ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1364520
`06/12/2024
`
`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
`
`Mylan Pharmaceuticals Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`06/12/2024
`
`3711 COLLINS FERRY ROAD
`MORGANTOWN, WV 26505
`UNITED STATES
`
`CECILIA R. DICKSON
`THE WEBB LAW FIRM
`420 FT. DUQUESNE BLVD., SUITE 1200
`ONE GATEWAY CENTER
`PITTSBURGH, PA 15222
`UNITED STATES
`Primary email: trademarks@webblaw.com
`Secondary email(s): cdickson@webblaw.com, gvadala@webblaw.com
`412-471-8815
`
`Docket no.
`
`9157-2401660
`
`Applicant information
`
`Application no.
`
`97709366
`
`Opposition filing
`date
`
`Applicant
`
`06/12/2024
`
`Iris Medicine, Inc.
`2630 BANCROFT WAY
`BERKELEY, CA 94704
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`02/13/2024
`
`Opposition period
`ends
`
`06/12/2024
`
`Class 001. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Clinical preparations in the nature of chem-
`icals and biochemicals for use in the manufacture of medical preparations for treatment of genetic
`diseases
`
`Class 005. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Pharmaceutical preparations for the treat-
`ment of genetic diseases; pharmaceutical preparations, namely, RNA therapeutics for use in the
`treatment of genetic diseases
`
`Class 042. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Development of pharmaceutical prepara-
`tions and medicines for genetic diseases; testing, inspection, research, and development of pharma-
`ceutical preparations for genetic diseases
`
`
`
`Filing date:
`
`ESTTA1364520
`06/12/2024
`
`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
`
`Mylan Pharmaceuticals Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`06/12/2024
`
`3711 COLLINS FERRY ROAD
`MORGANTOWN, WV 26505
`UNITED STATES
`
`CECILIA R. DICKSON
`THE WEBB LAW FIRM
`420 FT. DUQUESNE BLVD., SUITE 1200
`ONE GATEWAY CENTER
`PITTSBURGH, PA 15222
`UNITED STATES
`Primary email: trademarks@webblaw.com
`Secondary email(s): cdickson@webblaw.com, gvadala@webblaw.com
`412-471-8815
`
`Docket no.
`
`9157-2401660
`
`Applicant information
`
`Application no.
`
`97709366
`
`Opposition filing
`date
`
`Applicant
`
`06/12/2024
`
`Iris Medicine, Inc.
`2630 BANCROFT WAY
`BERKELEY, CA 94704
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`02/13/2024
`
`Opposition period
`ends
`
`06/12/2024
`
`Class 001. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Clinical preparations in the nature of chem-
`icals and biochemicals for use in the manufacture of medical preparations for treatment of genetic
`diseases
`
`Class 005. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Pharmaceutical preparations for the treat-
`ment of genetic diseases; pharmaceutical preparations, namely, RNA therapeutics for use in the
`treatment of genetic diseases
`
`Class 042. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Development of pharmaceutical prepara-
`tions and medicines for genetic diseases; testing, inspection, research, and development of pharma-
`ceutical preparations for genetic diseases
`
`
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`7406582
`
`Register
`
`Principal
`
`Registration date
`
`06/04/2024
`
`Word mark
`
`Design mark
`
`BREYNA
`
`Application date
`
`05/15/2023
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Jul 31, 2023 First Use In Commerce: Jul 31,
`2023
`Pharmaceutical preparations for the treatment of asthma in patients 6 years of
`age and older and maintenance treatment of airflow obstruction and reducing
`exacerbations in patients with chronic obstructive pulmonary disease (COPD) in-
`cluding chronic bronchitis and/or emphysema; Anti-inflammatories
`
`U.S. registration
`no.
`
`7171278
`
`Register
`
`Principal
`
`Registration date
`
`09/19/2023
`
`Word mark
`
`Design mark
`
`BREYNA
`
`Application date
`
`04/07/2022
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the stylized wording "BREYNA" in blue with seven green
`marks in different lengths representing a spray of liquid drops between the "Y"
`and the "N".
`
`Class 005. First use: First Use: Jul 31, 2023 First Use In Commerce: Jul 31,
`2023
`Pharmaceutical preparations for the treatment of asthma in patients 6 years of
`age and older and maintenance treatment of airflow obstruction and reducing
`exacerbations in patients with chronic obstructive pulmonary disease (COPD) in-
`cluding chronic bronchitis and/or emphysema; Anti-inflammatories
`
`Attachments
`
`97936938#TMSN.png( bytes )
`97351431#TMSN.png( bytes )
`Notice of Opposition.pdf(418274 bytes )
`Exhibit A.pdf(1072358 bytes )
`
`Signature
`
`Name
`
`/Cecilia R. Dickson/
`
`Cecilia R. Dickson
`
`
`
`Date
`
`oerree024
`06/12/2024
`
`
`
`MYLAN PHARMACEUTICALS, INC.,
`
`
`
`
`
`IRIS MEDICINE, INC.,
`
`
`
`Opposer,
`
`
`
`v.
`
`
`
`Applicant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Opposition No. __________________
`
`Application Serial No. 97/709,366
`
`Trademark: BRNA
`
`Published: February 13, 2024
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`NOTICE OF OPPOSITION
`
`Mylan Pharmaceuticals Inc., (“Opposer”), by and through its undersigned counsel, hereby
`
`alleges that it will be damaged by registration of BRNA in International Classes 01, 05, and 42 as
`
`shown in Application Serial No. 97/709,366 (the “Application”), and hereby opposes the
`
`Application under the provisions of 15 U.S.C. § 1063.
`
`As grounds for opposing the Application, Opposer avers as follows:
`
`1.
`
`Opposer is a corporation legally organized under the laws of the State of West
`
`Virginia and having a principal place of business at 3711 Collins Ferry Road, Morgantown, West
`
`Virginia 26505.
`
`2.
`
`Opposer is part of a global pharmaceutical company that offers a growing portfolio
`
`of more than 7,500 products, including prescription generic, branded generic, brand-name and
`
`biosimilar drugs, as well as over-the-counter (OTC) remedies.
`
`3.
`
`Opposer is the owner of U.S. Registration No. 7,406,582 for the mark BREYNA in
`
`International Class 05 for “Pharmaceutical preparations for the treatment of asthma in patients 6
`
`years of age and older and maintenance treatment of airflow obstruction and reducing
`
`exacerbations in patients with chronic obstructive pulmonary disease (COPD) including chronic
`
`bronchitis and/or emphysema; Anti-inflammatories”, and U.S. Registration No. 7,171,278 for the
`
`
`
`mark BREYNA and Design in International Class 05 for “Pharmaceutical preparations for the
`
`treatment of asthma in patients 6 years of age and older and maintenance treatment of airflow
`
`obstruction and reducing exacerbations in patients with chronic obstructive pulmonary disease
`
`(COPD) including chronic bronchitis and/or emphysema; Anti-inflammatories” (collectively, the
`
`“BREYNA Marks”). Copies of the registrations for Opposer’s BREYNA Marks are attached as
`
`Exhibit A.
`
`4.
`
`Since at least as early as 2023, Opposer and related affiliates have continuously used
`
`the BREYNA Marks in commerce in connection with pharmaceutical preparations for the treatment
`
`of asthma, COPD, and/or emphysema.
`
`5.
`
`Opposer and related affiliates have diligently and continuously developed and
`
`expanded its goodwill in its BREYNA Marks.
`
`6.
`
`Opposer’s federal registrations for the BREYNA Marks are valid and subsisting in
`
`law and in full force and effect, were duly and legally issued, and constitute prima facie evidence
`
`of the validity of the marks registered and constitute constructive notice of Opposer’s ownership
`
`of the marks in accordance with Sections 7(b) and 22 of the Trademark Act of 1946, 15 U.S.C. §§
`
`1057(b) and 1072.
`
`7.
`
`Opposer and related affiliates have invested a substantial amount of time, effort,
`
`and money in advertising and promoting products offered in connection with the BREYNA Marks
`
`and have continuously and extensively used the BREYNA Marks in the United States in
`
`connection with pharmaceutical preparations for the treatment of asthma, COPD, and/or
`
`emphysema.
`
`8.
`
`Because of Opposer’s significant and exclusive use of the BREYNA Marks in
`
`connection with pharmaceutical preparations for the treatment of asthma, COPD, and/or
`
`2
`
`
`
`emphysema, the public has come to associate any such goods or related goods bearing the term
`
`BREYNA with Opposer.
`
`9.
`
`Upon information and belief, Iris Medicine, Inc. (“Applicant”), is a corporation
`
`with a principal place of business at 2630 Bancroft Way, Berkeley, California 94704.
`
`10.
`
`Applicant filed the Application on an intent-to-use basis on December 8, 2022,
`
`seeking registration of BRNA in International Class 01 for “Clinical preparations for use in
`
`medical preparations for treatment of genetic diseases”; in International Class 05 for
`
`“Pharmaceutical preparations for the treatment of genetic diseases; pharmaceutical preparations,
`
`namely, RNA therapeutics for use in the treatment of genetic diseases”; and in International Class
`
`42 for “Development of pharmaceutical preparations and medicines for genetic diseases; testing,
`
`inspection, research, or development of pharmaceutical preparations for genetic diseases”.
`
`11.
`
`On December 15, 2023, Applicant amended the Application’s identification of
`
`goods and services in International Class 01 to “Clinical preparations in the nature of chemicals
`
`and biochemicals for use in the manufacture of medical preparations for treatment of genetic
`
`diseases”, and in International Class 42 to “Development of pharmaceutical preparations and
`
`medicines for genetic diseases; testing, inspection, research, and development of pharmaceutical
`
`preparations for genetic diseases.” No changes were made to International Class 05.
`
`12.
`
`13.
`
`Applicant’s mark was published for opposition on February 13, 2024.
`
`Opposer used its BREYNA Marks and applied for its registrations well prior to any
`
`actual use of Applicant’s mark.
`
`14.
`
`Applicant’s mark is confusingly similar in sight, sound, and appearance to
`
`Opposer’s marks.
`
`3
`
`
`
`15.
`
`Applicant’s goods and services are likely to be sold in the same channels of trade
`
`as Opposer’s goods.
`
`16.
`
`Upon information and belief, the use and registration by Applicant of the BRNA
`
`trademark will enable Applicant to utilize and trade on the goodwill established by Opposer in its
`
`BREYNA Marks.
`
`17.
`
`Applicant’s use of BRNA on or in connection with its goods and services in
`
`International Classes 01, 05, and 42 is likely to cause confusion or to cause mistake or will deceive
`
`the public into believing that said goods emanate from Opposer and/or are licensed by Opposer
`
`and/or are approved by Opposer.
`
`18.
`
`Applicant’s mark suggests an affiliation or connection between Applicant and
`
`Opposer, where none exists. Opposer is not affiliated or connected with Applicant or its goods
`
`and services, nor has Opposer endorsed or sponsored Applicant or its goods and services.
`
`19.
`
`Opposer has no control over the nature and quality of the goods and services that
`
`will be offered by Applicant. If Applicant is permitted to register BRNA for goods and services
`
`in International Classes 01, 05, and 42, the goodwill associated with Opposer’s BREYNA Marks
`
`will be adversely affected.
`
`20.
`
`21.
`
`15 U.S.C. §§ 1052, 1053, 1063 and 1125 bar Applicant’s mark from registration.
`
`Accordingly, Opposer will be damaged if Applicant is permitted to register BRNA
`
`in International Classes 01, 05, and 42.
`
`22.
`
`Hence, Applicant’s Application for BRNA should be refused registration on the
`
`basis that the mark used on the goods and services applied for is likely to cause confusion with
`
`Opposer’s BREYNA Marks. Thus, the Application should be refused under either or both 15
`
`U.S.C. §§ 1052(d) and 1063(a).
`
`4
`
`
`
`WHEREFORE, Opposer respectfully prays that the registration sought by Applicant be
`
`refused and that this Opposition be sustained.
`
`Dated: June 12, 2024
`
`
`
`
`
`
`
`Respectfully submitted,
`
`THE WEBB LAW FIRM
`
`
`
`s/Cecilia R. Dickson
`Cecilia R. Dickson (PA ID No. 89348)
`Maximilian D. Meese (Reg. No. 73,757)
`One Gateway Center
`420 Ft. Duquesne Blvd., Suite 1200
`Pittsburgh, PA 15222
`412.471.8815
`412.471.4094 (fax)
`cdickson@webblaw.com
`mmeese@webblaw.com
`trademarks@webblaw.com
`Attorneys for Opposer, Mylan
`Pharmaceuticals Inc.
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 12th day of June, 2024, I electronically filed the foregoing
`
`NOTICE OF OPPOSITION with the TTAB using the ESTTA system. A true and correct of
`
`same was also served, via email, upon the following:
`
`THE WEBB LAW FIRM
`
`
`
`/Cecilia R. Dickson/
`Cecilia R. Dickson
`
`
`
`
`Syed Abedi
`SEED IP LAW GROUP LLP
`701 5th Avenue, Suite 5400
`Seattle, WA 98104
`USTM.Docketing@SeedIP.com
`(Counsel for Applicant)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`
`
`ited States of Amery,
`Guited States Patent and Trademark Office
`lly
`
`BREYNA
`
`Reg. No. 7,406,582
`
`Registered Jun. 04, 2024
`
`Mylan Pharmaceuticals Inc. (WEST VIRGINIA CORPORATION)
`3711 Collins Ferry Road
`Morgantown, WEST VIRGINIA 26505
`
`Int. CL: 5
`
`Trademark
`
`Principal Register
`
`CLASS5: Pharmaceutical preparations for the treatment of asthmain patients 6 years of
`age and older and maintenance treatment of airflow obstruction and reducing
`exacerbations in patients with chronic obstructive pulmonary disease (COPD) including
`chronic bronchitis and/or emphysema; Anti-inflammatories
`
`FIRST USE 7-31-2023; INCOMMERCE7-31-2023
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO
`
`ANY PARTICULAR FONTSTYLE, SIZE OR COLOR
`
`SER. NO. 97-936,938, FILED 05-15-2023
`
`
`
`KotiKilbyVidat
`
`Director of the United States
`Patent and Trademark Office
`
`
`
`
`
`ited States of Amery,
`Guited States Patent and Trademark Office
`lly
`Breyna
`
`EY
`
`Reg. No. 7,171,278
`
`Registered Sep. 19, 2023
`
`Mylan Pharmaceuticals, Inc. (WEST VIRGINIA CORPORATION)
`3711 Collins Ferry Road
`Morgantown, WEST VIRGINIA 26505
`
`Int. CL: 5
`
`Trademark
`
`Principal Register
`
`CLASS5: Pharmaceutical preparations for the treatment of asthma in patients 6 years of
`age and older and maintenance treatment of airflow obstruction and reducing
`exacerbations in patients with chronic obstructive pulmonary disease (COPD)including
`chronic bronchitis and/or emphysema; Anti-inflammatories
`
`FIRST USE 7-31-2023; INCOMMERCE7-31-2023
`
`The color(s) blue and green is/are claimed as a feature of the mark.
`
`The mark consists of the stylized wording "BREYNA"in blue with seven green marks
`in different lengths representing a spray of liquid drops between the "Y" and the "N".
`
`SER. NO. 97-351,431, FILED 04-07-2022
`
`
`
`KotiKilbyVidat
`
`Director of the United States
`Patent and Trademark Office
`
`
`
`
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