Foundation for Medical Education and Research
`
`Correspondent
`Address:
`
`JEFFREY R. CADWELL
`DORSEY & WHITNEY LLP
`50 SOUTH SIXTH STREET, SUITE 1500
`MINNEAPOLIS MN UNITED STATES , 55402
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`97049141
`
`Correspondent e-
`mail:
`
`IP.DOCKET@DORSEY.COM , BUCKINGHAM.ELIZABETH@DORSEY.COM , CADWELL.JEFFREY@DORSEY.COM , JARZYNA.AL
`ISON@DORSEY.COM
`
`Associated marks
`
`Mark
`
`MAYO CLINIC
`
`MAYO
`
`MAYO CLINIC PROCEEDINGS
`
`MAYO CLINIC HOSPITAL
`
`MAYO CLINIC
`
`MAYO CLINIC
`
`MAYO CLINIC
`
`MAYO CLINIC
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`74016481
`
`74134203
`
`75058109
`
`75744812
`
`76292505
`
`76415897
`
`76530419
`
`85936538
`
`Date
`
`Mar 02, 2023
`Mar 02, 2023
`Jan 21, 2023
`Dec 01, 2022
`Dec 01, 2022
`Dec 01, 2022
`
`1614853
`
`1670238
`
`2083263
`
`2397487
`
`2540462
`
`2815561
`
`2904357
`
`4879237
`
`Due Date
`
`Jan 10, 2023
`
`Entry Number
`
`History Text
`
`Prosecution History
`
`6
`5
`4
`3
`2
`1
`
`TERMINATED
`BD DECISION: OPP SUSTAINED
`NOTICE OF DEFAULT
`INSTITUTED
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`FILED AND FEE
`
`Proceeding
`Number:
`
`91270929
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`MARY CATHERINE FAINT
`
`Name: Bone Foam, Inc
`
`Type of Proceeding: Opposition
`
`Filing Date: Jul 30, 2021
`
`Status Date: Dec 07, 2021
`
`Defendant
`
`HANNAH B FOLLENDER
`WORKMAN NYDEGGER
`60 E SOUTH TEMPLE, SUITE 1000
`SALT LAKE CITY UT UNITED STATES , 84111
`
`docketing@wnlaw.com , hfollender@wnlaw.com
`
`Correspondent
`Address:
`
`Correspondent e-
`mai