Proceeding
`Party
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA59209
`ESTTA Tracking number:
`12/24/2005
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92044073
`Defendant
`Celgene Corporation
`Celgene Corporation
`7 Powder Horn Drive
`Warren, NJ 07059
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`CAMILLE M. MILLER
`COZEN O'CONNOR, P.C.
`1900 MARKET STREET
`PHILADELPHIA, PA 19103
`
`Reply in Support of Motion
`Camille M. Miller
`cmiller@cozen.com
`/Camille M. Miller/
`12/24/2005
`replymsj.pdf ( 11 pages )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
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`TRADEMARK TRIAL AND APPEAL BOARD
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`CENTOCOR, INC.,
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`Petitioner,
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`V.
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`CELGENE CORPORATION
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`Registrant.
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`Cancellation No. 92/044,073
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`REPLY BRIEF IN SUPPORT OF REGISTRANT CELGENE’S CROSS-MOTION FOR
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`SUMMARY JUDGMENT
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`The burden of proof in a cancellation action is that the plaintiff must prove his case by a
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`preponderance of the evidence. See Massey Junior Coll., Inc. v. Fashion Inst. of Tech, 492 F.2d
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`1399, 1402- 04 (CCPA 1974). Petitioner “Centocor” did not conduct E discovery in this
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`cancellation action whatsoever. Centocor simply argues that contrary to the Examining
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`Attorney’s determination, the specimens found to be sufficient by the Examining Attorney did
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`not support use in commerce. Centocor ignores the evidentiary record presented by Registrant
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`“Celgene” in the prosecution of the IMIDS mark which is supported by a preponderance of the
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`evidence. Put another way, Centocor has failed to discover and/or present any evidence to tip the
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`balance in its favor, and has not provided reasoning to justify that this Board should overturn the
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`well—contemplated determination of the Examining Attorney. Thus, the Board should grant
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`Celgene’s cross motion for summary judgment because “there is an absence of evidence to
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`support the nonmoving party’s case.” See Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d
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`1545 (TTAB 1990), aff’d, 951 F.2d 330 (Fed Cir. 1991).
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`

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`1.
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`Centocor Has Not Filed A Response to Celgene’s Cross- Motion For
`Summary Judgment As Centocor Solely Filed a “Reply To Respondent
`Celgene Corporation’s Opposition To Centocor, Inc.’s Motion For
`Summary Judgmert.”
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`Centocor’s title of its December 12, 2005 submission to the TTAB (the “Filing”) is a
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`“REPLY TO RESPONDENT CELGENE CORPORATION’S OPPOSITION TO CENTOCOR,
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`INC.’S MOTION FOR SUMMARY JUDGMENT.” However, the first sentence of Centocor’s
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`Filing states that Centocor “responds to [Celgene’s] cross motion for summary judgment.” Since
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`the title of the Filing identifies to the Board that it constitutes a reply in support of Centocor’s
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`Motion for Summary Judgment, the entire Filing should be stricken. Centocor is attempting to
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`have an extra bite at the apple in their papers. This tactic is explicitly rejected by both the
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`Trademark Appeal Board Manual of Procedure (“TBMP”) and case law since it unfair and
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`improper. While the TBMP permits a party to respond to a motion for summary judgment, and
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`also permits a reply brief filed in support of a motion, Centocor must properly identify that
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`which it is submitting. See TBMP § 502.02(b). Since Centocor’s Filing is identified as a reply
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`to Celgene’s response to Centocor’s motion for summary judgment, Celgene requests that the
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`Board strike, or in the alternative give no consideration to, the entire Filing. A reply brief may
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`not exceed 10 pages, and Centocor’s Filing is 15 pages in length. See 37 CFR § 2.l27(a). More
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`than a mere technicality, Centocor’s filing is a full 50 percent longer than permitted. If a brief
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`violates the length limit, it may be given no consideration by the Board. See TBMP § 539; see
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`American Optical Corp. v. Atwood Oceanics, Inc., 177 USPQ 585 (Comm’r l973)(brief which
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`was too long and not in proper form was not considered). Consequently, the striking of
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`Centocor’s filing is requested.
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`2.
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`The December 9, 2005 Declaration of Denise McGinn Attached to
`Centocor’s Filing Should Be Given No Consideration Because It
`Includes New Matter In Violation of Rule 56(c) of the F.R.C.P.
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`No consideration should be given to Denise McGinn’s December 9, 2005 declaration
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`(“McGinn’s Declaration”), and the corresponding portions of Centocor’s Filing should be
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`disregarded as well. Pursuant to Federal Rule of Civil Procedure 56(c), if the moving party
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`introduces new evidence in a reply brief or memoranda, the Board should not accept and
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`consider the new evidence without first affording the non— moving party an opportunity to
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`respond. See Seay v. Tennessee Valley Auth., 339 F.3d 454, 481-82 (6th Cir. 2003). The Board
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`does not allow for sur—reply briefs so Celgene does not have an opportunity to respond to the
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`reply brief. See TBMP § 502.02(b); see No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB
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`2000).
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`Thus, the Board should strike the entirety of McGinn’s Declaration as it constitutes new
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`evidence, and is first discussed in Centocor’s reply memorandum. Further, the Board should
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`strike the portions of Centocor’s Filing which is premised upon McGinn’s Declaration, which
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`relates to (1) the commercial nature of Celgene’s sales presentations involving IMIDS, in
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`general; (2) the commercial nature of sales presentation Celgene gave to Centocor in 2000; and
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`(3) the prominence of use of the IMIDS mark in specimens demonstrating use of IMIDS at sales
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`presentations, which were submitted by Celgene in its prosecution of the IMIDS trademark as
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`specimens of use. Accordingly, the Board should strike the corresponding portions of
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`Centocor’s Filing, including: (1) the first sentence, paragraph two, of the introduction; (2) the
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`first sentence, paragraph three, of the introduction; (3) pages eight (8) through the first full
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`paragraph on page ten (10). In the alternative, the Board should at least provide Celgene with an
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`opportunity to fully respond with its own rebuttal declarations.
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`

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`3.
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`Centocor Relies Upon Erroneous Standards As To What Constitutes
`Sufficient Trademark Use
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`Centocor repeatedly asserts that Celgene has not used the IMIDS mark in commerce
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`because no actual sales of the IMIDS compounds were consummated via sales presentations or at
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`tradeshow displays. See e. g. Filing p. 3 (stating “[IMIDS] has never actually been used in
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`connection with the sale or shipment of a product.”) However, Centocor applies an erroneous
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`standard to its analysis, as it has long been held that actual sales and/or shipments are not
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`required to establish sufficient trademark use, but use of a mark in public is:
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`Evidence showing first, adoption, and second, use in a way sufficiently public to
`identify or distinguish the marked goods in an appropriate segment of the public
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`mind as those of the adopter of the mark, is competent to establish ownership,
`even without evidence of actual sales.
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`New England Duplicating Co. v. Mendes, 190 F.2d 415, 418 (1st Cir. 1951).
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`Celgene’s IMIDS compounds are not a “product” as Centocor would have this Board
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`believe, but are pharmaceutical preparations. Throughout its prosecution of the IMIDS mark,
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`Celgene clearly identified that its IMIDS compounds were pharmaceutical preparations still in
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`development through research and clinical trials. For example, Celgene identified to the
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`Examining Attorney that it engaged in Cooperative Research and Development Agreements to
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`perform preclinical and clinical evaluations on IMIDS drug candidates. See Maria Pasquale’s
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`Dec. 15, 2003 Declaration (‘Pasquale Declaration”) ‘][ 3. Celgene also provided a press release
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`stating that “Celgene currently has two IMiDs, Revirnid (TM) and Actirnid (TM), in clinical
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`trials for cancer and inflammatory disease.” See Exhibit 4 attached to Celgene’s Motion To
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`Amend Mark To Conform to Specimens. Further, Celgene provided an excerpt from a slide
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`presentation and a trade show booth panel that clearly identifies the clinical phases of testing for
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`Celgene’s IMIDS compounds. See Exhibit 2 attached to Celgene’s Motion for Reconsiderations
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`entitled “Multiple Results— The Celgene Pipeline.”
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`In this clinical development and trial context, Celgene marketed its IMIDS compounds to
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`pharmaceutical and biotechnology companies, research institutions, and key opinion leaders. See
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`Pasquale Declaration ‘][ 4; Motion for Reconsideration p. 4; and Response to Office Action pp. 1-
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`2. Accordingly, Celgene produced specimens demonstrating that it marketed its IMIDS
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`compounds to research institutions, such as the National Cancer Institute, through a Cooperative
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`Research and Development Agreement, and to pharmaceutical companies, such as Centocor,
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`through both medical trade shows and slide presentations to potential purchasers or users.
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`Celgene is not precluded from establishing trademark rights in the IMIDS mark merely because
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`its IMIDS compounds are not—FDA approved and not available for purchase by the general
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`public at local drug stores. The Lanham Act states that:
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`a mark shall be deemed to be in use in commerce (1) on goods when (A) it is placed in
`any manner on the goods. . .or the displays associated therewith. .
`. or if the nature of the
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`goods makes such placement impracticable, then on documents associated with the goods
`or their sale. See 15 USC ll27.
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`At both trade shows and at sales presentations, potential purchasers and licensing partners
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`are sophisticated parties requiring detailed information to assess the risk associated with whether
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`a specific class of compounds warrants the investment of time, human capital, and commitment
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`of substantial financial resources for development and clinical testing purposes. Thus,
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`purchasing and licensing decisions are based upon considerations such as whether the drug can
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`be taken orally, the chemical composition of the drug, the possible mechanisms of action, the
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`results of various clinical trials, whether it is safe, effective, what diseases the drug could
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`potentially treat, or the expected marketplace of treatment options. Bringing the compound to
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`the trade shows or slide presentations does not relay any of this information that a potential
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`purchaser would be interested in knowing prior to purchase or use. Thus, research institutions,
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`pharmaceutical companies, and doctors interested in participating in clinical trials cannot
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`determine the relevant information they need to make a purchasing decision by merely looking at
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`the compound itself.
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`A pharmaceutical company’s decision to purchase or license the IMIDS compounds
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`hinges upon a contemplated decision about the data associated with the IMIDS compounds. A
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`research institution’s decision to partner with Celgene for implementing clinical trials of
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`Celgene’s IMIDS compounds also hinges upon understanding the IMIDS compounds and what
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`they can potentially treat. Physicians too need to understand certain properties of the IMIDS
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`compounds before signing up their patients for clinical trials. Celgene submitted sufficient
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`specimens demonstrating the use of IMIDS on documents displayed at slide shows and trade
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`show booths for potential purchasers and users that clearly identify the mark IMIDS as
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`associated with the compounds, as well as with the sale and/or licensing of such compounds,
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`such that they satisfy the Lanham Act § 15 USC ll27. Thus, potential purchasers, and users,
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`and doctors interested in participating in clinical trials could identify the IMIDS mark based
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`upon these displays and associate these compounds to the IMIDS term.
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`A preponderance of the evidence demonstrates that Celgene engaged in commercial
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`“use,” and submitted at least one specimen of record demonstrating such commercial use of the
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`IMIDS mark at (1) sales presentations to individual pharmaceutical companies; and/or (2) trade
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`show booths at medical conventions. No genuine issues exist, and the evidentiary record
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`establishes that no factual issues exist as to Celgene’s use of the IMIDS mark. Thus, as a matter
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`of law, Celgene is entitled to judgment regarding its commercial use of the IMIDS mark.
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`4.
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`Celgene’s Specimens Evidencing Use of the IMIDS Mark at Sales
`Presentations or Medical Trade Shows Constitutes Sufficient Use in
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`Commerce To Support Celgene’s Federal Registration
`The evidence of record demonstrates that Celgene engaged in a concerted effort to
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`present sales and licensing opportunities to research institutions and to pharmaceutical
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`companies for its IMIDS compounds. See Pasquale Declaration ‘][ 4. The specimen identified as
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`Exhibit 1, attached to Celgene’s Motion for Reconsideration, entitled “IMIDS” was used at
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`licensing and/or sales presentations to promote the IMIDS compounds and their unique
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`mechanism of action. See Exhibit 1 attached to Celgene’s Motion for Reconsideration; see
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`Office Action Response p. 1. Exhibit 1 explicitly identifies the unique properties of IMIDS
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`compounds which “inhibit the inflammatory cytokines TNF— alpha and interleukin (IL)—1 beta
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`while stimulating the anti— inflammatory cytokine IL-10.” Exhibit 1 acts as an inducement for
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`interested parties to purchase and/or license for development the IMIDS compounds. From
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`Viewing this specimen, potential purchasers could directly associate the mark with the goods.
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`Thus, this specimen exemplifies a display associated with the goods, and a sufficient specimen
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`for registration purposes. See In re Grfin Pollution Control Corp., 517 F.2d 1356 (CCPA
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`1975).
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`Celgene also displayed Exhibit 1 at its trade show booth presentations as a showcase or
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`display associated with the IMIDS compounds. See Pasquale Declaration ‘J1 6. In the trade show
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`context, this specimen sufficiently demonstrates trademark use. See Exhibit 1 attached to
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`Celgene’s Motion for Reconsideration, entitled ‘TMlDS.” Celgene used the IMIDS mark in
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`commerce by communicating the mark to the public at numerous trade shows Via displays
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`showcasing the IMIDS compounds at Celgene’s booths. See Pasquale Declaration ‘][ 6. Exhibit
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`1, attached to Celgene’s Motion for Reconsideration prominently displays the IMIDS mark
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`because (1) the IMIDS mark is more than twice the size of other terms appearing on the page;
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`and (2) the IMIDS mark is further distinguished with a “tm” at the end of the term, further
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`conveying that Celgene uses IMIDS as a trademark, and Celgene claims proprietary trademark
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`rights in the term as well; and (3) sufficiently identifies what Celgene’s IMIDS compounds are
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`and what they do.
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`Likewise, the specimen identified as Exhibit 2, attached to Celgene’s Motion for
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`Reconsideration, entitled “Multiple Results—The Celgene Pipeline,” constitutes a copy of an
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`excerpt from a slide presentation used to sell and/or license IMIDS compounds to prospective
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`customers. See Pasquale Declaration ‘][ 7; see Motion for Reconsideration p. 8; Office Action
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`Response pp. 1-2. Exhibit 2, includes Celgene's IMIDS trademark, distinguished with a “tm”
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`symbol at the end of the term, together with a listing of other Celgene products on the market
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`and in development by Celgene. Exhibit 2 distinguishes Celgene’s IMIDS compounds as
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`separate and apart from its other proprietary compounds. Exhibit 2 clearly depicts the IMIDS
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`mark as compounds inclusive of REVIMID and ACTIMID. Finally, Exhibit 2 demonstrates how
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`Celgene identified IMIDS compounds as in early stages of FDA testing, and communicated the
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`indications that IMIDS compounds treat. Exhibit 2 is not precluded from establishing sufficient
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`trademark use solely because more than one trademark is presented. See In re Dell, Inc. at 9, 12
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`(Serial No. 75/85l,765)(August 12, 2004).
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`Exhibit 2 also was displayed at Celgene’s trade show booth panels at medical
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`conventions that showcased the IMIDS compounds.1 The information contained therein also
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`constitutes another sufficient specimen for demonstrating trademark use at the tradeshow booth.
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`At the tradeshow booths, Celgene also provided viewings of and distributed CDs entitled
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`“IMiDsTM Multiple Mechanisms Acting in Concert,” which were also submitted as specimens
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`along with the IMIDS trademark application, and are attached to Maria Pasquale’s Dec. 15, 2003
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`declaration. Celgene distributed these CDs at trade show booths and at conferences, and
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`1 The same information of which also was used at presentations to license or sell IMIDS
`compounds to pharmaceutical companies.
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`provided these CDs to interested trade show booth visitors, which supports Celgene’s assertion
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`that it prominently displayed the IMIDS mark at trade shows, conferences, and during sales
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`presentations. Thus, this specimen exemplifies a display associated with the goods, and a
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`sufficient specimen for registration purposes. See In re Grififin Pollution Control Corp., 517
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`F.2d 1356 (CCPA 1975).
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`Celgene’s display of the IMIDS mark at slide presentations and medical trade shows is
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`uncontroverted. Nor is it controverted that Celgene utilized its trade show booth for purposes of
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`licensing and/or sales of its IMIDS compounds. Thus, this issue of commercial use at slide
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`presentations and medical trade shows can be decided on summary judgment. Exhibits 1 & 2
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`evidence actual trademark use and support Celgene’s federal registration. Thus, summary
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`judgment should be granted in Celgene’s favor.
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`5.
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`Summary Judgment Should Be Granted in Celgene’s Favor
`Regardless of the Admissibility of Denise McGinn’s December 9, 2005
`Declaration Because McGinn’s Declaration Has No Bearing On
`Either Exhibit 1 or Exhibit 2 Submitted As Specimens
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`Exhibits 1 and 2, which were used in connection with slide presentations to solicit
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`customers to purchase IMIDS compounds, were not displayed at Celgene’s sales presentation to
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`Centocor in 2000. Only the Exhibit entitled “2 Classes of Analogues” attached to Celgene’s
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`Motion for Reconsideration was displayed at the 2000 meeting involving Centocor. Thus,
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`McGinn’s Declaration has no bearing on whether or not Exhibits 1 and 2 constitute sufficient
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`specimens demonstrating trademark use at either trade shows and/or sales presentations. As
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`such, this Board should give no evidentiary consideration to McGinn’s Declaration in connection
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`with the acceptability of either Exhibit 1 or Exhibit 2.
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`Further, the file history directly contradicts the contentions contained in McGinn’s
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`Declaration that Celgene’s sales presentations are merely informational. Celgene’s slide show
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`specimens illustrate that which is being directly communicated to potential purchasers and
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`explains the science and research behind the IMIDS compounds. Thus, with the information
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`provided at the sales presentation, a customer could identify IMIDS compounds and make an
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`informed decision as to whether or not to purchase and/or license these IMIDS compounds.
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`At a minimum, it is a question of fact as to whether the conclusions drawn by McGinn’s
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`Declaration are in fact true because they directly contradict assertions Celgene makes throughout
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`the file history. McGinn’s Declaration fails to identify which specimens she is referencing, and
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`at most could only apply to the specimen entitled “2 Classes of Analogues,” and not to Exhibits 1
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`or 2 as argued herein. It is uncontroverted that McGinn’s Declaration has no bearing on the
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`sufficiency of Exhibits 1 or 2. Thus, the Board should not consider McGinn’s Declaration in its
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`analysis of the acceptability of either Exhibit 1, entitled “IMIDS,” or Exhibit 2, entitled
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`“Multiple Results—The Celgene Pipeline.”
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`6.
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`Conclusion
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`The file history does not indicate which specimen the Examining Attorney believed
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`evidenced commercial use, though for federal registration purposes only one specimen must
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`evidence commercial use. See 15 U.S.C. § l05l(a)(l)(C). Centocor has not conducted any
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`discovery as to this cancellation matter, nor has it introduced any evidence that tip the
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`evidentiary scales in its favor. Centocor merely challenges the legal conclusions determined by
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`the Examining Attorney, and not the underlying factual basis behind the specimens submitted.
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`The uncontroverted facts clearly support that either Exhibit 1 or Exhibit 2 supports the
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`Examining Attomey’s well—contemplated decision to permit registration of the IMIDS mark, and
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`thus the Board should grant Celgene’s motion for summary judgment.
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`Dated: December 24, 2005
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`/Camille M. Miller/
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`10
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`Certificate of Service
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`I, the undersigned, hereby certify that a true and correct copy of the foregoing was sent to
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`counsel by first class mail, postage prepaid, on the date below to:
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`Counsel for Centocor, Inc;
`Wilson M. Browne, Esq.
`Drinker Biddle & Reath
`
`One Logan Square
`18th & Cherry Streets
`Philadelphia, PA 19103
`Telephone: 215.988 .270
`Facsimile: 215.988.2757
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`Norm D. St. Landau
`
`Christen M. English
`Drinker Biddle & Reath LLP
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`1500 K Street, N.W., Suite 1100
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`Washington, D.C. 20005-1209
`Telephone: 202.842.8800
`Facsimile: 202.842.8465
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`Dated: December 24, 2005
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`/Camille M. Miller/
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`11