Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA193713
`ESTTA Tracking number:
`02/20/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048893
`Plaintiff
`TherOx, Inc.
`Tawnya R. Wojciechowski, Esq.
`TRW Law Group
`19900 Mac Arthur Blvd. Suite 1150
`Irvine, CA 92612
`UNITED STATES
`lindy@trwlawgroup.com, tawnya@trwlawgroup.com
`Other Motions/Papers
`Lindy M. Herman
`lindy@trwlawgroup.com,tawnya@trwlawgroup.com
`/lmh/
`02/20/2008
`TTAB Petition to Cancel - TherRx.pdf ( 8 pages )(108047 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA193713
`ESTTA Tracking number:
`02/20/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048893
`Plaintiff
`TherOx, Inc.
`Tawnya R. Wojciechowski, Esq.
`TRW Law Group
`19900 Mac Arthur Blvd. Suite 1150
`Irvine, CA 92612
`UNITED STATES
`lindy@trwlawgroup.com, tawnya@trwlawgroup.com
`Other Motions/Papers
`Lindy M. Herman
`lindy@trwlawgroup.com,tawnya@trwlawgroup.com
`/lmh/
`02/20/2008
`TTAB Petition to Cancel - TherRx.pdf ( 8 pages )(108047 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of
`
`U.S. Trademark Registration No. 3231059
`For the Mark: THE THER—RX CONTINUUM
`
`OF WOMEN'S CARE
`Registered on May 10, 2005
`
`Cancellation N0’ j
`
`TherOx, Inc.
`
`a Delaware corporation,
`
`V.
`
`Petitioner,
`
`DrugTech Corporation,
`a Delaware corporation,
`
`Registrant.
`
`PETITION FOR CANCELLATION OF REGISTRATION
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`///
`
`///
`
`
`
`TherOx, Inc., is a Delaware corporation having a principal place of
`
`business at 17500 Cartwright Road, Suite 100, Irvine, California 92614 (“Petitioner”),
`
`believes it is damaged by U.S. Registration. No 2,948,813 for the trademark THE THER-
`
`RX CONTINUUM OF WOMEN’S CARE & Design ( hereinafter “Registrant’s Mark” or
`
`the “THER—RX Mark”), and hereby petitions to cancel same.
`
`As grounds for cancellation, Petitioner alleges the following:
`
`1.
`
`Petitioner owns the following trademark registrations:
`
`a.
`
`THEROX, U.S. Registration No. 2285402, registered on
`
`October 12, 1999 for “medical apparatus and instruments, namely, catheters,
`
`[guidewires,] pump systems, and tubing for the preparation and delivery of physiologic
`
`solutions used to treat conditions such as tissue ischemia and post—ischemic tissues” in
`
`International Class 10;
`
`b.
`
`THEROX (stylized), U.S. Registration No. 2307292,
`
`registered on October 19, 1999 for “medical apparatus and instruments, namely,
`
`catheters, guidewires, pump systems, and tubing for the preparation and delivery of
`
`physiologic solutions used to treat conditions such as tissue ischemia and post—ischemic
`
`tissues” in International Class 10;
`
`c.
`
`THEROX & Design, U.S. Registration No. 2235609,
`
`registered on July 20, 1999 for “medical apparatus and instruments, namely, catheters,
`
`[guidewires,] pump systems, and tubing for the preparation and delivery of physiologic
`
`solutions used to treat conditions such as tissue ischemia and post—ischemic tissues” in
`
`International Class 10.
`
`‘2'
`
`PETITION FOR CANCELLATION
`
`
`
`2.
`
`Petitioner is owner of the following trademark application:
`
`a.
`
`THEROX & Design, U.S. Application Ser. No. 77/177,092,
`
`filed May 9, 2007 and published October 30, 2007 for “medical apparatus and
`
`instruments, namely, catheters, pump systems and their disposable parts sold therewith,
`
`and tubing for the preparation and delivery of physiologic solutions used to treat
`
`conditions such as tissue ischemia and post—ischemic tissues” in International Class 10.
`
`3.
`
`Petitioner is the owner of the following International Registration:
`
`a.
`
`THEROX & Design, International Registration No, 944538,
`
`Registered on November 11, 2007 for “Medical apparatus and instruments, namely,
`
`catheters, pump systems and their disposable parts sold therewith, and tubing for the
`
`preparation and delivery of physiologic solutions used to treat conditions such as tissue
`
`ischemia and post—ischemic tissues” in International Class 10.
`
`4.
`
`Registrant's original application for registration number 2,948,813
`
`was filed on May 6, 2002 for the mark THE THER—RX CONTINUUM OF WOMEN’S
`
`CARE & Design. The Registrant's Mark was registered on the Principal Register on May
`
`10, 2005 in International Class 5 for “nutritional supplements; prenatal nutritional
`
`supplements, vitamins and pharmaceutical and therapeutic substances, oral
`
`contraceptives, anti—infective, electrolytes, fertility enhancement preparations and agents,
`
`anti—inflammatories, nausea treatment preparations and agents, hormones, analgesics,
`
`migraine treatment preparations, muscle relaxants, nausea treatment preparations and
`
`agents for the treatment of a wide variety of illnesses, diseases and medical conditions,
`
`namely, neonatal conditions, osteoporotic conditions, aging, migraines, hypokalemia,
`
`' 3 '
`
`PETITION FOR CANCELLATION
`
`
`
`menopause, fungal and microbial infections, virological infections, infertility, conception,
`
`osteoporosis, muscle pain, hormone replacement therapy, and morning sickness,”
`
`claiming a date of first use of March 22, 2002.
`
`5.
`
`Registrant's mark is Q incontestable in that it has @ been
`
`registered for more than five years in the USPTO.
`
`6.
`
`Petitioner, together with its predecessors—in—interest, successors—in—
`
`interest, subsidiary entities, affiliated entities and authorized licensees (collectively
`
`“Petitioner”) has been continuously using the THEROX mark in association with medical
`
`devices, in interstate commerce since at least as early as 1996.
`
`7.
`
`Ever since its adoption and use of the THEROX mark, Petitioner has
`
`extensively sold, advertised and promoted its THEROX products. As a consequence, the
`
`consuming public, especially medical and healthcare community, have come to
`
`recognize, and do recognize, the THEROX mark as being used exclusively by Petitioner,
`
`and to associate and identify such goods offered under the THEROX mark as emanating
`
`from a single source, namely Petitioner.
`
`8.
`
`Petitioner has derived substantial goodwill and value from its
`
`identification with the THEROX mark in its business and within the medical and
`
`healthcare community.
`
`9.
`
`Petitioner’s THEROX mark is famous and distinctive within the
`
`meaning of the Federal Dilution Act. In fact, Petitioner’s medical devices have become
`
`known as cutting—edge products embodying highly advanced technology. Registrant filed
`
`its Application after Petitioner’s THEROX mark became famous.
`
`‘4‘
`
`PETITION FOR CANCELLATION
`
`
`
`10.
`
`Registrant’s THER—RX Mark is virtually identical to Petitioner’s
`
`THEROX mark, for substantially identical goods, and highly related goods. As such,
`
`Registrant’s mark is confusingly similar in sight, and commercial impression as to the
`
`previously used, well—known, and famous THEROX mark used by Petitioner.
`
`11.
`
`For many years and since long before Registrant’s filing date and/or
`
`first use, actual or constructive, Petitioner has been engaged in the business of producing
`
`medical devices for the healthcare industry under its THEROX mark. Consequently, the
`
`goods set forth in the subject registration and the goods of Petitioner are highly related, if
`
`not virtually identical.
`
`12.
`
`Upon information and belief, Registrant’s adoption and use of, and
`
`the THER—RX Mark was intentionally done with a view and purpose of trading on and
`
`pirating away the substantial reputation and goodwill associated with Petitioner’s
`
`THEROX mark. Upon information and belief, Registrant adopted the confusingly similar
`
`THEROX mark in order to give its customers and clientele appeal and salability that such
`
`mark would not otherwise possess.
`
`13.
`
`Registrant’s THER—RX Mark, when used in connection with
`
`Registrant’s goods as identified in the subject registration, so resembles Petitioner’s
`
`previously used THEROX mark so as to be likely to cause confusion, to cause mistake,
`
`and/or to deceive members of the public concerning an affiliation, connection,
`
`association or sponsorship relationship with the source of the or goods provided under
`
`Petitioner’s THEROX mark and would dilute the distinctive quality of Petitioner’s
`
`' 5 '
`
`PETITION FOR CANCELLATION
`
`
`
`THER—RX Mark, in violation of in violation of Section 43(a) of the Lanham Act, 15
`
`U.S.C. 1125(a).
`
`14.
`
`In addition, Registrant’s THER—RX Mark dilutes the distinctive
`
`quality of Petitioner’s famous THEROX Mark, in violation of Section 43(c) of the
`
`Lanham Act 15 U.S.C. Section 1125(c)
`
`THEREFORE, Petitioner requests that registration of the above-referenced mark
`
`be cancelled and this Petition be granted.
`
`This Petition for Cancellation is being filed electronically, along with the filing fee
`
`required by 37 C.F.R. §2.6(a)(16). Any required fees not submitted with this Notice are
`
`authorized to be deducted from Deposit Account No. 503593.
`
`Dated: January 15, 2008
`
`Respectfully submitted,
`
`ByT?/A/T
`Tawnya R. Wojciechowski, Esquire
`Lindy M. Herman, Esquire
`TRW Law Group
`19900 MacArthur Boulevard, Suite 1150
`
`Irvine, California 92612-8433
`
`(949) 701-4747 phone
`(949) 701-4712 fax
`
`Attorneys for Opposer
`TherOx, Inc.
`
`'6'
`
`PETITION FOR CANCELLATION
`
`
`
`PROOF OF SERVICE BY MAIL
`I, the undersigned, declare that I am, and was at the time of service of the
`papers herein referred to, over the age of 18 years and not a party to the within action or
`proceeding. My business address is TRW LAW GROUP, 19900 MacArthur Boulevard,
`Suite 1150, Irvine, California 92612, which is located in the county in which the
`within-mentioned mailing occurred. I am readily familiar with the practice at my place
`of business for collection and processing of correspondence for mailing with the United
`States Postal Service. Such correspondence will be deposited with the United States
`Postal Service on the same day in the ordinary course of business.
`
`On February 19, 2008, I served the following document(s):
`
`PETITION FOR CANCELLATION
`
`by placing a true copy in a separate envelope for each addressee named below, with the
`name and address of the persons served shown on the envelope as follows:
`
`Bassam N. Ibrahim, Esquire
`Burns, Doane, Swecker & Mathis, L.L.P.
`Post Office Box 1404
`
`Alexandria, Virginia 223 13- 1404
`Phone Number: (703) 836-6620
`Fax Number: +1 .703.836.2021
`
`bassam.ibrahim@bipc.com
`
`and by sealing the envelope and placing it in the appropriate location at my place of
`business for collection and mailing with postage fiilly prepaid in accordance with
`ordinary business practices.
`
`Executed on February 19, 2008, at Irvine, California.
`
`(State)
`
`I declare under I penalty of perjury under the laws of the State
`of California that the foregoing is true and correct.
`
`X
`
`(Federal)
`
`I declare under penalty of perjury under the laws of the United
`States of America that the foregoing is true and correct and
`that I am employed in the office of a member of the bar of this
`Court at whose direction the service was made.
`/3M/Wag,
`
`
`Diane Barnes
`
`'7'
`
`PETITION FOR CANCELLATION
`
`
`
`PROOF OF SERVICE BY MAIL
`I, the undersigned, declare that I am, and was at the time of service of the
`papers herein referred to, over the age of 18 years and not a party to the within action or
`proceeding. My business address is TRW LAW GROUP, 19900 MacArthur Boulevard,
`Suite 1150, Irvine, California 92612, which is located in the county in which the
`within-mentioned mailing occurred. I am readily familiar with the practice at my place
`of business for collection and processing of correspondence for mailing with the United
`States Postal Service. Such correspondence will be deposited with the United States
`Postal Service on the same day in the ordinary course of business.
`
`On February 19, 2008,
`
`I served the following document(s):
`
`PETITION FOR CANCELLATION
`
`by placing a true copy in a separate envelope for each addressee named below, with the
`name and address of the persons served shown on the envelope as follows:
`
`DrugTech Corporation
`900 Market Street
`
`Wilmington, DE 19801
`
`and by sealing the envelope and placing it in the appropriate location at my place of
`business for collection and mailing with postage fillly prepaid in accordance with
`ordinary business practices.
`
`Executed on February 19, 2008, at Irvine, California.
`
`(State)
`
`I declare under I penalty of perjury under the laws of the State
`of California that the foregoing is true and correct.
`
`X
`
`(Federal)
`
`I declare under penalty of perjury under the laws of the United
`States of America that the foregoing is true and correct and
`that I am employed in the office of a member of the bar of this
`Court at whose direction the service was made.
`
`xdmrawa
`
`Diane Barnes
`
`"7'
`
`PETITION FOR CANCELLATION
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