ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1351366
`04/10/2024
`
`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
`
`RegenLab USA, LLC
`LLC
`
`Incorporated or
`registered in
`140 58TH STREET, 2ND FLOOR, BAT BLDG A
`BROOKYN, NY 11220
`UNITED STATES
`
`Delaware
`
`Correspondence
`information
`
`LINDSAY H. KAPLAN
`L. KAPLAN LAW
`P.O. BOX 4062
`KINGSTON, NY 12402
`UNITED STATES
`Primary email: lindsay@lkaplanlaw.com
`Secondary email(s): apigni@regenlab.com
`No phone number provided
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`97922317
`04/10/2024
`
`Publication date
`Opposition period
`ends
`
`03/12/2024
`04/11/2024
`
`The Bioregentech Institute, Inc.
`4435 SPECTRUM
`IRVINE, CA 92618
`UNITED STATES
`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: Anti-inflammatory gels; Burn dressings; He-
`mostatic gel matrix preparations for treating wounds; Hemostatics for medical purposes; Medicated
`skin care preparations; Medicated skin care preparations, namely, creams, lotions, gels, toners,
`cleaners and peels; Wound dressings; Medical hemostatic paste
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark cited by opposer as basis for opposition
`
`U.S. registration
`no.
`Register
`Registration date
`
`5428592
`
`Principal
`03/20/2018
`
`Application date
`
`12/12/2012
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`Design mark
`
`REGEN
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Feb 28, 2017 First Use In Commerce: Feb 28,
`2017
`Biological preparations for medical use, namely, platelet concentrate, platelet
`rich plasma, platelet poor plasma, fibrin gel, platelet rich fibrin, cell extracts, cell
`concentrates, stem cells, hyaluronic acid, chitosan or any combinations thereof;
`such goods not including implantable medical devices for use in the regenera-
`tion of natural tissue
`Class 010. First use: First Use: Feb 28, 2017 First Use In Commerce: Feb 28,
`2017
`Medical devices, namely, kits comprising tubes, medical tubes, [ vials, jars,
`bags, pouches, cartridges, bottles, cylinders or pods, ] syringes, needles, [ hold-
`ers, ]gels, connectors, [ tourniquets, plaster, pads, masks, pliers, creams, spatu-
`las, flasks, discs, dispensers, ] nozzles, stoppers, adapters, [ cannulas, ] transfer
`devices, [ ampoules, backstops, ] anticoagulants, coagulation activators, hyalur-
`onic acid, [ and chitosan, ] intended for the preparation of platelet concentrate,
`platelet rich plasma, platelet poor plasma, fibrin gel, platelet rich fibrin, cell ex-
`tracts, cell concentrates, stem cells, hyaluronic acid, chitosan or any combina-
`tions thereof; kits intended for tissue and cellular regeneration, rejuvenation,
`healing and repair comprised of receptacles, namely, medical tubes, vials, jars,
`bags, pouches, cartridges, bottles, cylinders or pods, syringes and needles for
`regenerative medicine, isolation and application of platelets and cells, for ex-
`ample from blood, fat, bone marrow, stem cells and other tissue, and kits com-
`prising medical tubes, syringes and needles for regenerative medicine, the pre-
`paration of a platelet concentrate, the isolation and application of platelets and
`cells, for example from blood, fat, bone marrow, stem cells and other tissue;
`such goods not including implantable medical devices for use in the regenera-
`tion of natural tissue
`
`Attachments
`
`85800387#TMSN.png( bytes )
`Notice of Opposition- BIOREGENTECH.pdf(2294685 bytes )
`
`Signature
`Name
`Date
`
`/Lindsay H. Kaplan/
`Lindsay H. Kaplan
`04/10/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. __________
`
`Serial No. 97922317
`Filing date: May 05, 2023
`Published: March 12, 2024
`
`
`______________________________________
`
`
`)
`
`
`
`RegenLab USA, LLC,
`
`)
`
` Opposer,
`)
`
`
`
`
`
`
`
`)
`
`
`
`v.
`
`
`
`
`)
`
`
`
`
`
`
`
`
`)
`
`
`
`
`
`
`
`
`The Bioregentech Institute, Inc., )
`
`
`
`
`
`
`
`)
`
`
`
`
`Applicant
`
`
`______________________________________________________________________________
`
`NOTICE OF OPPOSITION
`
`
`
`Mark: BIOREGENTECH
`
`
`
`RegenLab USA, LLC, (hereinafter “Opposer”) believes that it will be damaged by the
`
`registration of the mark shown in Application Serial No. 97922317 in Class 005, filed by The
`
`Bioregentech Institute, Inc. (hereinafter “Applicant”) on May 5, 2023, and opposes the
`
`registration of this mark.
`
`
`
`The grounds for this Opposition are as follows:
`
`1.
`
`2.
`
`Opposer is a New York limited liability company with a principal place of
`
`business at 140 58th Street, Building A, Brooklyn, New York 11220.
`
`Since at least 2011, Opposer has been and is now using the mark REGEN, both as
`
`a single term and combined with other terms including REGENLAB, REGENKIT,
`
`REGENCELL, REGENPLASMA, and REGENWOUND (collectively “Opposer’s
`Marks”) in interstate commerce in the United States in connection with biological
`
`preparations in the field of regenerative medicine and closely related goods and
`
`services.
`
`3.
`
` Opposer is the owner of U.S. Trademark Registration no. 5428592 for the mark
`
`REGEN in standard characters for use in connection with “Biological preparations for
`
`
`Notice of Opposition | Mark: BIOREGENTECH
`Serial No.: 97922317 | Published: March 12, 2024
`
`
`
`1
`
`

`

`medical use, namely, platelet concentrate, platelet rich plasma, platelet poor plasma,
`
`fibrin gel, platelet rich fibrin, cell extracts, cell concentrates, stem cells, hyaluronic
`
`acid, chitosan or any combinations thereof; such goods not including implantable
`
`medical devices for use in the regeneration of natural tissue” in International Class
`
`005, which was issued on March 20, 2018.
`
`4.
`
`Opposer is the owner of U.S. Registration No. 6441220 for the mark “REGEN” in
`standard characters for use in connection with, among other things, “research
`
`services, namely, scientific research studies, in the field of tissue and cellular
`
`regeneration and rejuvenation, regenerative medicine, isolation and application of a
`
`patient's own platelets and cells” in International Class 042, “Providing medical,
`
`veterinary and surgical information in the field of tissue and cellular regeneration and
`
`rejuvenation, regenerative medicine, isolation and application of a patient's own
`
`platelets and cells via the Internet; consultancy, advice, and training for business
`
`executives, health care workers, health care specialists, medical doctors and patients
`
`in the fields of cellular and tissue regeneration, regenerative medicine, rejuvenation,
`
`as well as isolating, treating and injecting blood platelets or cells into patients;
`
`educational advice in the field of healthcare, medical, surgical, veterinary, cosmetic
`
`and hygienic and beauty care” in International Class 044, and “vocational training in
`
`the field of cellular and tissue regeneration, regenerative medicine, rejuvenation, as
`
`well as isolating, treating and injecting blood platelets or cells into patients; providing
`
`information in the field of medical training and instruction relating to cellular and
`
`tissue regeneration, regenerative medicine, rejuvenation, as well as isolating, treating
`
`and injecting blood platelets or cells into patients provided online from a computer
`
`database or the Internet; educational services, namely, providing classes in the field of
`
`medicine, cellular and tissue regeneration, regenerative medicine, rejuvenation, as
`
`
`Notice of Opposition | Mark: BIOREGENTECH
`Serial No.: 97922317 | Published: March 12, 2024
`
`
`
`2
`
`

`

`well as isolating, treating and injecting blood platelets or cells into patients” in
`
`International Class 041.
`
`5.
`
`Opposer is the owner of numerous other federal trademark registrations for marks
`
`including the inherently distinctive term “REGEN” for use in connection with, among
`
`other things, medical devices in Class 010, biological preparations in Class 005, and
`
`scientific research services in Class 042. Applicant’s federal trademark registrations
`
`include the following:
`
`a. REGEN, U.S. Registration No. 5428592;
`
`b. REGEN, U.S. Registration No. 6441220;
`
`c. REGENKIT, U.S. Registration No. 3718804;
`
`d. REGENLAB, U.S. Registration No. 3922275;
`
`e. REGENPLASMA, U.S. Registration No. 3991894; and
`
`f. REGENWOUND, U.S. Registration No. 7257249.
`
`
`
`True and correct copies of Opposer’s Marks Registrations and their Status are
`
`attached hereto as Exhibit A and incorporated herein by reference.
`
`6.
`
`7.
`
`Opposer’s Marks are highly distinctive in connection with Opposer’s goods.
`Opposer’s goods offered in connection with Opposer’s Marks have received
`
`widespread use and recognition throughout the United States and elsewhere.
`
`8.
`
`9.
`
`Opposer is the owners of extensive common law rights in Opposer’s Marks due to
`use of the marks for many years in connection with Opposer’s goods and services.
`Opposer has continuously used Opposer’s Marks since at least 2011, and the
`
`marks have not been abandoned.
`
`10.
`
`As a result of Opposer’s substantial time and effort devoted to advertising and
`promoting its goods and services in connection with Opposers’ Marks, Opposer has
`developed exceedingly valuable goodwill with respect to Opposer’s Marks.
`
`
`Notice of Opposition | Mark: BIOREGENTECH
`Serial No.: 97922317 | Published: March 12, 2024
`
`
`
`3
`
`

`

`11.
`
`12.
`
`Through extensive use, promotion and advertising of Opposer’s Marks, Opposer’s
`Marks have become well known or famous for Opposer’s goods since a date prior to
`the filing of Applicant’s application.
`Through extensive use, promotion and advertising of Opposer’s Marks, Opposer’s
`Marks have become well known or famous for Opposer’s goods since a date prior to
`Applicant’s first actual or constructive use of the Applied-for-Mark.
`
`13.
`
`On information and belief, Applicant is a Delaware corporation with a place of
`
`business at 4435 Spectrum, Irvine, California 92618.
`
`14.
`
`On April 17, 2023, Applicant filed Application Serial No. 97922317 seeking
`
`registration of the mark BIOREGENTECH in standard characters for “Anti-
`
`inflammatory gels; Burn dressings; Hemostatic gel matrix preparations for treating
`
`wounds; Hemostatics for medical purposes; Medicated skin care preparations;
`
`Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and
`
`peels; Wound dressings; Medical hemostatic paste” in International Class 005.
`
`15.
`
`The Applied-for-Mark was published for opposition on March 12, 2024.
`
`16.
`
`Opposer’s first use of Opposer’s Marks in commerce in connection with
`Opposer’s goods and services preceded Applicant’s first actual or constructive use of
`
`the Applied-for-Mark in commerce.
`
`17.
`
`18.
`
`The Applied-for-Mark contains the entirety of Opposer’s mark REGEN. The
`element ‘REGEN’ is the strongest element in the Applied-for-Mark. The additional
`elements in the Applied-for-Mark do little to distinguish it from Opposer’s mark
`because the suffix “BIO” and the prefix “TECH” are descriptive of the goods with
`which Applicant’s mark will be used.
`The parties’ goods are identical or overlapping.
`
`
`Notice of Opposition | Mark: BIOREGENTECH
`Serial No.: 97922317 | Published: March 12, 2024
`
`
`
`4
`
`

`

`19.
`
`Applicant’s goods and Opposer’s goods are likely to be marketed and/or sold
`
`together.
`
`20.
`
`21.
`
`Applicant’s goods and Opposer’s goods are likely to be used together.
`The channels of trade of Applicant’s goods and Opposer’s goods are related or
`
`overlapping.
`
`22.
`
`On information and belief, the goods of Opposer and Applicant are offered or
`
`may be offered in similar channels of trade and/or to similar consumers.
`
`23.
`
`To the extent that Applicant’s goods are not identical or do not directly overlap
`Opposer’s goods, they are very similar and/or natural product expansions for
`
`Opposers.
`
`24.
`
`25.
`
`Opposer has not consented to Applicant’s use or registration of the Applied-for-
`Mark in connection with Applicant’s goods.
`As a result of the confusing similarity between Opposer’s Mark and the Applied-
`
`for-Mark, the similar nature of the relevant goods, and the similar or identical
`
`channels of trade and classes of purchasers, registration of the Applied-for-Mark in
`
`connection with Applicant’s goods is likely to deceive purchasers, cause confusion,
`
`or cause mistake as to the source or sponsorship of such goods and services.
`
`26.
`
`Consumers familiar with Opposer’s Marks are likely to mistakenly believe that
`
`the goods offered in connection with the Applied-for-Mark are sponsored, authorized,
`
`associated with, or otherwise approved by Opposer because the proposed mark
`
`closely resembles Opposer’s Marks. Deficiencies or faults in the qualities of
`Applicant’s goods are likely to reflect negatively upon, tarnish, or seriously injure the
`reputation that Opposer has established for goods provided under Opposer’s Marks.
`
`This confusion is likely to result in loss of revenues to Opposer and damage to
`
`Opposer's reputation.
`
`
`Notice of Opposition | Mark: BIOREGENTECH
`Serial No.: 97922317 | Published: March 12, 2024
`
`
`
`5
`
`

`

`27.
`
`By reason of Opposer’s use of Opposer’s Mark prior to Applicant’s use and/or
`
`application for the confusingly similar Applied-for-Mark, Opposer has rights superior
`
`to those of Applicant and standing to oppose registration of the Applied-for-Mark.
`
`28.
`
`For the foregoing reasons, the registration sought by Applicant is contrary to
`
`Section 2(d) of the Lanham Act and other provisions of the Trademark Act, and
`
`Opposer would be damaged thereby.
`
`
`
`
`
`Applicant hereby appoints Lindsay H. Kaplan, a member of the Bars of the State of
`
`New York and the State of Massachusetts, at the firm of:
`
`
`
`
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`
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`
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`
`
`Lindsay H. Kaplan, Esq.
`PO Box 4062
`Kingston, New York 12402
`Tel. (845) 417-7817
`lindsay@lkaplanlaw.com
`
`
`
`
`
`WHEREFORE, Opposer prays that Application Serial No. 97922317for the mark
`
`REGENEPEUTICS be refused registration, and that this Opposition be sustained in favor of
`
`Opposer.
`
`
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`Dated this 19th day of March, 2024
`
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`Notice of Opposition | Mark: BIOREGENTECH
`Serial No.: 97922317 | Published: March 12, 2024
`
`
`
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`Respectfully Submitted,
`
`___________________________________
`Lindsay H. Kaplan, Attorney for Applicant
`PO Box 4062
`Kingston, New York 12402
`Tel. (845) 417-7817
`lindsay@lkaplanlaw.com
`
`
`
`6
`
`

`

`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2024-04-10 12:34:12 EDT
`
`Mark: REGEN
`
`US Serial Number: 85800387
`
`US Registration
`Number:
`
`5428592
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Dec. 12, 2012
`
`Registration Date: Mar. 20, 2018
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`
`Status Date: Jan. 10, 2024
`
`Publication Date:Oct. 27, 2015Notice of Allowance Date:Dec. 22, 2015
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`REGEN
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`3906899, 3927934, 3995805 and others
`
`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: Biological preparations for medical use, namely, platelet concentrate, platelet rich plasma, platelet poor plasma, fibrin gel, platelet rich
`fibrin, cell extracts, cell concentrates, stem cells, hyaluronic acid, chitosan or any combinations thereof; such goods not including
`implantable medical devices for use in the regeneration of natural tissue
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 28, 2017
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`Use in Commerce: Feb. 28, 2017
`
`For: Medical devices, namely, kits comprising tubes, medical tubes, [ vials, jars, bags, pouches, cartridges, bottles, cylinders or pods, ]
`syringes, needles, [ holders, ]gels, connectors, [ tourniquets, plaster, pads, masks, pliers, creams, spatulas, flasks, discs, dispensers, ]
`nozzles, stoppers, adapters, [ cannulas, ] transfer devices, [ ampoules, backstops, ] anticoagulants, coagulation activators, hyaluronic
`acid, [ and chitosan, ] intended for the preparation of platelet concentrate, platelet rich plasma, platelet poor plasma, fibrin gel, platelet
`rich fibrin, cell extracts, cell concentrates, stem cells, hyaluronic acid, chitosan or any combinations thereof; kits intended for tissue and
`cellular regeneration, rejuvenation, healing and repair comprised of receptacles, namely, medical tubes, vials, jars, bags, pouches,
`cartridges, bottles, cylinders or pods, syringes and needles for regenerative medicine, isolation and application of platelets and cells,
`for example from blood, fat, bone marrow, stem cells and other tissue, and kits comprising medical tubes, syringes and needles for
`regenerative medicine, the preparation of a platelet concentrate, the isolation and application of platelets and cells, for example from
`blood, fat, bone marrow, stem cells and other tissue; such goods not including implantable medical devices for use in the regeneration
`
`

`

`of natural tissue
`
`010 - Primary Class
`
`International
`Class(es):
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Feb. 28, 2017
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`U.S Class(es): 026, 039, 044
`
`Use in Commerce: Feb. 28, 2017
`
`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: REGENLAB USA LLC
`
`Owner Address: 140 58th Street, 2nd Floor, BAT Bldg A
`Brooklyn, NEW YORK UNITED STATES 11220
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Lindsay Kaplan
`
`Attorney Primary
`Email Address:
`
`lindsay@lkaplanlaw.com
`
`Correspondent
`Name/Address:
`
`Lindsay Kaplan
`L. Kaplan Law
`PO Box 4062
`Kingston, NEW YORK UNITED STATES 12402
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Phone:
`
`(845)-417-7817
`
`Correspondent e-
`mail:
`
`lindsay@lkaplanlaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Jan. 10, 2024
`Jan. 10, 2024
`Dec. 30, 2023
`Jul. 06, 2023
`Jul. 06, 2023
`Jul. 06, 2023
`Jul. 06, 2023
`Jul. 06, 2023
`Jul. 06, 2023
`Jul. 06, 2023
`Mar. 27, 2023
`Mar. 27, 2023
`Mar. 27, 2023
`Mar. 20, 2023
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`TEAS WITHDRAWAL AS DOMESTIC REPRESENTATIVE RECEIVED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`TEAS SECTION 8 & 15 RECEIVED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`Proceeding
`Number
`
`

`

`Jan. 10, 2023
`Jan. 10, 2023
`Jan. 10, 2023
`Jan. 10, 2023
`Oct. 13, 2020
`Oct. 13, 2020
`Oct. 13, 2020
`Oct. 13, 2020
`Oct. 13, 2020
`Oct. 13, 2020
`Feb. 21, 2019
`Feb. 21, 2019
`Oct. 01, 2018
`Oct. 01, 2018
`Oct. 01, 2018
`Oct. 01, 2018
`Mar. 20, 2018
`Feb. 16, 2018
`Feb. 15, 2018
`Jan. 12, 2018
`Dec. 26, 2017
`Jan. 12, 2018
`Dec. 26, 2017
`Dec. 26, 2017
`Dec. 22, 2017
`Dec. 22, 2017
`Dec. 22, 2017
`Jul. 05, 2017
`Jun. 23, 2017
`Jun. 21, 2017
`Jun. 21, 2017
`Jun. 21, 2017
`Dec. 24, 2016
`Dec. 22, 2016
`Dec. 22, 2016
`Dec. 22, 2016
`Jun. 22, 2016
`Jun. 20, 2016
`Jun. 20, 2016
`Jun. 20, 2016
`Jun. 02, 2016
`Jun. 02, 2016
`Dec. 22, 2015
`Oct. 27, 2015
`Oct. 27, 2015
`Oct. 07, 2015
`Sep. 21, 2015
`Sep. 16, 2015
`Sep. 16, 2015
`Sep. 16, 2015
`Sep. 16, 2015
`Sep. 16, 2015
`Aug. 24, 2015
`Aug. 04, 2015
`Jul. 21, 2015
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`TEAS WITHDRAWAL OF ATTORNEY RECEIVED-FIRM RETAINS
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`REGISTERED-PRINCIPAL REGISTER
`NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`STATEMENT OF USE PROCESSING COMPLETE
`USE AMENDMENT FILED
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`TEAS STATEMENT OF USE RECEIVED
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`SOU EXTENSION 4 GRANTED
`SOU EXTENSION 4 FILED
`SOU TEAS EXTENSION RECEIVED
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`SOU EXTENSION 3 GRANTED
`SOU EXTENSION 3 FILED
`SOU TEAS EXTENSION RECEIVED
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`SOU EXTENSION 2 GRANTED
`SOU EXTENSION 2 FILED
`SOU TEAS EXTENSION RECEIVED
`NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
`SOU EXTENSION 1 GRANTED
`SOU EXTENSION 1 FILED
`SOU TEAS EXTENSION RECEIVED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`NOA E-MAILED - SOU REQUIRED FROM APPLICANT
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`PUBLISHED FOR OPPOSITION
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`EXAMINER'S AMENDMENT ENTERED
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`EXAMINERS AMENDMENT E-MAILED
`EXAMINERS AMENDMENT -WRITTEN
`PREVIOUS ALLOWANCE COUNT WITHDRAWN
`WITHDRAWN FROM PUB - OG REVIEW QUERY
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`

`

`800387
`
`800387
`800387
`
`Jul. 20, 2015
`Jul. 20, 2015
`Jul. 20, 2015
`Jul. 20, 2015
`Jul. 13, 2015
`Jul. 13, 2015
`Jul. 13, 2015
`Jul. 13, 2015
`Jan. 12, 2015
`Jan. 12, 2015
`Jan. 12, 2015
`Dec. 05, 2014
`Dec. 05, 2014
`Dec. 05, 2014
`Jun. 05, 2014
`Jun. 05, 2014
`Jun. 05, 2014
`Apr. 29, 2014
`Apr. 28, 2014
`Apr. 28, 2014
`Oct. 28, 2013
`Oct. 28, 2013
`Oct. 28, 2013
`Oct. 03, 2013
`Oct. 03, 2013
`Sep. 26, 2013
`Sep. 23, 2013
`Mar. 29, 2013
`Mar. 29, 2013
`Mar. 29, 2013
`Mar. 28, 2013
`Dec. 21, 2012
`Dec. 15, 2012
`
`EXPARTE APPEAL TERMINATED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS REQUEST FOR RECONSIDERATION RECEIVED
`EX PARTE APPEAL-INSTITUTED
`JURISDICTION RESTORED TO EXAMINING ATTORNEY
`EXPARTE APPEAL RECEIVED AT TTAB
`NOTIFICATION OF FINAL REFUSAL EMAILED
`FINAL REFUSAL E-MAILED
`FINAL REFUSAL WRITTEN
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`ASSIGNED TO LIE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`Current Location: TMEG LAW OFFICE 101
`
`Date in Location: Jan. 10, 2024
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 6092/0056
`
`Date Recorded: Jun. 27, 2017
`
`Supporting
`Documents:
`
`assignment-tm-6092-0056.pdf
`
`Name: REGEN LAB SA
`
`Legal Entity Type: SOCIÉTÉ ANONYME (SA)
`
`Assignment 1 of 1
`
`Registrant: REGENLAB USA LLC
`
` 
`
`Pages: 6
`
`Assignor
`
`Execution Date: Jun. 13, 2017
`
`State or Country
`Where Organized:
`
`SWITZERLAND
`
`Assignee
`
`

`

`Name: REGENLAB USA LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 575 MADISON AVENUE
`NEW YORK, NEW YORK 10022
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`
`Correspondent
`Name:
`
`STEPHEN F. W. BALL JR.
`
`Correspondent
`Address:
`
`600 SUMMER STREET, WHITMYER IP GROUP LLC
`STAMFORD, CT 06901
`
`Domestic Representative - Not Found
`Proceedings
`
`Summary
`
`Number of
`Proceedings:
`
`4
`
`Type of Proceeding: Opposition
`
` 
`
`Proceeding
`Number:
`
`91290404
`
`Status: Pending
`
`Interlocutory
`Attorney:
`
`MARY CATHERINE FAINT
`
`Name: Ramunas, John
`
`Correspondent
`Address:
`
`NEIL PARK
`LAW OFFICES OF NEIL PARK
`PO BOX 660475
`ARCADIA CA UNITED STATES , 91066
`
`Filing Date: Mar 19, 2024
`
`Status Date: Mar 19, 2024
`
`Defendant
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`REGENEPEUTICS
`
`npark@neilparklaw.com , trademarks@neilparklaw.com
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`97892983
`
`Plaintiff(s)
`
`Name: RegenLab USA, LLC
`
`Correspondent
`Address:
`
`LINDSAY KAPLAN
`L. KAPLAN LAW
`PO BOX 4062
`KINGSTON NY UNITED STATES , 12402
`
`lindsay@lkaplanlaw.com , apigni@regenlab.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`REGEN
`
`REGEN
`
`Entry Number
`
`History Text
`
`3
`2
`1
`
`INSTITUTED
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`FILED AND FEE
`
`Prosecution History
`
`Proceeding
`Number:
`
`91289214
`
`Status: Pending
`
`Type of Proceeding: Opposition
`
`Filing Date: Jan 16, 2024
`
`Status Date: Jan 16, 2024
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`5428592
`
`6441220
`
`Due Date
`
`Apr 28, 2024
`
`85800387
`
`86228133
`
`Date
`
`Mar 19, 2024
`Mar 19, 2024
`Mar 19, 2024
`
`

`

`Interlocutory
`Attorney:
`
`ANDREW P BAXLEY
`
`Name: Regenlab USA LLC
`
`Correspondent
`Address:
`
`LINDSAY KAPLAN
`L. KAPLAN LAW
`PO BOX 4062
`KINGSTON NY UNITED STATES , 12402
`
`Defendant
`
`lindsay@lkaplanlaw.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`REGENCOVID
`
`Name: Regeneron Pharmaceuticals, Inc.
`
`Correspondent
`Address:
`
`PAUL C. LLEWELLYN
`ARNOLD & PORTER KAYE SCHOLER LLP
`250 WEST 55TH STREET
`NEW YORK NY UNITED STATES , 10019-9710
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`90894731
`
`Plaintiff(s)
`
`Correspondent e-
`mail:
`
`trademarkdocketing@arnoldporter.com , Paul.Llewellyn@arnoldporter.com , Hafeez.Khan@arnoldporter.com , Amit.Kesar@arnoldport
`er.com
`
`Associated marks
`
`Mark
`
`REGEN-COV
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`90284296
`
`6495144
`
`Entry Number
`
`History Text
`
`Prosecution History
`
`8
`7
`6
`5
`4
`3
`2
`1
`
`ANSWER TO COUNTERCLAIM
`TRIAL DATES REMAIN AS SET
`ANSWER TO COUNTERCLAIM
`ANSWER TO COUNTERCLAIM DUE ( DUE DATE)
`ANSWER AND COUNTERCLAIM ( FEE)
`INSTITUTED
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`FILED AND FEE
`
`Date
`
`Mar 29, 2024
`Mar 29, 2024
`Mar 28, 2024
`Feb 29, 2024
`Feb 25, 2024
`Jan 16, 2024
`Jan 16, 2024
`Jan 16, 2024
`
`Due Date
`
`Mar 30, 2024
`
`Feb 25, 2024
`
`Proceeding
`Number:
`
`91285875
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`MARY CATHERINE FAINT
`
`Type of Proceeding: Opposition
`
`Filing Date: Jul 05, 2023
`
`Status Date: Jan 09, 2024
`
`Defendant
`
`Name: APEX Biologix, LLC
`
`Correspondent
`Address:
`
`SHAWN J. KOLITCH
`KOLITCH ROMANO DASCENZO GATES LLC
`621 SW MORRISON STREET #1100
`PORTLAND OR UNITED STATES , 97205
`
`docketing@krdglaw.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`REGENVET
`
`Name: RegenLab USA LLC
`
`Correspondent LINDSAY KAPLAN
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`90815438
`
`Plaintiff(s)
`
`

`

`Address: L. KAPLAN LAW
`PO BOX 4062
`KINGSTON NY UNITED STATES , 12402
`
`Correspondent e-
`mail:
`
`Associated marks
`
`lindsay@lkaplanlaw.com
`
`Mark
`
`REGEN
`
`REGEN
`
`REGENCELL
`
`REGENKIT
`
`REGENLAB
`
`REGENPLASMA
`
`Entry Number
`
`History Text
`
`Prosecution History
`
`8
`7
`6
`5
`4
`3
`2
`1
`
`TERMINATED
`BD DECISION: OPP SUSTAINED
`NOTICE OF DEFAULT
`TRIAL DATES RESET
`D MOT FOR EXT W/O CONSENT
`INSTITUTED
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`FILED AND FEE
`
`Proceeding
`Number:
`
`85800387
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`Type of Proceeding: Exparte Appeal
`
`Filing Date: Jul 13, 2015
`
`Status Date: Jul 20, 2015
`
`Name: REGEN LAB SA
`
`Correspondent
`Address:
`
`Kevin J. McDevitt
`NEAL & MCDEVITT, LLC
`1776 ASH ST
`NORTHFIELD IL UNITED STATES , 60093-3001
`
`Plaintiff(s)
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`85800387
`
`86228133
`
`79083268
`
`79062709
`
`79083216
`
`79087242
`
`Date
`
`Jan 09, 2024
`Jan 09, 2024
`Nov 22, 2023
`Oct 12, 2023
`Aug 14, 2023
`Jul 05, 2023
`Jul 05, 2023
`Jul 05, 2023
`
`5428592
`
`6441220
`
`3995805
`
`3718804
`
`3922275
`
`3991894
`
`Due Date
`
`Aug 14, 2023
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`REGEN
`
`pto@nealmcdevitt.com,larnott@nealmcdevitt.com,kmcdevitt@nealmcdevitt.com
`
`Application Status
`
`Serial Number
`
`Entry Number
`
`History Text
`
`4
`3
`2
`1
`
`TERMINATED
`INSTITUTED
`APPEAL ACKNOWLEDGED; CASE REMANDED
`APPEAL TO BOARD
`
`Prosecution History
`
`Registration
`Number
`
`Due Date
`
`85800387
`
`Date
`
`Jul 20, 2015
`Jul 13, 2015
`Jul 13, 2015
`Jul 13, 2015
`
`

`

`Reg. No. 5,428,592
`
`Registered Mar. 20, 2018
`
`REGENLAB USA LLC (DELAWARE LIMITED LIABILITY COMPANY)
`575 Madison Avenue
`New York, NEW YORK 10022
`
`Int. Cl.: 5, 10
`
`Trademark
`
`CLASS 5: Biological preparations for medical use, namely, platelet concentrate, platelet rich
`plasma, platelet poor plasma, fibrin gel, platelet rich fibrin, cell extracts, cell concentrates,
`stem cells, hyaluronic acid, chitosan or any combinations thereof; such goods not including
`implantable medical devices for use in the regeneration of natural tissue
`
`Principal Register
`
`FIRST USE 2-28-2017; IN COMMERCE 2-28-2017
`
`CLASS 10: Medical devices, namely, kits comprising tubes, medical tubes, vials, jars, bags,
`pouches, cartridges, bottles, cylinders or pods, syringes, needles, holders, gels, connectors,
`tourniquets, plaster, pads, masks, pliers, creams, spatulas, flasks, discs, dispensers, nozzles,
`stoppers,
`adapters,
`cannulas,
`transfer devices, ampoules, backstops, anticoagulants,
`coagulation activators, hyaluronic acid and chitosan, intended for the preparation of platelet
`concentrate, platelet rich plasma, platelet poor plasma, fibrin gel, platelet rich fibrin, cell
`extracts, cell concentrates, stem cells, hyaluronic acid, chitosan or any combinations thereof;
`kits intended for tissue and cellular regeneration, rejuvenation, healing and repair comprised
`of receptacles, namely, medical tubes, vials, jars, bags, pouches, cartridges, bottles, cylinders
`or pods, syringes and needles for regenerative medicine, isolation and application of platelets
`and cells, for example from blood, fat, bone marrow, stem cells and other tissue, and kits
`comprising medical tubes, syringes and needles for regenerative medicine, the preparation of
`a platelet concentrate, the isolation and application of platelets and cells, for example from
`blood, fat, bone marrow, stem cells and other tissue; such goods not including implantable
`medical devices for use in the regeneration of natural tissue
`
`FIRST USE 2-28-2017; IN COMMERCE 2-28-2017
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`OWNER OF U.S. REG. NO. 3995805, 3906899, 3927934
`
`SER. NO. 85-800,387, FILED 12-12-2012
`
`

`

`Generated on: This page was generated by TSDR on 2024-04-10 12:34:57 EDT
`
`Mark: REGEN
`
`US Serial Number: 86228133
`
`US Registration
`Number:
`
`6441220
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Mar. 21, 2014
`
`Registration Date: Aug. 03, 2021
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-re