Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA374248
`ESTTA Tracking number:
`10/20/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`MERZ PHARMACEUTICALS, LLC
`10/20/2010
`
`4215 Tudor Lane
`Greensboro, NC 27410
`UNITED STATES
`
`Correspondence
`information
`
`Lile H. Deinard, Esq.
`Sarah H. Robertson, Esq.
`Dorsey & Whitney LLP
`250 Park Avenue 15th Floor
`New York, NY 10177
`UNITED STATES
`robertson.sarah@dorsey.com, deinard.lile@dorsey.com,
`baker.phoebe@dorsey.com Phone:212-415-9200
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79067545
`10/20/2010
`
`0999567
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`Rolandos Enterprises Public Limited
`69 Bethlehem Street, Stovolos Industrial Area; CY-2033 Nicosia
`
`06/22/2010
`10/20/2010
`
`02/18/2009
`
`CYPRUS
`Goods/Services Affected by Opposition
`
`Class 003.
`All goods and services in the class are opposed, namely: Soaps; perfumery; essential oils;
`cosmetics; cosmetic skin, body, and hair care creams; cosmetic preparations for slimming purposes;
`astringents for cosmetic purposes; cosmetic preparations for baths; lotions for cosmetic purposes;
`pomades for cosmetic purposes; cosmetic preparations for skin care; cleansing milk for toilet
`purposes; hair lotions; dentifrices; sprays for refreshing and cleaning the skin; cosmetic sun-tanning
`preparations; make-up preparations; make-up removing preparations; perfumery, namely,
`deodorants for personal use; toilet waters; scented linen waters; oils for toiletry purposes; perfumed
`oils for skin care; preparations for shaving; aftershave lotions; beauty masks; antiperspirants; bath
`salts, not for medical purposes; prepared wax for depilation; body care products, namely, body lotion;
`non-medicated massage preparations, namely, massage creams and oils; cosmetic lotions for care
`of skin
`Class 005.
`All goods and services in the class are opposed, namely: Sanitary preparations for medical purposes;
`
`

`
`dietetic foods and sugars adapted for medical use; disinfectants, namely, disinfectants for sanitary
`purposes and disinfectants for hygiene purposes; medicated bath preparations; chemical
`preparations for medical or pharmaceutical purposes for the treatment of skin acne, skin hyper-
`pigmentation and skin couperose; herbs for medicinal purposes; pharmaceutical preparations for skin
`care
`Class 008.
`All goods and services in the class are opposed, namely: Electric and non-electric depilation
`appliances
`Class 010.
`All goods and services in the class are opposed, namely: Apparatus for massage; instruments for
`massage including hot stone apparatus
`Class 021.
`All goods and services in the class are opposed, namely: Utensils for use in body care, namely, body
`sponges, body scrubbing puffs; applicators for cosmetics, namely, applicator sponges for applying
`make-up; cosmetic utensils, namely, cosmetic brushes for use with cosmetic skin and body products
`and make-up products and cosmetic spatulas for use with cosmetic skin and body products
`Class 044.
`All goods and services in the class are opposed, namely: Hygienic and beauty care for human
`beings; aromatherapy services; beauty institutes, namely, beauty spa services, namely, cosmetic
`body care; beauty salons and massage; fitness institutes, namely, medical testing services, namely,
`fitness evaluation; wellness centers, namely, providing wellness services, namely, personal
`assessments, personalized routines, maintenance schedules, and counseling; manicuring; beautician
`services; healthcare relating to therapeutic massage; massage; massage services; cosmetic
`treatment for the face; cosmetic treatment for the body; therapeutic treatment for the face and body;
`services for the care of the skin
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`2360460
`
`06/20/2000
`
`MEDERMA
`
`Application Date
`
`07/03/1995
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2000/03/03 First Use In Commerce: 2000/03/03
`skin care products, namely, essential oils for personal use
`
`U.S. Registration
`No.
`Registration Date
`
`2464771
`
`07/03/2001
`
`Word Mark
`
`MEDERMA
`
`Application Date
`
`10/10/1996
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1997/04/04 First Use In Commerce: 1997/04/04
`cosmetic and cleaning preparations, namely, a gel, cream, or ointment designed
`to improve the appearance of scars, blemishes, and other skin imperfections
`Class 005. First use: First Use: 1997/04/04 First Use In Commerce: 1997/04/04
`pharmaceuticals, namely, a gel, cream, or ointment designed to improve the
`appearance of scars, blemishes, and other topical imperfections
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`77909552
`
`Application Date
`
`01/11/2010
`
`NONE
`
`Foreign Priority
`Date
`MEDERMA SKIN CARE FOR LIFE
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use:
`Non-medicated cosmetic and cleaning preparations for skin, namely, gels,
`creams, or ointments for improving the appearance of scars, blemishes, or other
`skin imperfections
`Class 005. First use:
`Pharmaceuticals, namely, gels, creams, or ointments designated to improve the
`appearance of scars, blemishes, or other skin imperfections
`
`U.S. Registration
`No.
`Registration Date
`
`3139600
`
`09/05/2006
`
`Word Mark
`
`MEDERMA FOR KIDS
`
`Application Date
`
`09/16/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2004/12/15 First Use In Commerce: 2004/12/15
`Non-medicated cosmetic and cleaning preparations for skin, namely, a gel,
`cream, and ointment for improving the appearance of scars, blemishes, and
`other skin imperfections
`Class 005. First use: First Use: 2004/12/15 First Use In Commerce: 2004/12/15
`Pharmaceuticals, namely, a gel, cream, and ointment designed to improve the
`appearance of scars, blemishes, and other skin imperfections
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`3233153
`
`04/24/2007
`
`MEDERMA
`
`Application Date
`
`06/14/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 1997/04/04 First Use In Commerce: 1997/04/04
`Pharmaceuticals, namely, a gel, cream, or ointment designed to improve the
`appearance of scars, blemishes, and other topical imperfections
`
`U.S. Application
`No.
`Registration Date
`
`77907204
`
`NONE
`
`Word Mark
`
`MEDERMA
`
`Application Date
`
`01/07/2010
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use:
`Non-medicated cosmetics for skin, namely, a gel, cream, or ointment for
`improving the appearance of stretch marks or other skin imperfections
`Class 005. First use:
`Pharmaceuticals, namely, a gel, cream or ointment designed to improve the
`appearance of stretch marks or other skin imperfections
`
`Attachments
`
`74696128#TMSN.gif ( 1 page )( bytes )
`75179474#TMSN.gif ( 1 page )( bytes )
`77909552#TMSN.jpeg ( 1 page )( bytes )
`76611608#TMSN.gif ( 1 page )( bytes )
`78908193#TMSN.jpeg ( 1 page )( bytes )
`77907204#TMSN.jpeg ( 1 page )( bytes )
`NEODERMA NOTICE OF OPPOSITION.pdf ( 7 pages )(30493 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/LHD/
`Lile H. Deinard, Esq.
`10/20/2010
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 79/067,545
`Published on June 22, 2010
`
`
`MERZ PHARMACEUTICALS, LLC and
`MERZ, INCORPORATED,
`
`
`
`
`
`Opposition No.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer,
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`ROLANDOS ENTERPRISES PUBLIC
`LIMITED,
`
`
`
`
`
`
`
`
`
`Applicant.
`
`Merz, Incorporated, a North Carolina corporation (“Merz”), and its wholly owned
`
`subsidiary Merz Pharmaceuticals, LLC, a North Carolina limited liability company (“Merz
`
`Pharmaceuticals”), each having a principal place of business at 4215 Tudor Lane, Greensboro,
`
`North Carolina 27410 (hereinafter, collectively, “Opposer”), believe they will be damaged by
`
`registration of the mark NEODERMA sought to be registered by Rolandos Enterprises Public
`
`Limited (“Applicant”) in Application Serial No. 79/067,545 (the “Application”) for goods and
`
`services in Classes 3, 5, 8, 10 21 and 44, and having been granted an extension of time to oppose
`
`until October 20, 2010 by Order of the Trademark Trial and Appeal Board mailed on July 21,
`
`2010, hereby opposes same.
`
`As grounds for opposition, it is alleged that:
`
`
`
`

`
`1.
`
`Applicant seeks to register the mark NEODERMA for goods and services
`
`in Classes 3, 5, 8, 10, 21 and 44 as listed below. The Application was filed based on Section
`
`66(a) of the Lanham Act on February 18, 2009, with a priority filing date of December 17, 2008
`
`claimed.
`
`Class 3: Soaps; perfumery; essential oils; cosmetics; cosmetic skin, body, and hair care creams; cosmetic
`preparations for slimming purposes; astringents for cosmetic purposes; cosmetic preparations for baths;
`lotions for cosmetic purposes; pomades for cosmetic purposes; cosmetic preparations for skin care;
`cleansing milk for toilet purposes; hair lotions; dentifrices; sprays for refreshing and cleaning the skin;
`cosmetic sun-tanning preparations; make-up preparations; make-up removing preparations; perfumery,
`namely, deodorants for personal use; toilet waters; scented linen waters; oils for toiletry purposes;
`perfumed oils for skin care; preparations for shaving; aftershave lotions; beauty masks; antiperspirants;
`bath salts, not for medical purposes; prepared wax for depilation; body care products, namely, body
`lotion; non-medicated massage preparations, namely, massage creams and oils; cosmetic lotions for care
`of skin
`
`Class 5: Sanitary preparations for medical purposes; dietetic foods and sugars adapted for medical use;
`disinfectants, namely, disinfectants for sanitary purposes and disinfectants for hygiene purposes;
`medicated bath preparations; chemical preparations for medical or pharmaceutical purposes for the
`treatment of skin acne, skin hyper-pigmentation and skin couperose; herbs for medicinal purposes;
`pharmaceutical preparations for skin care
`
`Class 8: Electric and non-electric depilation appliances
`
`Class 10: Apparatus for massage; instruments for massage including hot stone apparatus
`
`Class 21: Utensils for use in body care, namely, body sponges, body scrubbing puffs; applicators for
`cosmetics, namely, applicator sponges for applying make-up; cosmetic utensils, namely, cosmetic brushes
`for use with cosmetic skin and body products and make-up products and cosmetic spatulas for use with
`cosmetic skin and body products
`
`Class 44: Hygienic and beauty care for human beings; aromatherapy services; beauty institutes, namely,
`beauty spa services, namely, cosmetic body care; beauty salons and massage; fitness institutes, namely,
`medical testing services, namely, fitness evaluation; wellness centers, namely, providing wellness
`services, namely, personal assessments, personalized routines, maintenance schedules, and counseling;
`manicuring; beautician services; healthcare relating to therapeutic massage; massage; massage
`services; cosmetic treatment for the face; cosmetic treatment for the body; therapeutic treatment for the
`face and body; services for the care of the skin
`
`
`
`
`
`2
`
`

`
`2.
`
`Since long prior to the filing date of the Application and the claim of
`
`priority made therein, Opposer has engaged in the development, manufacture, advertising,
`
`distribution and sale in interstate commerce of, inter alia, non-medicated and medicated skin
`
`care products bearing the trademark MEDERMA® and related trademarks.
`
`
`
`
`
`3.
`
`The trademark MEDERMA was adopted by Opposer as a trademark for
`
`skin products as early as April 4, 1997. Opposer has used the trademark MEDERMA
`
`continuously for over twelve (12) years in connection with said goods in interstate commerce by
`
`applying labels bearing the trademark to the goods and to the packages in which said goods are
`
`shipped and sold, by displaying representations of the trademark in advertising and in other ways
`
`customary to the trade.
`
`
`
`
`
`4.
`
`Merz and/or its wholly owned subsidiary Merz Pharmaceuticals are the
`
`owners of the entire right, title and interest in and to the trademark MEDERMA and related
`
`marks as evidenced by the following:
`
`Mark
`
`Reg./
`Appl.
`Serial No.
`
`Reg. /
`Appl.
`Date
`
`Goods
`
`
`
`MEDERMA Reg. No.
`2,360,460
`
`June 20,
`2000
`
`MEDERMA
`(Stylized)
`
`Reg. No.
`2,464,771
`
`July 3,
`2001
`
`MEDERMA
`SKIN CARE
`FOR LIFE
`
`Appl. Serial
`No.
`77/909,552
`
`January
`11, 2010
`
`“Skin care products, namely, essential oils for personal use,”
`in International Class 3
`
`“Cosmetic and cleaning preparations, namely, a gel, cream,
`or ointment designed to improve the appearance of scars,
`blemishes, and other skin imperfections,” in International
`Class 3; and “Pharmaceuticals, namely, a gel, cream, or
`ointment designed to improve the appearance of scars,
`blemishes, and other topical imperfections,” in International
`Class 5
`
`“Non-medicated cosmetic and cleaning preparations for skin,
`namely, gels, creams, or ointments for improving the
`appearance of scars, blemishes, or other skin imperfections,”
`in International Class 3; and “Pharmaceuticals, namely, gels,
`creams, or ointments designated to improve the appearance of
`scars, blemishes, or other skin imperfections,” in International
`Class 5
`
`
`
`3
`
`

`
`MEDERMA
`FOR KIDS
`(Stylized)
`
`Reg. No.
`3,139,600
`
`Sept. 5,
`2006
`
`MEDERMA Reg. No.
`3,233,153
`
`April 24,
`2007
`
`MEDERMA Appl. Serial
`No.
`77/907,204
`
`January
`7, 2010
`
`
`
`
`“Non-medicated cosmetic and cleaning preparations for skin,
`namely, a gel, cream, and ointment for improving the
`appearance of scars, blemishes, and other skin
`imperfections,” in International Class 3; and
`“Pharmaceuticals, namely, a gel, cream, and ointment
`designed to improve the appearance of scars, blemishes, and
`other skin imperfections,” in International Class 5
`
`“Pharmaceuticals, namely, a gel, cream, or ointment designed
`to improve the appearance of scars, blemishes, and other
`topical imperfections,” in International Class 5
`
`“Non-medicated cosmetics for skin, namely, a gel, cream, or
`ointment for improving the appearance of stretch marks or
`other skin imperfections,” in International Class 3; and
`“Pharmaceuticals, namely, a gel, cream or ointment designed
`to improve the appearance of stretch marks or other skin
`imperfections,” in International Class 5
`
`
`The above-identified registrations on the Principal Register of the U.S. Patent and Trademark
`
`Office are in all respects valid, subsisting and owned by Opposer. Further, U.S. Reg. Nos.
`
`2,464,771 and 2,360,460 are incontestable pursuant to 15 U.S.C. §1065.
`
`
`
`
`
`5.
`
`Opposer has spent and continues to spend large sums of money on the
`
`advertisement and promotion of the goods bearing the mark MEDERMA and related marks, and
`
`by reason of such advertising and the high quality of the goods carrying these marks, Opposer
`
`enjoys a valuable goodwill and an enviable reputation with respect to the MEDERMA marks in
`
`question.
`
`
`
`
`
`6.
`
`Opposer’s trademark MEDERMA is a distinctive and well-known mark
`
`and became well-known long prior to the filing date of the Application subject to opposition
`
`herein.
`
`
`
`4
`
`

`
`
`
`7.
`
`Opposer’s MEDERMA trademarks and Applicant’s NEODERMA
`
`trademark are confusingly similar in sight, sound and meaning. Further, Opposer’s non-
`
`medicated and medicated skin care products bearing the MEDERMA trademarks and the goods
`
`and services covered by the Application, which include skin creams and lotions and are skin care
`
`and/or skin treatment related, are identical and/or very closely related.
`
`
`
`
`
`8.
`
`As a result of the foregoing, the purchasing public familiar with Opposer’s
`
`products bearing Opposer’s MEDERMA trademarks are likely to be confused, misled or
`
`deceived into thinking that the NEODERMA products and services of Applicant are products
`
`and services of Opposer or are in some way sponsored by or connected with Opposer, to
`
`Opposer’s irreparable damage and injury, in violation of Section 2(d) of the Lanham Act, 15
`
`U.S.C. § 1052(d).
`
`WHEREFORE Opposer believes that it will be damaged by registration of
`
`Applicant’s mark and prays that this opposition be sustained, and that Application Serial No.
`
`79/067,545 be denied.
`
`Please recognize as attorneys for Opposer in this proceeding Lile H. Deinard and
`
`Sarah Robertson, members of the Bar of the State of New York, whose address is Dorsey &
`
`Whitney LLP, 250 Park Avenue, New York, New York 10177, telephone number (212) 415-
`
`9200.
`
`Please address all correspondence to Lile H. Deinard at the above address.
`
`
`
`
`
`5
`
`

`
`
`
`DORSEY & WHITNEY LLP
`
`By: _____/LHD/______________________
`Lile H. Deinard
`Sarah Robertson
`250 Park Avenue – 15th floor
`New York, New York 10177
`(212) 415-9200
`
` Attorneys for Opposer
` Merz Pharmaceuticals, LLC
` Merz, Incorporated
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`Dated: October 20, 2010
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 79/067,545
`Published on June 22, 2010
`
`
`MERZ PHARMACEUTICALS, LLC and
`MERZ, INCORPORATED,
`
`
`
`
`
`Opposition No.
`
`
`
`Opposer,
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`ROLANDOS ENTERPRISES PUBLIC
`LIMITED,
`
`
`
`
`
`
`
`
`Applicant.
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing NOTICE OF OPPOSITION was served
`
`
`
`
`
`
`upon the Applicant’s counsel of record by mailing a true copy thereof by first class mail, postage
`
`prepaid, addressed to:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`on October 20, 2010.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Jan Tamulewicz , Esq.
`Katten Muchin Rosenman LLP
`575 Madison Avenue
`New York NY 10022-2585
`
`
`
`
`
`
`
`
`
`
`
`
`
`/pnb/
`Phoebe N. Baker
`
`
`
`
`
`
`
`7