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`EXPRESS MAIL NO. EL915073410US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PETITION TO CANCEL
`
`In the matter of trademark Registration No.: 2,181,004
`
`Registration Date: August 11, 1998
`
`Illlllllllllllllllllllllllllllllllllllllllllllllll
`
`For the mark:
`
`ICOGEN
`
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`U.S. PIt0rlt& TM01‘cITM Mall Hep! D1. #70
`
`Icagen, Inc.
`Petitioner,
`v.
`
`Icogen Corporation
`Registrant.
`
`Cancellation No.
`
`.
`
`:
`.
`
`- — - - - - — - - - — - - - - — — - - — - - - - - — — - - - —:
`
`05/06/€002 FSHITH
`
`00390249 213300;,
`
`01 «T833175
`
`303,5‘; 3;;
`
`Commissioner for Trademarks
`BOX TTAB/FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`PETITION TO CANCEL
`
`Petitioner, Icagen, Inc. (“Petitioner”), a Delaware corporation with an office located at 4222
`
`Emperor Boulevard, Suite 350, Durham, North Carolina and a mailing address at P.O. Box 14487,
`
`Research Triangle Park, NC 27709, submits this Petition to Cancel dated May 2, 2002.
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`.4)
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`EXPRESS MAIL NO. EL915073410US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PETITION TO CANCEL
`
`In the matter of trademark Registration No.: 2,181,004
`
`Registration Date: August 11, 1998
`
`Illlllllllllllllllllllllllllllllllllllllllllllllll
`
`For the mark:
`
`ICOGEN
`
`°5‘°2'2°°2
`U.S. PIt0rlt& TM01‘cITM Mall Hep! D1. #70
`
`Icagen, Inc.
`Petitioner,
`v.
`
`Icogen Corporation
`Registrant.
`
`Cancellation No.
`
`.
`
`:
`.
`
`- — - - - - — - - - — - - - - — — - - — - - - - - — — - - - —:
`
`05/06/€002 FSHITH
`
`00390249 213300;,
`
`01 «T833175
`
`303,5‘; 3;;
`
`Commissioner for Trademarks
`BOX TTAB/FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`PETITION TO CANCEL
`
`Petitioner, Icagen, Inc. (“Petitioner”), a Delaware corporation with an office located at 4222
`
`Emperor Boulevard, Suite 350, Durham, North Carolina and a mailing address at P.O. Box 14487,
`
`Research Triangle Park, NC 27709, submits this Petition to Cancel dated May 2, 2002.
`
`J
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`E
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`5
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`-'
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`H&M: l0425l .2
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`
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`EXPRESS MAIL NO. EL915073410US
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`To the best of Petitioner's knowledge, the name and address of the current owner of
`
`Registration No. 2181004 is Icogen Corporation (“Registrantf’), a Washington corporation located
`
`at 454 N. 34* Street, Seattle, WA 98103.
`
`The above-identified Petitioner believes that it has been, and will continue to be, damaged
`
`by the above—identified registration of the mark “ICQGEN” for “research and development services
`
`in the field of pharmaceutical drugs, in International Class 042”. (the “Services”), and hereby
`
`petitions to cancel the same.
`
`Petitioner is engaged in offering, using the trade name Icagen, throughout the United States,
`
`various goods and services to others which goods and services are similar in nature to, move within
`
`the same channels of trade as, and are within the same field of, Registrant’s Services.
`
`The grounds for cancellation are as follows:
`
`1.
`
`Petitioner was incorporated as a Delaware corporation on or about November 23,
`
`1992 and has remained active as a validly existing corporation since that time;
`
`2.
`
`Petitioner has been operating under the trade name Icagen, Inc. since at least 1992;
`
`3.
`Petitioner has obtained common law rights based on use in commerce in the
`trademark and trade name “ICAGEN”;
`
`5
`
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`4.
`
`Registrant obtained registration of the.mark “ICOGEN” for “research and
`
`development services in the field of pharmaceutical drugs, in International Class 042” on August
`
`11, 1998 based on an intent-to-use application filed on December 19, 1995;
`
`5.
`
`Petitioner, since at least 1992 under the trade name Icagen, Inc., has been providing
`
`services in the ordinary course of business which are substantially similar to Registrant’s Services,
`
`and therefore has priority of use;
`
`H&M: 104251 .2
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`EXPRESS MAIL N0. EL915073410US
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`6.
`
`Petitioner filed a trademark application for the mark “ICAGEN”, as evidenced by
`
`Application Serial No. 76/301114 filed on August 17, 2001, for “pharmaceutical preparations for
`
`the treatment of atrial fibrillation, sickle cell anemia, urinary incontinence, and central nervous
`
`system diseases; anti—convulsant preparations; anti-inflammatory preparations; ion channel
`
`modulators, in International Class 005”;
`
`7.
`
`Petitioner has a valid and legal right to describe its goods and services by use of the
`
`term “ICAGEN”;
`
`8.
`
`Petitioner has expended considerable sums of money and considerable efforts in
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`promoting the “ICAGEN” mark and now enjoys a high reputation with many pharmaceutical
`
`companies and research universities, and has valuable goodwill invested and symbolized by its
`
`“ICAGEN” trademark;
`
`9.
`
`Petitioner believes that a likelihood of consumer confusion exists in the relevant
`
`channels of trade due to the similarity of Registrant’s “ICOGEN” trademark and associated Services
`
`in comparison to Petitioner’s trade name and common law trademark in “ICAGEN”. Therefore, it
`
`is Petitioner’s position that Registrant’s registration should be cancelled based on Petitioner’s
`
`priority of use of the trademark “ICAGEN” in association with Petitioner’s provision of research
`
`and development services and related uses;
`
`10.
`
`Petitioner has been made aware of actual confusion by potential employees of
`
`Petitioner in the form of such potential employees being misdirected to Registrant’s website while
`
`seeking out information about employment opportunities with Petitioner;
`
`l 1.
`
`By reason of the foregoing allegations, Petitioner believes that it has been harmed
`
`by, and will continue to be harmed by, the registration of the “ICOGEN” trademark as represented
`
`by Registration No. 2,181,044; and
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`H&M: 104251 .2
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`
`
`
`
`vs)“
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`EXPRESS MAIL NO. EL915073410US
`
`12.
`
`In View of the allegations above, Registrant is not entitled to maintain federal
`
`registration of the “ICOGE ” mark, is not entitled to the exclusive use of the “ICOGEN” mark, or
`
`any other confusingly similar mark, in association with the Services or any goods and services
`
`substantially similar to those of Petitioner.
`
`THEREFORE, Petitioner prays that this Petition to Cancel be sustained in favor of
`
`Petitioner and that Registration No. 2,181,004 be CANCELLED.
`
`A duplicate copy of this Petition to Cancel is enclosed.
`
`FEE: A check in the amount of $300 is enclosed as payment of the required filing fee for a
`
`cancellation proceeding in one (1) International Class.
`
`Respectfully submitted,
`
`X’?//>1
`
`Neal B. Wolgin
`Attorney for Petitioner
`
`Hutchison & Mason PLLC
`
`3110 Edwards Mill Road, Suite 100
`Raleigh, North Carolina 27612
`(919) 829-9600
`(919) 829-9696 (fax)
`
`Date: May 2, 2002
`
`Enclosures
`
`Our Ref.:
`
`ICA.38
`
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`nw0lgin@hutchlaw.com
`(919) 829-4320
`
`May 2, 2002
`
`VIA EXPRESS MAIL NO. EL915073410US
`
`Commissioner of Trademarks
`BOX: BOX TTAB/FEE
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Dear Commissioner:
`
`Enclosed please find the following:
`
`1.
`
`3.
`
`Original and Duplicate Copy of the Petition of ICAgen, Inc. to Cancel the
`mark “ICOGEN”, Registration No. 2,181,044;
`
`A check in the amount of $300.00 in payment of the filing fees; and
`
`A self—addressed, postage—prepaid postcard. Please stamp the postcard
`with the filing date and return it to the address indicated.
`
`If there are any questions regarding the enclosed, please contact the undersigned.
`
`Respectfully submitted,
`
`,....-...........v-
`
`Neal B. Wolgin
`Attorney for Applicant
`
`'
`
`Enclosures
`
`cc: Ed Gray, Esq.
`Fred D. Hutchison (without enclosures)
`
`suall8i’6l)’1°§i17o5£(i1wmdsmanRoad
`
`Raleigh, NE 27612
`
`www.hu’rcMow.com
`
`919.829.9600
`
`Fax 919.829.9696
`
`M),
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