Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1275835
`04/03/2023
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
`
`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
`Petitioner information
`
`Name
`Entity
`Address
`
`Attorney informa-
`tion
`
`Docket no.
`
`Ascendis Pharma A/S
`aktieselskab (a/s)
`TUBORG BOULEVARD 5
`HELLERUP, DK-2900
`DENMARK
`
`Citizenship
`
`Denmark
`
`DANIEL C. NEUSTADT
`HOLLAND & KNIGHT LLP
`800 17TH STREET NW, SUITE 1100
`WASHINGTON, DC 20006
`UNITED STATES
`Primary email: dan.neustadt@hklaw.com
`Secondary email(s): paul.kilmer@hklaw.com, ptdocketing@hklaw.com,
`kelly.mcneill@hklaw.com
`202.469.5163
`110453.1
`
`Registration subject to cancellation
`
`Registration no.
`Register
`Registrant
`
`Registration date
`
`6859058
`Principal
`Ascendia Pharmaceuticals, Inc.
`661 US HIGHWAY ONE, UNIT B
`NORTH BRUNSWICK, NJ 08902
`UNITED STATES
`
`09/27/2022
`
`Goods/services subject to cancellation
`
`Class 042. First Use: Dec 31, 2020 First Use In Commerce: Dec 31, 2020
`All goods and services in the class are subject to cancellation, namely: research and development of
`pharmaceuticals designed via physical means to be released into the body over a period of time
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Related proceed-
`ings
`
`Canc. No. 92065937 and appeal (Ascendia Pharmaceuticals, Inc. v. Ascendis
`Pharma A/S, No.: 3:20-cv-15006-ZNQ-DEA)
`
`Marks cited by petitioner as basis for cancellation
`
`U.S. registration
`
`3731597
`
`Application date
`
`11/26/2008
`
`

`

`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`Principal
`12/29/2009
`
`ASCENDIS
`
`NONE
`
`Foreign priority
`date
`
`05/27/2008
`
`Class 005. First use: First Use: None First Use In Commerce: None
`[ Pharmaceutical and veterinary preparations for the treatment of physical and
`mental illness, namely, pharmaceutical preparations for the prevention and treat-
`ment of disorders of the nervous system, the immune system, the cardio-vas-
`cular system, the metabolic system, the respiratory system, the musculo-skeletal
`system, the genitourinary system; for the treatment of inflammatory disorders;
`for use in dermatology, oncology, hematology and in tissue and organ trans-
`plantation, in ophthalmology and for gastroenterological disorders; sanitary pre-
`parations for medical purposes, dietetic foods adapted for medical use, disinfect-
`ants for sanitary purposes; fungicides, herbicides ]
`Class 042. First use: First Use: None First Use In Commerce: None
`Scientific research within the medical, pharmaceutical and bacteriological area;
`providing scientific consultancy and information in relation to the aforementioned
`scientific research; testing of pharmaceuticals; [ packaging design, designing
`and development of medical equipment; ] developing pharmaceutical and med-
`ical preparations; design and development of pharmaceutical formulations;
`design and development of granulation technology and tablet technology;
`providing scientific consultancy and information relating to the design and devel-
`opment of granulation technology and tablet technology
`Class 045. First use: First Use: None First Use In Commerce: None
`[ Licensing of industrial property, legal services ]
`
`U.S. registration
`no.
`Register
`Registration date
`
`5259688
`
`Principal
`08/08/2017
`
`Application date
`
`11/23/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`ASCENDIS PHARMA
`
`NONE
`
`Class 042. First use: First Use: Dec 2009 First Use In Commerce: Dec 2009
`Scientific research within the medical, pharmaceutical and bacteriological area;
`providing scientific consultancy and information in relation to the aforementioned
`scientific research; testing of pharmaceuticals; packaging design, designing and
`development of medical equipment; developing pharmaceutical and medical
`preparations; design and development of pharmaceutical formulations; design
`and development of granulation technology and tablet technology; providing sci-
`entific consultancy and information relating to the design and development of
`granulation technology and tablet technology
`
`U.S. registration
`no.
`Register
`Registration date
`
`6630735
`
`Principal
`02/01/2022
`
`Application date
`
`10/11/2017
`
`Foreign priority
`
`06/01/2017
`
`

`

`Word mark
`Design mark
`Description of
`mark
`
`Goods/services
`
`ASCENDIS PHARMA
`
`date
`
`The mark consists of the turquoise word "ASCENDIS" under which is the grey
`word "PHARMA" next to a polygon broken by a white curved band in which the
`top is turquoise and the bottom is blue.
`Class 005. First use: First Use: None First Use In Commerce: None
`Pharmaceutical and veterinary preparations for the treatment of physical and
`mental illness, namely, pharmaceutical preparations for use in enzyme replace-
`ment therapy; pharmaceutical and veterinary preparations, namely, vaccines for
`the treatment of physical and mental illness; pharmaceutical and veterinary pre-
`parations for the treatment of physical and mental illness, namely, pharmaceut-
`ical preparations for the prevention and treatment of disorders of the endocrine
`system, growth hormone deficiencies, hypoparathyroidism, achondroplasia, dia-
`betes, fibroblast growth factor receptor(FGFR)-related skeletal disorders, onco-
`logical disorders, ophthalmologic disorders, infectious diseases, enzyme re-
`placement therapy, anti-inflammatory diseases, pain, respiratory system dis-
`orders, autoimmune disorders, vaccines, non-alcoholic steatohepatitis, brain dis-
`eases, bone diseases, CNS diseases, myopathies, obesity, wounds healing, the
`hormonal system disorders, namely, growth hormone deficiencies, diabetes and
`angiogenesis, the ophthalmological system disorders, namely, angiogenesis, the
`angiogenic system disorders, the central nervous system disorders, namely,
`central nervous system infections, brain diseases, central nervous system
`movement disorders, ocular motility disorders, spinal cord diseases, the immune
`system disorders, namely, immunologic diseases, namely, autoimmune dis-
`eases and immunologic deficiency syndromes, the cardio-vascular system dis-
`eases, the metabolic system disorders, namely, diabetes, hypoglycaemia, gout,
`osteoarthritis, muscular dystrophy, anemia, the respiratory system, the musculo-
`skeletal system disorders, namely, growth hormone deficiencies, connective tis-
`sue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, car-
`tilage injuries, the genitourinary system disorders, namely, urological diseases,
`infertility, sexually transmitted diseases, inflammatory pelvic diseases; pharma-
`ceutical preparations for the treatment of inflammatory disorders, namely, anti-
`inflammatories; pharmaceutical preparations for use in dermatology, namely,
`dermatitis, eczema, psoriasis; pharmaceutical preparations for use in oncology;
`pharmaceutical preparations for use in hematology; pharmaceutical preparations
`for use in tissue and organ transplantation; pharmaceutical preparations for use
`in in ophthalmology pharmaceutical preparations for use in the treatment of
`gastroenterological disorders; sanitary preparations for medical purposes,
`namely, sanitizing wipes, disinfectants for medical instruments, adhesive tapes
`for medical purposes, dietetic foods, namely, dietetic sugar substitutes adapted
`for medical use, all-purpose disinfectants for sanitary purposes; fungicides,
`herbicides
`Class 042. First use: First Use: None First Use In Commerce: None
`Scientific research within the medical, pharmaceutical and bacteriological area
`and providing scientific consultancy and information in relation to the aforemen-
`tioned scientific research, conducting of tests regarding medical applications,
`namely, conducting clinical trials for others, packaging design, designing and de-
`velopment of medical equipment, designing pharmaceutical and medical prepar-
`ations, preparation of pharmaceutical formulations, namely, pharmaceutical
`products development, design and development of granulation technology and
`tablet technology and providing scientific consultancy and information relating to
`the design and development of granulation technology and tablet technology
`Class 045. First use: First Use: None First Use In Commerce: None
`Licensing of industrial property; legal services
`
`

`

`Attachments
`
`Petition for Cancellation - ASCENDIA - RN 6859058.pdf(345392 bytes )
`
`Signature
`Name
`Date
`
`/Daniel C. Neustadt/
`Daniel C. Neustadt
`04/03/2023
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`__________________________________________
`
`
`
`
`
`
`
`|
`ASCENDIS PHARMA A/S,
`
`
`|
`
`
`
`
`
`
`
`|
`
`Petitioner,
`
`
`
`
`|
`
`
`
`
`
`
`
`|
`
`
`v.
`
`
`
`
`|
`
`
`
`
`
`
`
`|
`
`
`
`
`
`
`
`|
`ASCENDIA PHARMACEUTICALS, INC.,
`|
`
`
`
`
`
`
`
`|
`
`
`
`
`
`
`
`|
`
`Defendant.
`
`
`
`
`|
`__________________________________________|
`
`
`Canc. No. _________
`
`ASCENDIA
`
`Reg. No. 6859058
`
`
`
`PETITION FOR CANCELLATION
`
`Ascendis Pharma A/S (“Petitioner”), an aktieselskab formed and existing under the laws
`
`of Denmark, believes that it will be damaged by the continued registration of the mark ASCENDIA
`
`(the “Defendant’s Mark”) in connection with the services (“Defendant’s Services”) identified in
`
`Registration No. 6,859,058 (the “Registration”), owned by Ascendia Pharmaceuticals, Inc., a New
`
`Jersey corporation (formerly known as Ascendia Pharmaceuticals LLC) (“Defendant”), and hereby
`
`petitions for cancellation of the Registration.
`
`
`
`
`
`
`As grounds for cancellation, Petitioner alleges the following:
`
`1.
`
`Petitioner is a biopharmaceutical company listed on U.S. NASDAQ (ASND) and
`
`focused on developing new therapies based upon its proprietary technology that enables the
`
`sustained release of pharmacologically active drugs at predictable rates. “Sustained-release” refers
`
`to technology that releases pharmaceutical or medical preparations – “parent drugs” – into the
`
`
`
`

`

`
`
`body over a graduated or sustained period of time. Petitioner’s research and development services
`
`are directed toward creating less demanding regimens for those that suffer from chronic diseases,
`
`to increase the likelihood that such patients receive the dosage of treatments that they require.
`
`2.
`
`The therapies developed by Petitioner are comprised of “prodrugs” - i.e.,
`
`medications or compounds that are inactive until metabolized by the patient, at which point they
`
`are chemically converted into a pharmacologically active drugs, or “parent” drugs. In the case of
`
`Petitioner’s technology, the prodrug consists of the parent drug, a “carrier” – which essentially
`
`shields and carries the parent drug until metabolized and activated – and a “linker,” which may be
`
`sensitive to pH levels or temperature or other variables that act to trigger the release of the parent
`
`drug.
`
`3.
`
`With respect to treatments for certain diseases or ailments, Petitioner does not
`
`develop or produce the parent drugs contained in the prodrug. Rather, Petitioner partners and
`
`collaborates with a developer of the parent drug, which aims to apply Petitioner’s technology to
`
`improve the delivery and efficiency of its treatments (i.e., by increasing the chance that they are
`
`taken as recommended).
`
`4.
`
`Petitioner promotes and markets Petitioner’s Services (as defined below, including
`
`those services referenced in the foregoing paragraphs) in commerce under its ASCENDIS and
`
`ASCENDIS PHARMA marks (collectively, with the subject marks of Petitioner’s application and
`
`registrations set forth below, the “ASCENDIS Marks”).
`
`5.
`
`Petitioner is the owner, inter alia, of the following U.S. Patent and Trademark
`
`Office (“USPTO”) application and registrations:
`
`
`
`2
`
`

`

`
`
`ASCENDIS | Reg. No. 3,731,597 -- for “Scientific research within the medical, pharmaceutical
`
`and bacteriological area; providing scientific consultancy and information in relation to the
`
`aforementioned scientific research; testing of pharmaceuticals; developing pharmaceutical and medical
`
`preparations; design and development of pharmaceutical formulations; design and development of
`
`granulation technology and tablet technology; providing scientific consultancy and information relating
`
`to the design and development of granulation technology and tablet technology” in Class 42 (registered
`
`December 29, 2009);
`
`ASCENDIS PHARMA | Reg. No. 5,259,688 -- for “Scientific research within the medical,
`
`pharmaceutical and bacteriological area; providing scientific consultancy and information in relation to
`
`the aforementioned scientific research; testing of pharmaceuticals; packaging design, designing and
`
`development of medical equipment; developing pharmaceutical and medical preparations; design and
`
`development of pharmaceutical formulations; design and development of granulation technology and
`
`tablet technology; providing scientific consultancy and information relating to the design and
`
`development of granulation technology and tablet technology” in Class 42 (registered August 8, 2017).
`
`ASCENDIS PHARMA (& Design) | Reg. No. 6,630,735 – for, inter alia, “Scientific research
`
`within the medical, pharmaceutical and bacteriological area; providing scientific consultancy and
`
`information in relation to the aforementioned scientific research; testing of pharmaceuticals; packaging
`
`design, designing and development of medical equipment; developing pharmaceutical and medical
`
`preparations; design and development of pharmaceutical formulations; design and development of
`
`granulation technology and tablet technology; providing scientific consultancy and information relating
`
`to the design and development of granulation technology and tablet technology” in Class 42 (registered
`
`February 1, 2022) (collectively, with the foregoing registrations, the “ASCENDIS Registrations”).1
`
`
`1 Attached hereto as Exhibit A please find materials downloaded from the USPTO’s Trademark Status and
`Document Retrieval (“TSDR”) database reflecting the current status of the ASCENDIS Registrations.
`
`
`
`3
`
`

`

`
`
`6.
`
`Petitioner has continuously and exclusively used its ASCENDIS Marks in
`
`commerce on and in connection with Petitioner’s Services since at least as early as 2009.
`
`7.
`
`As a result of Petitioner’s extensive use, significant promotional efforts, extensive
`
`sales, and the high and consistent quality of services provided under and by reference to the
`
`ASCENDIS Marks, the ASCENDIS Marks and the ASCENDIS designation in particular have
`
`become a strong indicator of the source of Petitioner’s Services and a symbol of substantial and
`
`valuable goodwill.
`
`8.
`
`Petitioner’s ASCENDIS Marks have been continuously and extensively used and
`
`promoted in commerce in connection with Petitioner’s Services from a date prior to September 10,
`
`2021, the application filing date of the Registration.
`
`9.
`
`Petitioner’s ASCENDIS Marks have been continuously and extensively used and
`
`promoted in commerce in connection with Petitioner’s Services from a date prior to December 31,
`
`2020, the date of first use in interstate commerce claimed in the Registration.
`
`10.
`
`Notwithstanding Petitioner’s prior rights in the ASCENDIS Marks in connection
`
`with Petitioner’s Services, Defendant, on September 10, 2021, filed its application (the
`
`“Application”) in the United States Patent and Trademark Office for registration of Defendant’s
`
`Mark, for Defendant’s Services, namely, “research and development of pharmaceuticals designed
`
`via physical means to be released into the body over a period of time.”
`
`11.
`
`Defendant had actual knowledge of Petitioner’s ASCENDIS Marks and of
`
`Petitioner’s rights therein in connection with Petitioner’s Services and related goods and services
`
`when Defendant filed its Application.
`
`
`
`4
`
`

`

`
`
`12.
`
`Defendant’s actual knowledge is derived from, inter alia, a cancellation proceeding
`
`brought by Petitioner against Defendant in April 2017. See Canc. No. 92065937. In that
`
`proceeding, Petitioner asserted two of the three Ascendia Registrations asserted here against
`
`several Class 42 ASCENDIA-formative registrations owned by Defendant. The Board in April
`
`2022 issued its Final Decision, granting Petitioner’s petition to cancel on the basis of priority and
`
`likelihood of confusion.2 Defendant’s district court appeal is pending.
`
`COUNT I
`Likelihood of Confusion - §2(d)
`
`Petitioner realleges and incorporates by reference the allegations contained in
`
`13.
`
`paragraphs 1 through 12, above, as if set forth in their entirety herein.
`
`
`
`14.
`
`Defendant’s Mark, which is nearly identical to Petitioner’s ASCENDIS Mark and
`
`to the dominant element of Petitioner’s ASCENDIS Marks, so closely resembles Petitioner’s
`
`ASCENDIS Marks in appearance, sound and meaning that the continued use and registration
`
`thereof by Defendant in connection with Defendant’s Services are likely to cause confusion,
`
`mistake, and deception as to the source or origin of Defendant’s Services and will injure and
`
`damage Petitioner and the goodwill and reputation symbolized by Petitioner’s ASCENDIS Marks.
`
`15.
`
`Defendant’s Services, if continued to be offered under or by reference to
`
`Defendant’s Mark, are, respectively, identical or so closely related to services provided by
`
`Petitioner under and by reference to the ASCENDIS Marks, that relevant consumers and others
`
`are likely to be confused, to be deceived, and to assume erroneously that Defendant’s Services are
`
`those of Petitioner or that Defendant is in some way connected with, sponsored by or affiliated
`
`with Petitioner, all to Petitioner’s irreparable damage and injury.
`
`
`2 Canc. No. 92065937, 91 TTABVUE.
`
`
`
`5
`
`

`

`
`
`16.
`
`Likelihood of confusion, mistake and deception is enhanced by the fact that
`
`Petitioner’s services offered under and by reference to the ASCENDIS Marks are offered, provided
`
`or intended to be provided to at least some of the same classes of prospective customers as are
`
`Defendant’s Services identified in the Registration.
`
`17.
`
`Under the circumstances, the continued registration of Defendant’s Mark for
`
`Defendant’s Services is likely to cause Petitioner to lose control over the good and valuable
`
`reputation represented by and derived from the ASCENDIS Marks and their use in relation to
`
`identical or closely related services.
`
`18.
`
`The continued use and registration of Defendant’s Mark for Defendant’s Services,
`
`in light of the prior rights of Petitioner in its ASCENDIS Marks, is therefore likely to cause
`
`confusion, mistake and/or deception among members of the relevant purchasing public, resulting
`
`in damage and injury to Petitioner in violation of the provisions of Section 2(d) of the Trademark
`
`Act. 15 U.S.C. §1052(d).
`
`
`
`The required fee has been provided.
`
`
` WHEREFORE, Petitioner prays that its Petition be granted and the Registration cancelled.
`
`
`
`Date: April 3, 2023
`
`
`
`
`
`
`
`
`
`
`
`ASCENDIS PHARMA A/S
`
`
`
`
`By: s/Daniel C. Neustadt
`Paul F. Kilmer
`Daniel C. Neustadt
`HOLLAND & KNIGHT LLP
`800 17th Street, N.W., Suite 1100
`Washington, D.C. 20006
`202.469.5163
`dan.neustadt@hklaw.com
`
`Attorneys for Petitioner
`
`
`
`6
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Generated on: This page was generated by TSDR on 2023-04-03 00:27:09 EDT
`
`Mark: ASCENDIS
`
`US Serial Number: 79063323
`
`US Registration
`Number:
`
`3731597
`
`Register: Principal
`
`Mark Type: Trademark, Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Nov. 26, 2008
`
`Registration Date: Dec. 29, 2009
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Section 71 declaration has been accepted.
`
`Status Date: Jan. 09, 2020
`
`Publication Date:Oct. 13, 2009
` 
`
`Mark Literal
`Elements:
`
`ASCENDIS
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Related Properties Information
`
`0988052
`
`International
`Registration
`Number:
`
`International
`Registration Date:
`
`Nov. 26, 2008
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: [ Pharmaceutical and veterinary preparations for the treatment of physical and mental illness, namely, pharmaceutical preparations for
`the prevention and treatment of disorders of the nervous system, the immune system, the cardio-vascular system, the metabolic
`system, the respiratory system, the musculo-skeletal system, the genitourinary system; for the treatment of inflammatory disorders; for
`use in dermatology, oncology, hematology and in tissue and organ transplantation, in ophthalmology and for gastroenterological
`disorders; sanitary preparations for medical purposes, dietetic foods adapted for medical use, disinfectants for sanitary purposes;
`fungicides, herbicides ]
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: SECTION 71 - CANCELLED
`
`Basis: 66(a)
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`For: Scientific research within the medical, pharmaceutical and bacteriological area; providing scientific consultancy and information in
`
`

`

`relation to the aforementioned scientific research; testing of pharmaceuticals; [ packaging design, designing and development of
`medical equipment; ] developing pharmaceutical and medical preparations; design and development of pharmaceutical formulations;
`design and development of granulation technology and tablet technology; providing scientific consultancy and information relating to
`the design and development of granulation technology and tablet technology
`
`International
`Class(es):
`
`042 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 66(a)
`
`For: [ Licensing of industrial property, legal services ]
`
`International
`Class(es):
`
`045 - Primary Class
`
`Class Status: SECTION 71 - CANCELLED
`
`Basis: 66(a)
`
`U.S Class(es): 100, 101
`
`U.S Class(es): 100, 101
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: Yes
`
`Filed No Basis: No
`
`Currently Use: No
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: Yes
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Ascendis Pharma A/S
`
`Owner Address: Tuborg Boulevard 5
`DK-2900
`Hellerup DENMARK 2900
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`DENMARK
`
`Attorney/Correspondence Information
`
`Attorney Name: Paul F. Kilmer
`
`Attorney Primary
`Email Address:
`
`paul.kilmer@hklaw.com
`
`Attorney of Record
`
`Docket Number: 155191.00018
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Paul F. Kilmer
`Holland & Knight, LLP
`800 17th Street, NW
`Suite 1100
`Washington, DISTRICT OF COLUMBIA UNITED STATES 20006
`
`Phone: 212-949-9022
`
`Fax: 212-949-9190
`
`Correspondent e-
`mail:
`
`paul.kilmer@hklaw.com ptdocketing@hklaw.com j
`oanna.crosby@hklaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative
`
`&nbspDomestic
`Representative
`Name:
`
`&nbspDomestic
`Representative e-
`mail:
`
`Paul F. Kilmer
`
`paul.kilmer@hklaw.com
`
`&nbspDomestic
`Representative e-
`mail Authorized:
`
`Yes
`
`Prosecution History
`
`Date
`
`Description
`
`Dec. 24, 2021
`
`NEW REPRESENTATIVE AT IB RECEIVED
`
`Proceeding
`Number
`
`

`

`Oct. 27, 2021
`Jan. 08, 2021
`Sep. 30, 2020
`Sep. 30, 2020
`Sep. 09, 2020
`Jan. 09, 2020
`Jan. 09, 2020
`Jan. 08, 2020
`Dec. 04, 2019
`Dec. 29, 2018
`Dec. 13, 2018
`Jan. 18, 2018
`Nov. 17, 2017
`Oct. 03, 2017
`Oct. 03, 2017
`Oct. 02, 2017
`Jul. 14, 2017
`Jun. 07, 2017
`Feb. 02, 2017
`Feb. 02, 2017
`Dec. 05, 2016
`Dec. 02, 2016
`Nov. 29, 2016
`Aug. 10, 2016
`Aug. 08, 2016
`Aug. 08, 2016
`Jun. 29, 2016
`Feb. 06, 2013
`Apr. 26, 2010
`Apr. 26, 2010
`Mar. 29, 2010
`Dec. 29, 2009
`Oct. 13, 2009
`Oct. 13, 2009
`Sep. 09, 2009
`Sep. 08, 2009
`Sep. 08, 2009
`Sep. 08, 2009
`Sep. 08, 2009
`Sep. 08, 2009
`Sep. 03, 2009
`Sep. 03, 2009
`Mar. 27, 2009
`Mar. 06, 2009
`Mar. 06, 2009
`Mar. 06, 2009
`Mar. 05, 2009
`Feb. 26, 2009
`Jan. 13, 2009
`Jan. 09, 2009
`Jan. 08, 2009
`
`NEW REPRESENTATIVE AT IB RECEIVED
`PARTIAL INVALIDATION PROCESSED BY THE IB
`PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB
`INVALIDATION PROCESSED
`PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED
`NOTICE OF ACCEPTANCE OF SEC. 71 - E-MAILED
`REGISTERED-SEC.71 ACCEPTED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 71 RECEIVED
`COURTESY REMINDER - SEC. 71 (10-YR) E-MAILED
`INTERNATIONAL REGISTRATION RENEWED
`CHANGE OF NAME/ADDRESS REC'D FROM IB
`PARTIAL INVALIDATION PROCESSED BY THE IB
`PARTIAL INVALIDATION OF REG EXT PROTECTION SENT TO IB
`INVALIDATION PROCESSED
`PARTIAL INVALIDATION OF REG EXT PROTECTION CREATED
`COUNTERCLAIM CANC. NO. 999999
`COUNTERCLAIM OPP. NO. 999999
`NOTICE OF ACCEPTANCE OF SEC. 71 & 15 - E-MAILED
`REGISTERED - PARTIAL SEC. 71 ACCEPTED & SEC. 15 ACK.
`TEAS SECTION 15 RECEIVED
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED
`POST REGISTRATION ACTION MAILED - SEC.71
`POST REGISTRATION ACTION MAILED - SEC.71
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`TEAS SECTION 71 RECEIVED
`FINAL DECISION TRANSACTION PROCESSED BY IB
`FINAL DISPOSITION NOTICE SENT TO IB
`FINAL DISPOSITION PROCESSED
`FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
`REGISTERED-PRINCIPAL REGISTER
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`PUBLISHED FOR OPPOSITION
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`ASSIGNED TO LIE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`REFUSAL PROCESSED BY IB
`NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
`REFUSAL PROCESSED BY MPU
`NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`APPLICATION FILING RECEIPT MAILED
`NEW APPLICATION ENTERED
`SN ASSIGNED FOR SECT 66A APPL FROM IB
`International Registration Information (Section 66a)
`
`International
`Registration
`
`0988052
`
`International
`Registration Date:
`
`Nov. 26, 2008
`
`71529
`
`74704
`74704
`
`68359
`
`65937
`233502
`
`77764
`
`77764
`
`81855
`81855
`81855
`
`68359
`
`69712
`
`69712
`69712
`69712
`69712
`
`68359
`
`81092
`81092
`
`

`

`Number:
`
`Priority Claimed
`Flag:
`
`Yes
`
`Intl. Registration
`Status:
`
`REQUEST FOR EXTENSION OF PROTECTION
`PROCESSED
`
`Notification of
`Designation Date:
`
`Jan. 08, 2009
`
`Nov. 26, 2028
`
`International
`Registration
`Renewal Date:
`
`First Refusal Flag: Yes
`
`Date of Section 67
`Priority Claim:
`
`May 27, 2008
`
`Jan. 08, 2009
`
`Date of
`International
`Registration
`Status:
`
`Date of Automatic
`Protection:
`
`Jul. 08, 2010
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Jan. 09, 2020
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: CHANGE OF ADDRESS
`
`Reel/Frame: 6238/0258
`
`Date Recorded: Jan. 18, 2018
`
`Supporting
`Documents:
`
`assignment-tm-6238-0258.pdf
`
`Name: ASCENDIS PHARMA A/S
`
`Legal Entity Type: UNKNOWN
`
`Name: ASCENDIS PHARMA A/S
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: TUBORG BOULEVARD 5
`DK-2900 HELLERUP, DENMARK
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`ASCENDIS PHARMA A/S
`
`TUBORG BOULEVARD 5
`DK-2900 HELLERUP
`DENMARK
`
`Registrant: Ascendis Pharma A/S
`
`Assignment 1 of 1
`
`Pages: 2
`
`Assignor
`
`Execution Date: Nov. 27, 2017
`
`State or Country
`Where Organized:
`
`NOT PROVIDED
`
`Assignee
`
`State or Country
`Where Organized:
`
`NOT PROVIDED
`
`Correspondent
`
`Summary
`
`Number of
`Proceedings:
`
`2
`
`Proceeding
`Number:
`
`92065937
`
`Domestic Representative - Not Found
`Proceedings
`
`Type of Proceeding: Cancellation
`
`Filing Date: Apr 24, 2017
`
`Status: Pending Court Appeal
`
`Status Date: Jun 08, 2022
`
` 
`
` 
`
`

`

`Interlocutory
`Attorney:
`
`JENNIFER ELGIN
`
`Name: Ascendia Pharmaceuticals LLC
`
`Correspondent
`Address:
`
`RICHARD GEARHART
`GEARHART LAW LLC
`41 RIVER ROAD
`SUMMIT NJ UNITED STATES , 07901
`
`Defendant
`
`rgearhart@gearhartlaw.com , james@gearhartlaw.com , ustmdocket@gearhartlaw.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`ASCENDIA PHARMACEUTICALS
`
`ASCENDIA PHARMA
`
`ASCENDIA PHARMA
`
`Application Status
`
`Cancellation Pending
`
`Cancellation Pending
`
`Cancellation Pending
`
`Plaintiff(s)
`
`Serial
`Number
`
`85942215
`
`85940152
`
`86003276
`
`Registration
`Number
`
`4566570
`
`4566560
`
`4614800
`
`Name: Ascendis Pharma A/S
`
`Correspondent
`Address:
`
`PAUL F KILMER
`HOLLAND & KNIGHT LLP
`800 17TH STREET NW, SUITE 1100
`WASHINGTON DC UNITED STATES , 20006
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`ASCENDIS
`
`ASCENDIS PHARMA
`
`paul.kilmer@hklaw.com , dan.neustadt@hklaw.com , ptodocketing@hklaw.com , christopher.jamison@hklaw.com
`
`Application Status
`
`SECTION 71 ACCEPTED
`
`Registered
`
`Prosecution History
`
`Serial
`Number
`
`79063323
`
`87247108
`
`Registration
`Number
`
`3731597
`
`5259688
`
`Due Date
`
`Entry Number
`
`History Text
`
`92
`91
`90
`89
`88
`87
`86
`85
`84
`83
`82
`81
`80
`79
`78
`77
`76
`75
`74
`73
`72
`71
`70
`69
`68
`67
`
`APPEAL TO DISTRICT CT
`FINAL DECISION: CAN GRANTED
`SUBMITTED FOR FINAL DECISION
`D REPLY BRIEF/MAIN BRIEF ON COUNTERCLAIM: TM RULE 2.128
`P REBUTTAL BRIEF: TM RULE 2.128
`D MAIN BRIEF: TM RULE 2.128
`EXTENSION OF TIME GRANTED
`STIP FOR EXT
`P MAIN BRIEF: TM RULE 2.128
`EXTENSION OF TIME GRANTED
`STIP FOR EXT
`P NOTICE OF RELIANCE
`TRIAL DATES RESET
`P REPLY IN SUPPORT OF MOTION
`D OPP/RESP TO MOTION
`P MOT TO STRIKE
`D REPLY IN SUPPORT OF MOTION
`SUSP PEND DISP OF OUTSTNDNG MOT
`P OPP/RESP TO MOTION
`STIP FOR EXT
`P DECL OF JINGJUN HUANG
`D MOT TO SUSP PEND DISP CIV ACTION
`EXTENSION OF TIME GRANTED
`STIP TO REOPEN DISCOVERY
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`
`Date
`
`Jun 08, 2022
`Apr 08, 2022
`Dec 08, 2021
`Nov 24, 2021
`Nov 09, 2021
`Oct 12, 2021
`Sep 17, 2021
`Sep 17, 2021
`Aug 27, 2021
`Aug 17, 2021
`Aug 12, 2021
`Apr 30, 2021
`Apr 07, 2021
`Feb 08, 2021
`Jan 20, 2021
`Dec 24, 2020
`Dec 18, 2020
`Nov 30, 2020
`Nov 29, 2020
`Nov 22, 2020
`Nov 12, 2020
`Nov 02, 2020
`Oct 29, 2020
`Oct 27, 2020
`Oct 19, 2020
`Oct 13, 2020
`
`

`

`66
`65
`64
`63
`62
`61
`60
`59
`58
`57
`56
`55
`54
`53
`52
`51
`50
`49
`48
`47
`46
`45
`44
`43
`42
`41
`40
`39
`38
`37
`36
`35
`34
`33
`32
`31
`30
`29
`28
`27
`26
`25
`24
`23
`22
`21
`20
`19
`18
`17
`16
`15
`14
`13
`12
`
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`D CHANGE OF CORRESP ADDRESS
`RESPONSE DUE 30 DAYS (DUE DATE)
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`P MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`SUSPENDED
`D RESP TO BD ORDER/INQUIRY
`D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`SUSPENDED
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`SUSPENDED
`D MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`EXTENSION OF TIME GRANTED
`D MOT FOR EXT W/ CONSENT
`D MOT FOR EXT W/ CONSENT
`P MOT FOR EXT W/ CONSENT
`P MOT FOR EXT W/ CONSENT
`D MOT FOR EXT W/ CONSENT
`P MOT FOR EXT W/ CONSENT
`P NOTICE OF TAKING TESTIMONY
`D TESTIMONY
`D NOTICE OF RELIANCE
`STIP FOR EXT
`P WITHDRAWAL OF ENTRY #21
`P OPP/RESP TO MOTION
`D REPLY IN SUPPORT OF MOTION
`D MOT FOR EXT W/ CONSENT
`P OPP/RESP TO MOTION
`D NOTICE OF TAKING TESTIMONY
`D MOT TO STRIKE
`P TESTIMONY
`SUSPENDED
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`P APPEARANCE / POWER OF ATTORNEY
`
`Oct 02, 2020
`
`Oct 06, 2020
`Sep 30, 2020
`Sep 29, 2020
`Sep 28, 2020
`Sep 02, 2020
`Aug 31, 2020
`Aug 03, 2020
`Jul 30, 2020
`Jul 04, 2020
`Jun 30, 2020
`Jun 06, 2020
`Jun 01, 2020
`May 06, 2020
`May 04, 2020
`Apr 03, 2020
`Apr 01, 2020
`Mar 14, 2020
`Mar 02, 2020
`Jan 06, 2020
`Jan 02, 2020
`Jan 02, 2020
`Nov 07, 2019
`Nov 04, 2019
`Sep 04, 2019
`Aug 30, 2019
`Jul 10, 2019
`Jul 03, 2019
`May 09, 2019
`May 06, 2019
`Apr 26, 2019
`Apr 22, 2019
`Apr 02, 2019
`Apr 01, 2019
`Mar 21, 2019
`Mar 11, 2019
`Feb 18, 2019
`Jan 25, 2019
`Jan 14, 2019
`Jan 14, 2019
`Dec 28, 2018
`Nov 20, 2018
`Nov 06, 2018
`Nov 06, 2018
`Nov 05, 2018
`Oct 12, 2018
`Oct 09, 2018
`Oct 08, 2018
`Oct 05, 2018
`Sep 17, 2018
`Aug 27, 2018
`Aug 27, 2018
`Aug 06, 2018
`Apr 19, 2018
`Apr 19, 2018
`Apr 05, 2018
`
`

`

`11
`10
`9
`8
`7
`6
`5
`4
`3
`2
`1
`
`ANSWER TO COUNTERCLAIM
`MOT TO AMEND ANS OR COUNTERCLAIM/AMENDED ANS OR COUNTERCLAIM
`BD ORDER: DISCOVERY CON