ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1402050
`12/14/2024
`
`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
`
`NUOVA OMPI S.R.L.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`12/15/2024
`
`VIA MOLINELLA, 17
`PIOMBINO DESE (PD), I-35017
`ITALY
`
`JASON L DEFRANCESCO
`DEFRANCESCOLAW
`110 DUNGANNON BLVD., STE 101
`WILMINGTON, NC 28403
`UNITED STATES
`Primary email: jasond@defrancesco.law
`Secondary email(s): ipoffice@defrancesco.law
`No phone number provided
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`79368445
`
`Publication date
`
`06/18/2024
`
`Opposition filing
`date
`
`International re-
`gistration no.
`
`Applicant
`
`12/14/2024
`
`1726780
`
`Opposition period
`ends
`
`International re-
`gistration date
`
`12/15/2024
`
`12/23/2022
`
`Cochlear Limited
`1 UNIVERSITY AVE,
`MACQUARIE UNIVERSITY NSW 2109
`AUSTRALIA
`
`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: Pharmaceutical preparations for the dia-
`gnosis, treatment, management or amelioration of inner ear or auditory system deficiencies; medical
`preparations for the diagnosis, treatment, management or amelioration of inner ear or auditory sys-
`tem deficiencies; pharmaceutical drugs, namely, pharmaceutical preparations for the diagnosis, treat-
`ment, management or amelioration of inner ear or auditory system deficiencies; corticosteroids; ster-
`oids, namely, dexamethasone; anti-inflammatory drugs; chemical reagents for medical purposes;
`chemical preparations for medical purposes, for the diagnosis, treatment, management or ameliora-
`tion of inner ear or auditory system deficiencies; all the foregoing for or in relation to the inner ear or
`auditory system of a human
`
`Class 009. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Downloadable and recorded software for
`
`

`

`managing clinical data; computer software, recorded for data analysis, databases management, and
`managing data for use in the diagnosis, treatment, management or amelioration of inner ear or audit-
`ory system deficiencies; downloadable computer programs for data analysis, databases manage-
`ment, and managing data for use in the diagnosis, treatment, management or amelioration of inner
`ear or auditory system deficiencies; computer software applications, downloadable for data analysis,
`databases management, and managing data for use in the diagnosis, treatment, management or
`amelioration of inner ear or auditory system deficiencies; all the foregoing for use in the diagnosis,
`treatment, management or amelioration of inner ear or auditory system deficiencies; none of the fore-
`going in the field of digital imaging or digital image processing, analysis, measurement, display com-
`parison or simulation of effects of surgical or product treatment outcomes
`
`Class 010. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Medical devices, namely, hearing aids,
`cochlear implants made from artificial materials and in-ear monitors for medical purposes, compon-
`ents of medical devices, namely, sound processors and cochlear implants made from artificial materi-
`als adapted for use with prosthetic hearing devices; prosthetic hearing devices and components of
`prosthetic hearing devices, namely, hearing aids, sound processors and cochlear implants made
`from artificial materials adapted for use with prosthetic hearing devices; accessories for use with
`prosthetic hearing devices, namely, wireless transmitters and receivers for use with hearing aids;
`medical implants, namely, an implanted hearing device in the nature of a cochlear implant made from
`artificial materials, for delivering pharmaceutical preparations, medical preparations, pharmaceutical
`drugs, corticosteroids, dexamethasone, anti-inflammatory drugs, chemical reagents, or chemical pre-
`parations to the inner ear or auditory system of a human
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No bona fide intent to use mark in commerce for
`identified goods or services
`
`Dilution by blurring
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols
`
`Fraud on the USPTO
`
`Trademark Act Section 1(b), 44(e) or 66(a)
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Section 2(a)
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Other
`
`Bad Faith
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`4797494
`
`Register
`
`Principal
`
`Registration date
`
`08/25/2015
`
`Application date
`
`11/20/2014
`
`Foreign priority
`date
`
`05/23/2014
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NEXA
`
`NONE
`
`Class 010. First use: First Use: None First Use In Commerce: None
`Dental syringes; hypodermic syringes; medical syringes; disposable syringes; in-
`jection syringes in the nature of syringe barrels; syringes for medical purposes
`and for injections [ ; medical fluid injectors; droppers for administering medica-
`tion, sold empty; dropper bottles for administering medication, sold empty; med-
`ical diagnostic saliva vials; flasks for parenteral nutrition for medical use ]
`Class 020. First use: First Use: None First Use In Commerce: None
`
`

`

`Packaging containers of plastic; [ non-metallic closures for containers; plastic
`stoppers for industrial packaging containers; plastic medication containers for
`commercial use; ] containers for transport, not of metal; containers, not of metal
`for commercial use; [ non-metal and non-paper closures for containers; contain-
`ers for medications sold empty for commercial use; ] nonmetal and non-paper
`containers for storage or transport; non-metallic containers, namely, capsules
`sold empty for beauty care and cosmetic products [ ; plastic caps; non-metallic
`and non-paper closures and caps for cartons, containers, and bottles; non-
`metallic plastic bottle frames for containers; non-metallic corner fittings for con-
`tainers ]
`
`U.S. application
`no.
`
`79369340
`
`Application date
`
`02/08/2023
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`02/01/2023
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NEXA FLEX
`
`NONE
`
`Class 009. First use: First Use: None First Use In Commerce: None
`Laboratory equipment and supplies, namely, test tubes and vials for laboratory
`use; scientific laboratory equipment and supplies, namely, vials for scientific pur-
`poses
`Class 010. First use: First Use: None First Use In Commerce: None
`Syringes for injections; injectors for medical purposes, namely, medical syr-
`inges, syringes for injections, namely autoinjectors and disposable dispenser
`syringes for laboratory use; dental syringes; disposable syringes; injectors for
`medical purposes, namely, medical fluid injectors being insulin pumps and infu-
`sion pumps
`Class 020. First use: First Use: None First Use In Commerce: None
`Containers, not of metal or paper, for storage and transport; Capsules being
`non-metallic containers, namely plastic medication containers for commercial
`use and packaging containers of plastic
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`Application date
`
`NONE
`
`NONE
`
`NONE
`
`NONE
`
`NEXA
`
`manufacture and distribution of laboratory and pharmaceutical
`devices, wares and packaging; vials, test tubes, syringes, medical in-
`jectors, delivery systems, pumps, medical containers, dentistry, hor-
`mone therapy, laboratory equipment, supplies, and transport; Dental
`syringes; hypodermic syringes; medical syringes; disposable syr-
`inges; injection syringes in the nature of syringe barrels; syringes for
`medical purposes and for injections;Packaging containers of plastic;
`containers for transport, not of metal; containers, not of metal for com-
`mercial use; nonmetal and non-paper containers for storage or trans-
`port; non-metallic containers, namely, capsules sold empty for beauty
`care and cosmetic products; Laboratory equipment and supplies,
`namely, test tubes and vials for laboratory use; scientific laboratory
`equipment and supplies, namely, vials for scientific purposes; Syr-
`inges for injections; injectors for medical purposes, namely, medical
`syringes, syringes for injections, namely autoinjectors and disposable
`
`

`

`dispenser syringes for laboratory use; dental syringes; disposable syr-
`inges; injectors for medical purposes, namely, medical fluid injectors
`being insulin pumps and infusion pumps; Containers, not of metal or
`paper, for storage and transport; Capsules being non-metallic contain-
`ers, namely plastic medication containers for commercial use and
`packaging containers of plastic
`
`Attachments
`
`79162371#TMSN.png( bytes )
`79369340#TMSN.png( bytes )
`NOOP Dec 14 2024 NEXA.pdf(90718 bytes )
`
`Signature
`
`/jd/
`
`Name
`
`Date
`
`JASON L DEFRANCESCO
`
`12/14/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re application no. 79368445
`Mark: NEXA
`Published in Official Gazette June 18, 2024
`
`
`NUOVA OMPI S.R.L.,
`
`Opposer,
`v.
`
`
`
`Cochlear Limited,
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition No.: ______________
`
`
`
`NOTICE OF OPPOSITION
`PURSUANT TO 15 U.S.C. § 1063
`
`
`
`
`
`
`
`In the matter of trademark application Serial No. 79368445 filed by Cochlear
`
`Limited for registration of the word NEXA as published in the Official Gazette of June 18,
`
`2024, NUOVA OMPI S.R.L. as exclusive owner of the mark NEXA believes it will be
`
`damaged by use and registration of its mark to Applicant, and hereby opposes same as further
`
`explained.
`
`
`
`1.
`
`NUOVA OMPI S.R.L. (the “Opposer”) is an entity according to the laws of
`
`Italy with an address at Via Molinella, 17 PIOMBINO DESE (PD) ITALY I-35017. Opposer
`
`operates in the pharmaceutical industry which includes the manufacture and distribution of
`
`laboratory and pharmaceutical devices, wares and packaging.
`
`
`
`2.
`
`Opposer is the exclusive owner of the word NEXA (“Opposer’s Mark”) as a
`
`trademark in the United States for goods and services that relate to and include, manufacture
`
`and distribution of laboratory and pharmaceutical devices, wares and packaging. This
`
`includes, but is not limited to vials, test tubes, syringes, medical injectors, delivery systems,
`
`
`
`1
`
`

`

`pumps, medical containers, dentistry, hormone therapy, laboratory equipment, supplies, and
`
`transport. Opposer’s rights are evidenced by and based on (i) exclusive and on-going
`
`common law use in US commerce, incl. see references from
`
`https://www.stevanatogroup.com/en/offering/drug-containment-solutions/syringe-
`
`systems/polymer-syringes/, https://www.ondrugdelivery.com/ompi-nexa-syringes-ideal-
`
`solution-demanding-drugs/; (ii) Opposers incontestable trademark registration and use for the
`
`word NEXA (US 4797494), registered August 25, 2015 on,
`
`Dental syringes; hypodermic syringes; medical syringes;
`IC 010:
`disposable syringes; injection syringes in the nature of syringe barrels;
`syringes for medical purposes and for injections; and,
`
`Packaging containers of plastic; containers for transport,
`IC 020:
`not of metal; containers, not of metal for commercial use; nonmetal and
`non-paper containers for storage or transport; non-metallic containers,
`namely, capsules sold empty for beauty care and cosmetic products
`
`
`and as further based on (iii) Opposers trademark application and use for words NEXA FLEX,
`
`Serial no. 79369340, filed Feb. 8, 2023 on,
`
`Laboratory equipment and supplies, namely, test tubes and
`IC 009:
`vials for laboratory use; scientific laboratory equipment and supplies,
`namely, vials for scientific purposes;
`
`Syringes for injections; injectors for medical purposes,
`IC 010:
`namely, medical syringes, syringes for injections, namely autoinjectors
`and disposable dispenser syringes for laboratory use; dental syringes;
`disposable syringes; injectors for medical purposes, namely, medical fluid
`injectors being insulin pumps and infusion pumps; and,
`
`Containers, not of metal or paper, for storage and transport;
`IC 020:
`Capsules being non-metallic containers, namely plastic medication
`containers for commercial use and packaging containers of plastic
`
`
`(the foregoing goods and services, ¶¶ 1-2 being collectively referred to herein as “Opposers
`Goods and Services”).
`
`
`
`2
`
`

`

`3.
`
`Cochlear Limited (the “Applicant”) owns US Trademark Application No.
`
`79368445 (“Applicants Application”), a Section 66(A)-based application filed December 23,
`
`2022 for registration of the word NEXA directed to pharmaceuticals, medical devices and
`
`related software, namely,
`
`Pharmaceutical preparations for the diagnosis, treatment,
`IC 005:
`management or amelioration of inner ear or auditory system deficiencies;
`medical preparations for the diagnosis, treatment, management or
`amelioration of inner ear or auditory system deficiencies; pharmaceutical
`drugs, namely, pharmaceutical preparations for the diagnosis, treatment,
`management or amelioration of inner ear or auditory system deficiencies;
`corticosteroids; steroids, namely, dexamethasone; anti-inflammatory
`drugs; chemical reagents for medical purposes; chemical preparations for
`medical purposes,
`for
`the diagnosis,
`treatment, management or
`amelioration of inner ear or auditory system deficiencies; all the foregoing
`for or in relation to the inner ear or auditory system of a human;
`
`Downloadable and recorded software for managing clinical
`IC 009:
`data; computer software,
`recorded
`for data analysis, databases
`management, and managing data for use in the diagnosis, treatment,
`management or amelioration of inner ear or auditory system deficiencies;
`downloadable computer programs
`for data analysis, databases
`management, and managing data for use in the diagnosis, treatment,
`management or amelioration of inner ear or auditory system deficiencies;
`computer software applications, downloadable for data analysis, databases
`management, and managing data for use in the diagnosis, treatment,
`management or amelioration of inner ear or auditory system deficiencies;
`all the foregoing for use in the diagnosis, treatment, management or
`amelioration of inner ear or auditory system deficiencies; none of the
`foregoing in the field of digital imaging or digital image processing,
`analysis, measurement, display comparison or simulation of effects of
`surgical or product treatment outcomes; and,
`
`Medical devices, namely, hearing aids, cochlear implants
`IC 010:
`made from artificial materials and in-ear monitors for medical purposes,
`components of medical devices, namely, sound processors and cochlear
`implants made from artificial materials adapted for use with prosthetic
`hearing devices; prosthetic hearing devices and components of prosthetic
`hearing devices, namely, hearing aids, sound processors and cochlear
`implants made from artificial materials adapted for use with prosthetic
`
`
`
`3
`
`

`

`hearing devices; accessories for use with prosthetic hearing devices,
`namely, wireless transmitters and receivers for use with hearing aids;
`medical implants, namely, an implanted hearing device in the nature of a
`cochlear
`implant made
`from artificial materials,
`for delivering
`pharmaceutical preparations, medical preparations, pharmaceutical drugs,
`corticosteroids, dexamethasone, anti-inflammatory drugs, chemical
`reagents, or chemical preparations to the inner ear or auditory system of a
`human
`
`
`(the foregoing collectively referred to herein as “Applicants Goods”).
`
`
`4.
`
`On November 28, 2023, the examining attorney for Opposers trademark
`
`application, NEXA FLEX, Serial no. 79369340 refused registration to Opposer under Section
`
`2(d) based on a likelihood of confusion with the mark in Applicant’s Application.
`
`5.
`
`Opposer being unaware of the Applicant, does not authorize or consent to
`
`Applicants Application, and brings this action opposing same. NEXA is unique, distinctive
`
`and well-known as being owned exclusively by Opposer who is entitled to a broad scope of
`
`protection. Opposer has undeniable long term use, priority and objects to Applicant’s bad
`
`faith adoption. Registration should be refused based on foregoing allegations and damages
`
`thereto as based on,
`
`Priority, Likelihood of Confusion, and False Association
`
`6.
`
`Opposer incorporates all allegations herein and further states it has been
`
`engaged in long term, exclusive and continuous use and intent to use and expand NEXA on
`
`or in association with Opposer’s Goods and Services in interstate commerce, which earliest
`
`first use date is prior to any date that can be legally claimed by Applicant.
`
`
`
`7.
`
`NEXA is well known, if not famous in the industry directed to Opposer, as
`
`based on Opposers long term use, investments in advertisements, volume and reputation that
`
`
`
`4
`
`

`

`existed prior to the filing of Applicant’s Application. And, Opposer has a presumption of
`
`validity and ownership of NEXA over Applicant as based on Opposers incontestable
`
`registration.
`
`
`
`
`
`
`
`8.
`
`Applicant’s Goods, if not identical, are complementary, ancillary, and closely
`
`related to Opposer’s Goods and Services, and travel or shall travel in the same channels of
`
`trade to the same consumers as Opposer.
`
`
`
`9.
`
`Use of NEXA by Applicant shall point uniquely and unmistakably to
`
`Opposer such that consumers who encounter NEXA on or in association with Applicant’s
`
`Goods will be confused and recognize it as pointing to Opposer or as being falsely associated
`
`thereto.
`
`
`
`10.
`
`The opposed mark in Applicants Application is identical, sufficiently similar
`
`or substantially similar to Opposer’s Mark such that use of NEXA by Applicant on or in
`
`association with Applicant’s Goods is likely to cause confusion with Opposer and Opposer’s
`
`Mark.
`
`
`
`11.
`
`Applicant’s Goods are sufficiently or substantially similar if not identical to
`
`Opposer’s Goods and Services such that use of NEXA by Applicant on or in association with
`
`Applicant’s Goods is likely to cause confusion with Opposer and Opposer’s Mark.
`
`
`
`12.
`
`Registration of Applicant’s Mark will cause the relevant purchasing public to
`
`falsely and erroneously assume and thus be confused, misled, or deceived into believing
`
`Applicant’s Goods put in commerce by Applicant under NEXA under are made, licensed,
`
`controlled, sponsored, authorized or in some way connected, related, or associated with
`
`Opposer, which is not true, but damaging to the Opposer, who does not otherwise consent.
`
`
`
`5
`
`

`

`Applicant’s Application is Void
`
`13. Opposer incorporates all allegations herein and further states Applicant’s
`
`Application is void ab initio because Applicant lacked use or bona fide intent to use NEXA
`
`on Applicant’s Goods in US commerce at the time of filing Applicant’s Application.
`
`Fraud On The USPTO, and Bad Faith
`
`14.
`
`Opposer incorporates the foregoing allegations herein and further states that
`
`at the time of filing Applicant’s Application, Applicant was aware of the Opposer, and aware
`
`of the Opposers superior, prior, and exclusive rights and entitlement in and to NEXA on or in
`
`association with Applicants Goods.
`
`15.
`
`At the time of filing Applicant’s Application, Applicant was aware it did not
`
`own nor have exclusive ownership rights in and to NEXA superior to Opposer, but
`
`knowingly represented the contrary to the USPTO, under oath.
`
`16.
`
` Representations made by Applicant to the USPTO therefore, were material
`
`misrepresentations of fact in connection with procuring a trademark registration with
`
`intention to deceive and is considered bad faith – condition that if noticed to the USPTO
`
`would have caused the Applicants Application to be refused.
`
`17.
`
`The USPTO relied on the truthfulness of the Applicant’s representations,
`
`which induced the USPTO to approve Applicants Application for publication, a benefit
`
`Applicant anticipated but was not entitled.
`
`18.
`
`Applicant’s Application was filed with the purpose and intent of usurping
`
`and benefitting from the goodwill of Opposers Mark, falsely suggesting a connection with
`
`the Opposer, and to disrupt and cause confusion in the marketplace.
`
`
`
`6
`
`

`

`WHEREFORE the Opposer NUOVA OMPI S.R.L. prays Application Serial No.
`
`79368445 therefore be denied registration based upon damages and violations supported by
`
`any claim within the breath of allegations herein that include Likelihood of Confusion, False
`
`Association, Lack of Intent, Fraud and Bad Faith.
`
`
`
`
`
`
`
`
`
`
`
`Dated: December 14, 2024
`
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`By:
`
`
`
`
`
`
`
`Respectfully,
`DeFrancescoLaw
`
`/Jason DeFrancesco/
`Jason DeFrancesco
`110 Dungannon Blvd., Ste 101
`Wilmington, NC 28403
`(910) 833-5428
`
`For Opposer,
`NUOVA OMPI S.R.L.
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing was served via e–mail
`
`upon Jason M. Vogel < tmadmin@ktslaw.com > on December 14, 2024.
`
`
`
`
`
`/Jason DeFrancesco/
`Jason DeFrancesco
`
`
`
`7
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`