,_
`
`-_._._M.___.._\
`mmmmmmmmmm
`
`Attorney Docket No.
`033956WZOO2
`
`12-23-2002
`U.S. Patent & TMOfcITM Mail Flcpt D1. #715
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`)
`
`In the Matter of Application Serial No. 76/413639
`Published November 26, 2002
`
`Fresenius Medical Care Deutschland GmbH
`
`V.
`
`C.R. Bard, Inc.
`
`Opposer,
`
`Applicant.
`
`Commissioner for Trademarks
`
`Box TTAB FEE
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Madam:
`
`NOTICE OF OPPOSITION
`
`In the matter of the application of C.R. Bard, Inc., for registration of the mark
`
`PROMETRA, filed on May 30, 2002, application Serial No. 76/413,639, published in the
`
`Official Gazette in Vol. 1264, No. 4, page TM 258 on November 26, 2002. Fresenius Medical
`
`Care Deutschland GmbH, believes that it will be damaged by registration of the mark shown in
`
`Serial No. 76/413,639, and hereby opposes registration.
`
`The grounds for opposition are as follows.
`
`01/03/2003 GTHOHRSE 00000180 76413539
`
`01 FC:640E
`
`300-00 05’
`
`Page - 1 -
`
`
`
`-_._._M.___.._\
`mmmmmmmmmm
`
`Attorney Docket No.
`033956WZOO2
`
`12-23-2002
`U.S. Patent & TMOfcITM Mail Flcpt D1. #715
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`) )
`
`) )
`
`)
`)
`
`) )
`
`)
`
`In the Matter of Application Serial No. 76/413639
`Published November 26, 2002
`
`Fresenius Medical Care Deutschland GmbH
`
`V.
`
`C.R. Bard, Inc.
`
`Opposer,
`
`Applicant.
`
`Commissioner for Trademarks
`
`Box TTAB FEE
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Madam:
`
`NOTICE OF OPPOSITION
`
`In the matter of the application of C.R. Bard, Inc., for registration of the mark
`
`PROMETRA, filed on May 30, 2002, application Serial No. 76/413,639, published in the
`
`Official Gazette in Vol. 1264, No. 4, page TM 258 on November 26, 2002. Fresenius Medical
`
`Care Deutschland GmbH, believes that it will be damaged by registration of the mark shown in
`
`Serial No. 76/413,639, and hereby opposes registration.
`
`The grounds for opposition are as follows.
`
`01/03/2003 GTHOHRSE 00000180 76413539
`
`01 FC:640E
`
`300-00 05’
`
`Page - 1 -
`
`
`
`
`
`1.
`
`Opposer is a Limited Liability Company, with its principle place of business at
`
`Else-Kroner-Strasse 1, 61352 Bad Homburg, Germany.
`
`2.
`
`Opposer is now and has been engaged in the medical care business. Opposer has
`
`used and is using the mark PROMETH in association with medical goods.
`
`3.
`
`Opposer owns Registration No. 2639751 for the mark PROMETH, registered on
`
`October 22, 2002 for “medical devices in the field of haemodialysis for extra-corporal blood
`
`purification.” The aforesaid registration is valid and subsisting, unrevoked and uncancelled and
`
`Fresenius Medical Care Deutschland GmbH is the owner of the aforesaid registration and all of
`
`the goodwill represented thereby.
`
`4.
`
`Prior to the filing of the application herein opposed, Fresenius Medical Care
`
`Deutschland GmbH has used the designation PROMETH and variations thereof as a trademark
`
`in connection with medical care.
`
`5.
`
`The use of Opposer’s mark has been valid and continuous and has not been
`
`abandoned. Opposer’s mark is symbolic of extensive good will and consumer recognition built
`
`up by Opposer through substantial amounts of time and effort in advertising and promotion.
`
`6.
`
`Notwithstanding Opposer’s rights in and to its PROMETH mark, Applicant on
`
`May 30, 2002, filed an application for registration of the mark PROMETRA for “medical
`
`devices and apparatus, namely, implantable programmable pump for the delivery of medication.”
`
`That application was given Serial No. 76/413,639 and was published for opposition in the
`
`Official Gazette of November 26, 2002, page TM 258.
`
`7.
`
`App1icant’s mark PROMETRA, when used in connection with the goods set forth
`
`in its application, is confusingly similar to Opposer’s use of its PROMETH mark, and as set forth
`
`and protected by Opposer’s above-identified registration. Registration of Applicant’s mark and
`
`Page - 2 -
`
`
`
`
`
`continued use by it for its products is likely to cause confusion, mistake and deception. The
`
`marks are highly similar in appearance, sound, and meaning, and the goods are sufficiently
`
`similar that there would be a likelihood of such confusion, mistake and deception.
`
`8.
`
`Despite Opposer’s rights in and to the PROMETH mark, Applicant has been
`
`using the PROMETRA designation to refer to its products. For example, both goods are used as
`
`medical devices and are used in medical field. This use accentuates the similarity between
`
`PROMETH and PROMETRA and exacerbates the likelihood of confusion regarding the marks
`
`and the likelihood of confusion as to sponsorship or affiliation.
`
`9.
`
`If Applicant is permitted to use and register its mark, PROMETRA, for the goods
`
`specified in the application, confusion in the trade resulting in damage and injury to Opposer
`
`would be caused and would result by reason of the similarity between Applicant’s mark and
`
`Opposer’s mark. Persons familiar with Opposer’s mark would be likely to confuse Applicant’s
`
`goods as a product made, sold, or sponsored by Opposer. Any such confusion in the trade would
`
`inevitably result in loss of sales to Opposer.
`
`10.
`
`In addition to the harm identified in paragraph 9, any defect, objection or fault
`
`found with Applicant’s products marketed under the PROMETRA mark would necessarily
`reflect badly upon and significantly injure the reputation which Opposer has established for its
`
`products.
`
`WHEREFORE, Opposer believes that it will be damaged by registration of Applicant’s
`
`mark, and prays that registration be denied.
`
`Page - 3 -
`
`
`
`
`
`A duplicate copy of this Notice of Opposition is enclosed. Also enclosed is our check for
`
`$300.00. Please charge our Deposit Account No. 02-4300 for any additional fees which may be
`
`required.
`
`DATED this 20"‘ day of December, 2002.
`
`Respectfully submitted,
`
`SMITH, GAMBRELL & RUSSELL, LLP
`
` cott D. Woldow
`
`
`
`
`
`torney for Opposer
`1850 M Street, N.W., Suite 800
`Washington, DC 20036
`Telephone: (202) 263-4300
`Facsimile: (202) 263-4329
`
`#192223
`
`Page - 4 -
`
`
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`12-23-2002
`
`i
`
`US. Patents: TMOfcITM Mail Rcpt DI. #71"
`
`_‘
`.RADEMARK
`
`7
`:
`
`Attorney_Docket No.
`033956.002
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Opposer
`
`Serial No.
`
`Mark
`
`Filed
`
`:
`
`:
`
`2
`
`:
`
`Fresenius Medical Care Deutschland GmbH
`
`76/413639
`
`PROMETRA
`
`May 30, 2002
`
`TRANSMITTAL LETTER
`
`m2<fl
`Commissioner of Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Madam:
`
`Transmitted herewith is
`
`~
`
`-~ ‘
`
`K
`
`is
`
` Notice of Opposition (filed in duplicate)
`
`$300.00
`
`[x]
`[x]
`
`Our check in the amount of $300.00 is attached hereto.
`Please charge our Deposit Account No. 02-4300 for any additional fees that may be
`required, or credit our account for any overpayment.
`
`Respectfully Submitted,
`
`Smith, Gambrell & Russell, L.L.P.
`
` Scott D. Woldow, Esq.
`
`1 50 M Street, N.W., Suite 800
`Washington, D.C. 20036
`Tel:
`(202) 263-4300
`Fax:
`(202) 263-4329
`
`SGRDC/1922801
`
`December 23, 2002
`
`K
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