IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Reg. No. 2,858,332 —- IMIDS
`Registered on June 29, 2004.
` E
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`v.
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`CELGENE CORPORATION
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`Petitioner,
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`Respondent.
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`:
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`I
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`:
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`Cancellation No. 92/044,073
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`1
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`MEMORANDUM IN SUPPORT OF PETITIONER’S
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`MOTION FOR SUMMARY JUDGMENT
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`Centocor, Inc. (“Centocor”) has petitioned to cancel Reg. No. 2,858,332 — IMIDS owned
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`by Celgene Corporation (“Celgene”) on the grounds that: (1) Reg. No. 2,858,332 — IMIDS is
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`void ab initio because Celgene was not using the term “imids” in commerce as a mark based on
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`the specimens submitted with the Statement of Use that Celgene filed on January 28, 2003; (2)
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`Celgene fraudulently misrepresented the specimens filed in connection with its January 28, 2003
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`Statement of Use in Celgene’s subsequent declaration and arguments in connection with
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`Application Ser. No. 76/250,132, which matured into Reg. No. 2,858,332 — IMIDS; and (3) the
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`term “imids” is so highly descriptive that it is generic as applied to the goods identified in Reg.
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`No. 2,858,332 —- IMIDS.
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`Centocor moves for summary judgment on the ground that Reg. No. 2,858,332 — IMIDS
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`is void ab initio. Centocor respectfully reserves for trial its claims that Reg. No. 2,85 8,332 —
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`IMIDS should be cancelled on grounds that Celgene committed fraud and that the term “imids”
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`is generic, should this motion be denied.
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`|lllllllllllllllll||||||ll|l||||||l||||||l||||llll
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`f1LED BY COURIER
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`U.S. Patent 8. TMOfclTM Mail Rcpt D1. #72
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`09-26-2005
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`I.
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`SUMMARY OF ARGUMENT
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`Reg. No. 2,858,332 — IMIDS should never have issued. Three of four alleged specimens
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`of use submitted by Celgene did not, in fact, show use of “imids” as a mark to identify
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`“pharmaceutical preparations, namely, cytokine inhibitory drugs; pharmaceuticals preparations
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`that modulate the immune system.” The fourth specimen was a promotional placard displayed
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`at a trade show during a period when Celgene could not lawfillly sell cytokine inhibitory drugs
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`because the United States Food and Drug Administration (“FDA”) had never approved any such
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`product identified as IMIDS by Celgene. See Exhibit A, 1] 7. In fact, no such product bearing the
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`mark IMIDS has been approved to date.
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`In support of its January 28, 2003 Statement of Use, Celgene submitted specimens that it
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`described as: (1) a trade show booth panel; (2) an excerpt from a slide presentation; (3) a clinical
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`investigator’s brochure; and (4) a press release. On their face, these specimens were insufficient
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`to demonstrate use of IMIDS as a mark in connection with “pharmaceutical preparations, namely,
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`cytokine inhibitory drugs; pharmaceuticals preparations that modulate the immune system,” and
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`the Patent and Trademark Office (“PTO”) Examining Attorney correctly rejected the Statement
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`of Use on the ground that the specimens were unacceptable.
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`To overcome the refusal, Celgene submitted arguments that the trade show booths “acted
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`as a sales counter” and a declaration signed by its general counsel, Maria Pasquale claiming that:
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`(i) “Applicant has marketed and offered to sell its IMIDS compounds to various potential
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`purchasers, such as pharmaceutical companies.” (Exhibit B, 1} 4); (ii) “Applicant attends various
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`trade shows and has offered to sell its IMIDS compounds at these shows.” (Exhibit B, 1[ 5); and
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`(iii) the trade show booths “were clearly designated .
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`.
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`. as an inducement to consummate a sale.”
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`(Exhibit B, 1] 6). However, as of the date of these submissions the FDA had not approved any
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`pharmaceu.tical product identified by the IMIDS mark for sale in the United States. Indeed, to
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`this date, tlhe FDA has never approved for sale any drug marked as “IMIDS.” Consequently,
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`1
`even if Ms. Pasquale’s and Celgene’s representations to the PTO were true , any Celgene sales of
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`a product marked as “IMIDS” would have been unlawful.
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`II.
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`FACTS
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`A.
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`File Historyfor Reg. No. 2,858,332 — IMIDS
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`1".
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`Application from Filing Through Issuance ofNotice ofAllowance
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`On May 2, 2001, Celgene filed intent-to-use Application Ser. No. 76/250,132 —1MIDS
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`for “pharmaceutical preparations, namely, cytokine inhibitory drugs; pharmaceuticals
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`preparations that modulate the immune system.” Application Ser. No. 76/250,132 was published
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`for opposition on October 9, 2001, and the PTO issued a Notice of Allowance in connection with
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`the application on January 1, 2002.
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`ii.
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`The Statement of Use
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`After filing and receiving approval of two extension requests, Celgene filed a Statement
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`of Use in connection with Application Ser. No. 76/250,132 on January 28, 2003.2 Maria
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`Pasquale, general counsel for Celgene, executed the Statement of Use claiming use in commerce
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`1 There is compelling evidence that the statements made by Celgene and Ms. Pasquale in support
`of the trade show specimens were false and misleading. During her April 21, 2005 discovery
`deposition in a civil action pending between the parties in the Eastern District of Pennsylvania,
`CV-03-5978, Ms. Pasquale admitted that: (1) the purpose of the trade show booths was merely
`to “provid[e] information about compounds that are in development”; (2) she was not aware of
`any specific instances in which Celgene offered to sell pharmaceutical preparations marked as
`IMIDS at trade shows, explaining: “It would be indirect by providing information to all of the
`various companies who attend [the trade shows].”; and (3) “I believe no actual agreement was
`entered into within the confines of those [trade shoWs].”
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`2 On January 28, 2003, Celgene also filed a request to amend the mark to add an “s” so that it
`appears as: IMIJDS.
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`of the IMIDS mark in connection with “pharmaceutical preparations, namely, cytokine inhibitory
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`drugs; pharmaceuticals preparations that modulate the immune system” at least as early as April
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`1997. The: Statement of Use further claimed: “The mark is used on labels, tags, the goods
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`themselves and in other ways customary in the trade.”
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`Celgene submitted four specimens in support of the Statement of Use:
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`(1) A page bearing the word IMIDS in all caps and stating “Novel, small-molecule
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`analogs that potentially inhibit the inflammatory cytokines TNF—alpha and interleukin
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`(IL)-1 beta while stimulating the anti-inflammatory cytokine IL-10.”;
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`(2) A page stating: “Multiple Results: The Celgene Pipeline. .
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`. .IMIDsTM” and also
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`displaying a number of additional marks and/or generics.
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`(3) Exc:erpts from an investigator’s brochure displaying a graph and the legend “IMiD1”
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`and “lMid2” and Thal/IMiDs (uM); and
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`(4) A press release from Celgene.
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`A copy of Celgene’s Statement of Use and accompanying specimens is attached as Exhibit C. At
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`the time of filing the Statement of Use, Celgene did not provide any description of the
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`specimens.
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`iii.
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`Oflice Action #1: Rejecting Statement of Use on the Basis of
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`Insufficient Specimens
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`On April 23, 2003, the PTO issued an Office Action rejecting the Statement of Use on the
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`ground that the specimens were “unacceptable as evidence of actual trademark use because [they]
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`fail[ed] to show use of the mark on or in connection with applicant’s goods in commerce.”
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`(“Office Action #1). See Exhibit D.
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`iv.
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`Celgene’s Response to Office Action #1
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`Celgene filed a response to Office Action #1 on July 25, 2003 arguing that the specimens
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`were acceptable because they constituted a display associated with the goods. See Exhibit E.
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`Specifically, Celgene’s counsel argued that Exhibits 1 and 2 “were used in connection with a
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`slide presentation to customers to solicit customers to purchase IMIDS compounds.” Id. at 1, 1] 2.
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`(emphasis added). Celgene’s counsel further asserted that “Applicant sells its IMIDS compounds
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`to purchasers. These purchasers can then perform clinical trials on varying Versions of the IMIDS
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`compounds.” Id. at 2, 1] 4 (emphasis added). Celgene did not address specimens 3 and 4 in its
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`Office Action response. Curiously, in the response, Celgene never refers to “pharmaceutical
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`preparations” or “drugs” — the goods which are, in fact, specifically identified in the trademark
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`application and for which Celgene seeks registration of its alleged mark. Instead, Celgene
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`appears to alter the identification of goods to suit its arguments and refers to its goods as
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`“compounds.”
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`v.
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`Office Action #2: Continuing Refusal to Register Application Ser. No.
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`76/250,132 — IMIDS Based on Insufficient Specimens
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`The PTO found Celgene’s arguments unpersuasive, and on October 28, 2003, issued a
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`final refusal to register the IMIDS mark on the ground that the specimens were unacceptable.
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`See Exhibit F.
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`vi.
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`Celgene’s Response to Oflice Action #2
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`Celgene filed a Motion for Reconsideration on December 15, 2003. See Exhibit G. In
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`support of the Motion for Reconsideration, Celgene attached a December 15, 2003 declaration of
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`Maria Pasquale (the “December 15, 2003 declaration”). See Exhibit B. In the December 15,
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`2003 declaration, Ms. Pasquale attested that:
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`(1) “Applicant has marketed and offered to sell its IMlDs compounds to various potential
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`purchasers, such as pharmaceutical companies.” Exhibit B, 1] 4.
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`(2) “Applicant attends Various trade shows and has offered to sell its IMIDs compounds
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`at these shows.” Id at 1] 5; and
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`(3) The trade show booths “were clearly designated .
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`.
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`. as an inducement to consummate
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`a sale.” Id. at 1] 6.
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`Four specimens were attached to the December 15, 2003 declaration. The first and third
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`specimens: attached to the December 15, 2003 declaration were identical to the first and third
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`specimens: attached to the Statement of Use. The second specimen attached to the December 15,
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`2003 declaration consisted of two pages. See id. at attachment 2. The second page was a
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`duplicate of specimen two attached to the Statement of Use. The first page was new and read:
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`“Celgene & Design, 2 Classes of Analogues based on TNF 0: Inhibition. .
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`.
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`. IMiDTM -
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`Immunornodulatory Drugs (non-PDE4 Inhibitors).” The fourth specimen attached to the
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`December 15, 2003 declaration was a copy of a CD cover and CD entitled “IMiDsTM Multiple
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`Mechanisms Acting in Concert.” Id. at attachment 4.
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`In the December 15, 2003 declaration, Ms. Pasquale identified Exhibit 1 (hereinafter
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`Specimen. #1) as a copy of a trade show booth panel from the American Society of Hematology
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`in Orlando, Florida from December 7, 2001-December 12, 2001. See id. at 1] 6. This testimony
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`directly contradicted Celgene’s response to Office Action #1 in which Celgene claimed this
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`Exhibit was an excerpt from a “slide presentation to customers to solicit customers to purchase
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`IMIDs compotmds.” Exhibit E at 1, 1] 2. Ms. Pasquale described Exhibit 2 to the December 15,
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`2003 declaration (hereinafter Specimen #2) as “copies of an excerpt from a slide presentation
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`used to offer a prospective customer its IMIDs compounds.” Exhibit B, 1] 7. Next, Ms. Pasquale
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`confirmed that Exhibit 3 to the December 15, 2003 declaration and Statement of Use (hereinafter
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`Specimen #3) was “an excerpt from a document to acquaint the clinical investigator with the
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`scientific data that was currently available for the IMIDS compounds.” Id at 1] 7. Ms. Pasquale
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`further claimed: “This investigator’s report acts as an instructional guide for the clinical
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`investigator as the clinical investigator is requested to contact Applicant regarding any questions
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`that may arise czonceming the IMIDS compound.” Id. at 1[ 8. Ms. Pasquale did not explain the
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`nature of Exhibit 4 in her December 15, 2003 declaration.
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`Based on Ms. Pasquale’s December 15, 2003 declaration, Celgene argued in the Motion
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`for Reconsideration that the trade show booth panel (Specimen #1) was a display associated with
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`the goods, and thus, sufficient to demonstrate use of the IMIDS mark in commerce. See Exhibit
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`G, 3, 1] 1. To bolster this position, Celgene claimed that the trade show booths “acted as sales
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`counters for the Applicant’s products even though the compounds being sold were not physically
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`present at the booth.” Id. Celgene also argued that the excerpts from an alleged slide
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`presentation (Specimen #2) were a point of sale display “used to offer a prospective customer its
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`IMIDS compounds.” Id. at 8, 11 2. Finally, Celgene asserted that the excerpt from the
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`investigator’s brochure (Specimen #3) “acts as an instructional guide for the clinical
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`investigator.” Id. at 9, 1] 2 Significantly, Celgene did not assert that pharmaceutical preparations
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`marked as IMIDS were ready to be shipped to anyone for use and/or clinical trials.
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`vii.
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`Issuance ofRegistration
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`Based on the Motion for Reconsideration and Ms. Pasquale’s December 15, 2003
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`declaration, the PTO accepted Celgene’s Statement of Use and issued a certificate of registration
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`for IMIDS on June 29, 2004.
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`B.
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`The FDA Has Never Approved Celgene’s Sale of a Drug Called IMIDS
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`The FDA has never approved Celgene’s sale of any pharmaceutical preparation or
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`product identified as IMiDS or IMIDS. See Declaration of Gregory Knipp, Ph.D., attached as
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`Exhibit A, '1] 7. Celgene had no pharmaceutical preparation or product identified as IMiDS or
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`IMIDS that had. been approved by the FDA for any purpose on January 28, 2003, the date of
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`Celgene’s Statement of Use. See id. at 11 7(i). Nor did Celgene have any FDA-approved
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`pharmaceutical product or preparation identified as IMiDS or IMIDS on December 15, 2003,
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`when it filed its Motion for Reconsideration and Ms. Pasquale’s appended declaration. See id. at
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`fi[ 7(ii). Indeed, even today Celgene has no pharmaceutical preparation or product identified as
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`IMiDS or IMIDS that has been approved by the FDA for any purpose. See id. at 1[ 7(iii).
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`III.
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`APPLICABLE LA W: A Registration is Void Ab Initio if the Mark is Not Used in
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`Interstate Commerce as of the Date a Claim of Use is Filed
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`Section 1 of the Lanham Act requires proof that a mark is in use in commerce before a
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`federal registration for a mark will issue. See 15 U.S.C. § 1051. “Use in commerce” is defined
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`as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a
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`right in a mark.” Id. at § 1127. A registration for a mark is void ab initio if the mark was not in
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`use in commerce in connection with the goods identified by the mark at the time a claim of use is
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`filed. See E.I. du Pont de Nemours & Co. v. Sunlyra Int 7 Inc., 35 U.S.P.Q.2d 1787, 1791
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`(T.T.A.B. 1995) (finding a use-based application void ab initio with respect to the goods in the
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`registration with which the mark had not been used); see also Pan Am. Lye Ins. Co. v. Federated
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`Mutual Ins. C0,, 226 U.S.P.Q. 914, 918 (T.T.A.B. 1985) (sustaining the opposition on the
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`ground that the specimens were insufficient to demonstrate use in commerce and noting that
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`“there were not and could not have been any bona fide transactions involving the use of [the
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`mark in connection with insurance policies because] approval to offer the new policy to the
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`public had not yet been secured from the State of Minnesota”).
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`A mark will be deemed to be in “use in commerce” when it is affixed to the goods and
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`“transported or sold in interstate commerce.” 15 U.S.C. § 1127. The requirement of affixation
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`will be met where a mark appears on: (1) labels, tags, containers for the goods, or the goods
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`themselves; (2) a display associated with the goods; or (3) “documents associated with the goods
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`or their sale” provided that it is impractical to place the mark on the goods themselves, or on
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`labels, tags, or containers for the goods. See id. ; see also TMEP § 904.04 (2005).
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`A trade show booth panel will be deemed a display associated with the goods if the mark
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`is predominately displayed on the booth and the booth acts as a “sales counter for taking orders.”
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`J. THOMAS MCCARTHY, 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 916:31 at
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`16-48 (4th ed. 2.005); see also In re Shz'pley C0,, 230 U.S.P.Q. 691, 694 (T.T.A.B. 1986). “Even
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`where the goods .
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`.
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`. are not physically available at the trade show booth, if the potential
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`purchaser has an opportunity to buy the goods at the booth, then .
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`.
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`. a mark on the booth is a
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`display associated with the goods.” 2 MCCARTHY, § 16:31 at 16-48.
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`Similarly, folders, brochures and marketing materials will qualify as displays associated
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`with the goods if there is evidence that these materials are used in point-of-sale presentations.
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`See TMEP § 904.06; see also In re Ancha Elecs., Inc., 1 U.S.P.Q.2d 1318, 1319-1320 (T.T.A.B.
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`1986). For example, an infomercial was found to be a display associated with the goods where
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`the goods were shown immediately before and after a display of the trademark and instructions
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`on how to place an order for the product were provided at “a reasonable time after the goods
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`were shown.” TMEP § 904.06; see also In re Hydron Techs., Inc., 51 U.S.P.Q.2d 1531, 1534
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`(T.T.A.B.. 1991).
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`The legislative history of the 1989 amendments to the Lanham Act provides further
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`guidance as to what constitutes acceptable specimens for marks used in connection with
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`pharmaceutical products. The shipment of pharmaceutical products bearing a mark to clinical
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`investigators will satisfy the “use in commerce” requirement. See 3 MCCARTHY § 19:110, at 19-
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`321-322 (citing to the HOUSE JUDICIARY REP. ON H.R. 100-1028, at 15 (10/3/98) and SEN.
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`JUDICIARY COMM. REP. ON S. 1883, S. Rep. No. 100-515, at 44-45 (9/15/98)).
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`Further, for a mark to meet the “use in commerce” requirement, the use must be lawful.
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`See Clorox Co. v. Armour-Dial, Inc., 214 U.S.P.Q. 850, 851 (T.T.A.B. 1982) (recognizing that
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`“[i]t has been the consistent position of this Board and the policy of the Patent and Trademark
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`Office that a ‘use in commerce’ means a ‘lawful use in commerce,’ and the shipment of goods in
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`violation of a federal statute, including the Food, Drug and Cosmetic Act, may not be recognized
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`as the basis for establishing trademark rights”); see also Clairol, Inc. v. Holland Hall Prods, Inc.,
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`165 U.S.P.Q. 214, 218 (T.T.A.B. 1970) (stating “unlawful shipments .
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`.
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`. can afford no basis for
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`registration”), superseded on other grounds by statute 15 U.S.C. § 1127; In Re Stellar
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`Int ’I. Inc., 159 U.S.P.Q. 48, 51 (T.T.A.B. 1968) (concluding that the failure to ship goods in
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`compliance with applicable regulations “constitute[s] ‘unlawful shipment’ in commerce from
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`which no trademark rights can accrue to properly form a basis for ‘use of a mark in commerce’
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`which the Pate:nt Office can properly recognize”).
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`A use will be held unlawful if “the issue of compliance has been previously determined
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`(with a finding of non-compliance) by a court or government agency having competent
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`jurisdiction under the statute involved, or where there has been a per se violation of a statute
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`regulating; a party’s goods.” Kellogg Co. v. New Generation Foods, Inc., 6 U.S.P.Q.2d 2045,
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`2047 (T.T.A.B. 1988). The Food, Drug and Cosmetic Act provides that it is unlawful to
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`“introduce: or deliver for introduction into interstate commerce any new drug, unless an approval
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`of an application filed pursuant to [the FDA rules] is effective with respect to such drug.” 21
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`U.S.C. § 355(a:).
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`IV.
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`ARGUMENT: Reg. No. 2,858,332 — IMIDS is Void Ab Initio Because the IMIDS
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`Mark Was Not in Use in Commerce as ofFiling Date of the Statement of Use.
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`Reg. No. 2,858,332 is void ab initio because the IMIDS mark was not in “use in
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`commerce” as of the filing date of the Statement of Use. Three out of the four specimens are per
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`se unacceptable to demonstrate use of a mark in connection with goods. The fourth specimen, a
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`trade show booth panel, would have been acceptable only if Celgene’s alleged sale of
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`pharmaceutical preparations bearing the IMIDS mark been approved by the FDA.
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`Celgene did not submit any specimen demonstrating use of the IMIDS mark on labels,
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`tags, containers or the goods themselves. Moreover, documents associated with the goods or
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`their sale would not have been acceptable specimens because it is not impractical to place a mark
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`on pharmaceutical products or the containers, labels and tags therefore. Accordingly, Celgene’s
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`specimens would have been acceptable only if they qualified as displays associated with the
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`goods. None of Celgene’s specimens are acceptable “displays associated with the goods.”
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`If a mark is displayed at a trade show booth far away from the relevant goods, the trade
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`show booth will be acceptable to demonstrate use of a mark if the booth acts as a sales counter.
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`See Shipley, 230 U.S.P.Q. at 694. Thus, while the goods do not have to by physically present at
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`the booth, the goods must be available for purchase at the time of the trade show. As noted in
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`footnote .3, Celgene has now admitted that it was not taking orders for any pharmaceutical
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`preparation marked as “IMIDS” at trade shows, but only providing information about
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`prospective products. However, even if Celgene had been engaged in sales of a drug marked as
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`“IMIDS” at trade shows as it represented to the PTO, such sales would have been unlawful per se
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`because Celgen.e has never received FDA approval to sell such pharmaceuticals in the United
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`States. See Exhibit A, 11 7.
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`The remaining specimens are no less flawed.
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`Specimen #2 as attached to the Statement of Use was a single page displaying: “Multiple
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`Results: The Celgene Pipeline.” This page listed a number of marks or generic terms, including
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`the IMIDS mark, but did not provide any generic or descriptive information about the IMIDS
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`product. The specimen, as resubmitted with the December 15, 2003 declaration, included an
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`additional page bearing the term IMID, without an “s” and the term SelCID. In its Motion for
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`Reconsideration, Celgene referred to this specimen as part of “point of sale presentations oflering
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`to sell its IMIDS compounds.” Exhibit G, page 8.
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`In the December 15, 2003 declaration, Ms.
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`Pasquale described the specimen as “copies of an excerpt from a slide presentation used to ofler
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`prospective customers its IMIDS compounds.” Id. (relying on the December 15, 2003 declaration
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`(Exhibit B) at ‘H 7). These recitals are tentative. They do not state that sales were consummated,
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`but merely that they could have been consummated. As such, this specimen is unacceptable.
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`Moreover, as acknowledged by Celgene, a display associated with the goods must
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`“predominately” display the mark and associate it with the goods. But specimen #2 displays not
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`only the IMIDS mark, but over a dozen or so marks and/or generics. Accordingly, this specimen
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`does not meet the requirement that the mark be “predominately” displayed. There is also no
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`evidence that the subjects of the sales presentation were provided with order information in a
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`reasonable period after the IMIDS mark was displayed and Celgene’s pharmaceutical
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`preparations were described.
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`Specimen #3 was an investigator’s brochure for CC-5013 capsules. It discussed an
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`“investigational drug” and failed to demonstrate use of the term IMIDS as a trademark. The
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`document refers only to “IMID1” and “IMID2” and also displays “Thal/lMIDs(pM).” None of
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`these displays are trademark usage of the mark IMIDS with an “s.” Even if the mark were
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`displayed in the correct manner, this context demonstrates descriptive and/or ambiguous use of
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`the term.
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`The fourth specimen attached to the Statement of Use was a press release referring to
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`“preclinical” studies of Celgene’s pharmaceutical products. See Exhibit C, at attachment 4
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`(emphasis added). This document is not an acceptable specimen because it makes only narrative
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`use of the term IMIDS as opposed to trademark use. Indeed, Celgene admitted that this
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`document. was “informational only.” Exhibit G, page 9.
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`The fourth specimen attached to the December 15, 2003 declaration was a copy of the
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`front of a CD and its cover entitled: “IMiDsTM Multiple Mechanisms Acting in Concert.”
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`Celgene provided no explanation to the PTO regarding the nature of this CD and how it was used
`
`by Celgene, if at all. Absent additional facts, a CD hardly demonstrates use of mark in
`
`connection with pharmaceutical preparations.
`
`Celgene’s response to Office Action #1 and its Motion for Reconsideration did nothing to
`
`establish that Celgene’s specimens were acceptable. In fact, these documents raised further
`
`questions as to the sufficiency of the specimens. In its response to Office Action #1, Celgene
`
`made no reference to the goods listed in the application, namely, “pharmaceutical preparations”
`
`or “drugs.” Instead, the response referred to “compounds,” an amorphous and tentative term. In
`
`this document Celgene also made tentative statements such as “to solicit the customers to
`
`purchase IMIDS compounds” and “the IMIDS compounds offered for sale.” Exhibit E, 1 at W 2-
`
`31l39.771B-2211983
`DC\540337\4
`
`13
`
`

`
`‘
`
`3. The only definitive statement -- “Applicant sells its IMIDS compounds to purchasers” (Id. at
`
`2, 114) -- is undermined by the fact that Ce1gene’s sale of IMIDS pharmaceutical preparations has
`
`not been approved by the FDA. See Exhibit A, 1! 7.
`
`The Motion for Reconsideration contained similar contradictions. The additional
`
`statement that “the trade show booths are actually sales counters for the applicant’s products .
`
`. .”
`
`would have cured the defect with Specimen #1 if Celgene had approval from the FDA to sell
`
`pharmaceuticals identified by the mark. Given the lack of FDA approval, no IMIDS
`
`pharmaceutical preparations could have been lawfully sold or distributed at a trade show.
`
`V.
`
`CONCLUSION
`
`Celgene’s specimens were insufficient to demonstrate use of the IMIDS mark in
`
`connection with “pharmaceutical preparations, namely, cytokine inhibitory drugs;
`
`pharmaceuticals preparations that modulate the immune system.” Indeed, there is no evidence on
`
`record establishing that Celgene has ever used the IMIDS mark in commerce as required by 15
`
`U.S.C. § 1051. Accordingly, Reg. No. 2,858,332 — IMIDS is void ab initio.
`
`Respectfully submitted,
`
`CENTOCOR INC. ,
`
`.4’
`"\
`
`I
`
`/~ /
`
`
`Dri
`
`e
`
`'ddle & Reath LLP
`
`1500 K Street, N.W., Suite 1100
`
`Washington, D.C. 20005-1209
`Tel: 202-842-8800; Fax: 202-842-8465
`Attorneys for Petitioner
`
`31l39.77lB-211983
`DC\540337\4
`
`14
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing MEMORANDUM IN SUPPORT OF
`PETITIONER’S MOTION FOR SUMMARY JUDGMENT was served on counsel for
`
`Respondent, at the following address of record, by hand delivery, this 26th day of September 2005:
`
`Camille M. Miller, Esq.
`Cozen O’Connor, P.C.
`1900 Market Street
`
`Philadelphia, P nnsylvani 19103
`
`/
`
`
`3l139.77lB- 211983
`DC\540337\4
`
`15
`
`

`
`
`
`Centocor, Inc. V. Celgene Corporation
`Cancellation No. 92/044,073
`
`Centocor’s Exhibit A
`
`3ll39.771B-211983
`DC\540337\4
`
`15
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Reg. No. 2,858,332 -- IMIDS
`Registered on June 29, 2004.
`
` OT,I[I\IC.
`
`Petitioner,
`
`v.
`
`CELGENE CORPORATION
`
`__
`
`Respondent.
`
`2
`
`:
`
`Cancellation No. 92/044,073
`
`DECLARATION OF GREGORY THOMAS KNIPP
`
`IN SUPPORT OF PETITIONER’S
`
`MOTION FOR SUMMARY JUDGMENT
`
`1, Gregory Thomas Knipp, Ph.D., declare that the following facts are true and correct of
`
`my own personal knowledge:
`
`1.
`
`I earned a Ph.D. in pharmaceutical chemistry from the Department of Pharmaceutical
`
`Chemistry, The University of Kansas, Lawrence, Kansas (March, 1997). Thereafter I was a
`
`Postdoctoral fellow in the Department of Molecular and Integrative Physiology, The University
`
`of Kansas Medical Center, Kansas City, Kansas.
`
`2. From March 1999 to date, I have served as an assistant professor in the Department of
`
`Pharmaceutics, Ernest Mario School of Pharmacy, Rutgers, The State University of New Jersey.
`
`3.
`
`I routinely consult and conduct research in the field of pharmacology in practicing my
`
`profession as a professor of pharmaceutics and in the course of writing papers and conducting
`
`pharmacological research. A complete copy of my curriculum vitae is attached as Exhibit A to
`
`this declaration. It includes a list of papers I have researched and written.
`
`4. Among the many sources I routinely consult and research are the records of the U.S.
`
`Food and Drug Administration (“FDA”).
`
`

`
`
`
`5.
`
`I was retained by Drinker Biddle & Reath LLP to conduct research to determine:
`
`(i) Whether Celgene Corporation had a pharmaceutical product or preparation
`
`identified as IMiDS or IMIDS which has been approved by the U.S. FDA for any purpose as of
`
`January 28, 2003 or December 15, 2003;
`
`(ii) Whether Celgene Corporation had a pharmaceutical product or preparation
`
`identified as IMiDS or IMIDS which has ever been approved by the U.S. FDA for any purpose.
`
`6.
`
`I have no interest in either of the parties to this proceeding or their law firms.
`
`I was
`
`compensated at a rate of $400 per hour for my services.
`
`7. Based on my review of the records of the U.S. FDA it is my conclusion that:
`
`(i) Celgene Corporation had no pharmaceutical product or preparation identified as
`
`IMiDS or IMIDS which was approved by the U.S. FDA for any purpose as of January 28, 2003;
`
`(ii) Celgene Corporation had no pharmaceutical product or preparation identified as
`
`IMiDS or IMIDS which was approved by the U.S. FDA for any purpose as of December 15,
`
`2003;
`
`(iii) Celgene Corporation has never had a pharmaceutical product or preparation
`
`identified as IMiDS or IMIDS which was approved by the U.S. FDA for any purpose and no
`
`such pharmaceutical preparation has been approved by the U.S. FDA for any purpose as of this
`
`date.
`
`Pursuant to 28 U.S.C. § 1746, I declare under the penalty of perjury that the foregoing is
`
`true and correct.
`
`Executed on September 23, 2005.
`
`3ll39.77lB—2ll983
`
`2
`
`

`
`
`
`Exhibit A
`
`31l39.771B—211983
`
`4
`
`

`
`
`
`CURRICULUM VITAE
`
`Gregory Thomas Knipp
`
`PERSONAL INFORMATION:
`Present Position:
`
`Assistant Professor
`
`Work Address:
`
`Home Address:
`
`Electronic Mail:
`
`Department of Pharmaceutics
`Ernest Mario School of Pharmacy
`Rutgers University
`160 Frelinghuysen Road
`Piscataway, NJ 08854-8020
`Phone: 732-445-3831 ext 222
`
`Fax: 732-445-3134
`
`75 Tudor Lane
`
`Berkeley Heights, NJ 07922
`Home: 908-898-0510
`
`Cell: 908-403-5682
`
`gknipp@rci.rutgers.edu
`gtknipp@hotmail.com
`
`PROFESSIONAL & ACADEMIC RESEARCH APPOINTMENTS:
`March 1999—P'resent.
`Assistant Professor, Department of Pharmaceutics,
`Ernest Mario School of Pharmacy, Rutgers, The State
`University of New Jersey. My research focus is the
`transport phenomena across biological barriers, with
`particular emphasis in fatty acid and oligopeptide
`transport.
`Center and Academic Appointments
`Jan. 2003—lPresent
`for Childhood Neurotoxicology and
`The Center
`Exposure Assessment
`The New Jersey Center for Biomaterials
`The Environmental and Occupational Health Sciences
`Institute
`
`Aug. 2002—~Present
`July 2001—Present
`
`June 1999--Present
`
`Mar. 1997—Ma r. 1999
`
`Aug. 1991—Mar. 1997
`
`Graduate Faculty Member, Graduate School of New
`Brunswick, Graduate Program in Pharmaceutical
`Sciences
`
`Postdoctoral Fellow, Department of Molecular and
`Integrative Physiology, The University of Kansas
`Medical Center. Mentor: Dr. Michael J. Soares. The
`focus of my research was on proteins involved in the
`regulation of
`fatty acid transfer across the rat
`placenta.
`Doctoral Research, Department of Pharmaceutical
`Chemistry, University of Kansas, Lawrence, KS.
`Advisor: Dr. Ronald T. Borchardt. Thesis: “The Effect
`
`

`
`
`
`.
`,
`l
`
`Oct. 1987—July 1991
`
`June-Aug.1997
`
`Oct. 1986-May 1987
`
`EDUCATION:
`
`Mar. 1997—Mar. 1999
`
`Jan. 1994—Mar. 1997
`
`Jan. 1991--Jan. 1994
`
`Sept.1989—May1991
`
`Sept. 1985—Oct. 1988
`
`Sept. 1984—May 1985
`
`of Conformation on the Passive Diffusion of Peptides
`Across Cell Culture Models of the Intestinal Mucosa
`
`and the Blood Brain Barrier.”
`
`Pharmacy,
`Physical
`Associate,
`Research
`Pharmaceutics R&D, Bristol-Myers Squibb, New
`Brunswick, NJ. Supervisor: Dr. Abu Serajuddin.
`Performed preformulation and formulation support
`studies on proprietary compounds.
`Microbiology Research Assistant, Quality Control
`Department,
`Hoechst-Rousell
`Pharmaceuticals,
`Somerville, NJ.
`Supervisor: Robert Tomaselli.
`Performed analytical microbiological assays to assess
`the potency of antibiotic containing animal
`feed
`products.
`Research Assistant, Analytical R&D, E.R. Squibb &
`Sons, New Brunswick, NJ. Supervisor: Dr. Harry
`Brittain.
`Performed