Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA916950
`08/21/2018
`
`ESTTA Tracking number:
`
`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
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`PLX PHARMA INC.
`
`Corporation
`
`Citizenship
`
`Delaware
`
`8285 El Rio
`Suite 130
`Houston, TX 77054
`UNITED STATES
`
`Joseph C. Gioconda
`GIOCONDA LAW GROUP PLLC
`100 Park Avenue
`16th Floor
`New York, NY 10017
`UNITED STATES
`joseph.gioconda@giocondalaw.com
`212-235-1220
`
`Applicant Information
`
`Application No
`
`87844032
`
`Publication date
`
`07/24/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`08/21/2018
`
`Opposition Peri-
`od Ends
`
`08/23/2018
`
`Metagenics, Inc.
`25 Enterprise, Suite 200
`Aliso Viejo, CA 92656
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 009. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: computer application software for mobile
`phones, namely, software for use by patients and healthcare providers to manage data and provide
`direct feedback on health, wellness and biomarkers
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(d)
`
`Trademark Act Section 2(a)
`
`Deceptiveness
`
`Trademark Act Section 2(a)
`
`

`

`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5128399
`
`Registration Date
`
`01/24/2017
`
`Word Mark
`
`Design Mark
`
`PLX
`
`Application Date
`
`06/15/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2012/01/01 First Use In Commerce: 2012/01/01
`Research and development services for pharmaceutical preparations and sub-
`stances, namely, non-steroidal anti-inflammatory drug containing preparations;
`providing medical and scientific research information in the fields of pharmaceut-
`icals
`
`U.S. Registration
`No.
`
`4879464
`
`Registration Date
`
`01/05/2016
`
`Word Mark
`
`Design Mark
`
`PLX PHARMA
`
`Application Date
`
`09/12/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 2012/01/01 First Use In Commerce: 2012/01/01
`Research and development services for pharmaceutical preparations and sub-
`stances, namely, phospholipid and non-steroidal anti-inflammatory drug contain-
`ing preparations; providing medical and scientific research information in the
`fields ofpharmaceuticals
`
`U.S. Application
`No.
`
`87777592
`
`Application Date
`
`01/31/2018
`
`Registration Date
`
`NONE
`
`Foreign Priority
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`PLX
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, both prescription and over-the-counter, for use in-
`connection with humans as anti-inflammatories, analgesics, antipyretics and
`forthe prevention and treatment of cancer and for the prevention and treatment
`of cardiovascular and/or cerebrovascular disease
`
`U.S. Application
`No.
`
`87777601
`
`Application Date
`
`01/31/2018
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`PLX PHARMA
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, both prescription and over-the-counter, for use in-
`connection with humans as anti-inflammatories, analgesics, antipyretics and
`forthe prevention and treatment of cancer and for the prevention and treatment
`of cardiovascular and/or cerebrovascular disease
`
`U.S. Application
`No.
`
`88040660
`
`Application Date
`
`07/17/2018
`
`Registration Date
`
`NONE
`
`Word Mark
`
`PLX PHARMA INC.
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`The mark consists of white and red lettering on a blue background.
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`medicated and pharmaceutical preparations, both prescription and over-
`the-counter, for use in humans
`
`87740246
`
`Application Date
`
`01/02/2018
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`PLXGUARD
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Pharmaceutical preparations, namely, anoral drug delivery system comprising
`capsules, liquids, dissolvable films or tablets affecting surface acting lipids to-
`modify the physiochemical properties ofvarious drugs to selectively release
`these drugs to targeted portions of the human GI tract
`
`87072653#TMSN.png( bytes )
`86393682#TMSN.png( bytes )
`87777592#TMSN.png( bytes )
`87777601#TMSN.png( bytes )
`88040660#TMSN.png( bytes )
`87740246#TMSN.png( bytes )
`PLX Opposition.pdf(906636 bytes )
`
`Signature
`
`Name
`
`/Joseph C. Gioconda/
`
`Joseph C. Gioconda
`
`

`

`Date
`
`08/21/2018
`08/21/2018
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF THE FOLLOWING APPLICATION:
`
`App. Serial No.:
`Mark:
`
`Applicant:
`Filed:
`Published in the Official Gazette:
`
`87/844,032
`PLX
`
`Metagenics, Inc.
`March 21, 2018
`July 24, 2018
`
`PLX PHARMA INC.,
`
`Opposer,
`
`v.
`METAGENICS, INC,
`
`Applicant.
`
`Opposition No.
`
`.
`
`NOTICE OF OPPOSITION
`
`Opposer PLX PHARMA INC. (“PLX Pharma” or “Opposer”), a Delaware corporation
`
`having a principal place of business at 8285 El Rio, Suite 130, Houston, TX 77054, believes that
`
`it will be damaged by registration of Applicant METAGENICS, INC.’S (“Metagenics’” or
`
`“Applicant’s”) United States Trademark Application Serial No. 87/844,032 for PLX
`
`(“Applicant’s Intended Mark”), and respectfully opposes. registration of the same.
`
`

`

`OPPOSER’S TRADE NAME AND TRADEMARKS
`
`Opposer was incorporated on or about January 14, 2010.
`
`Opposer’s trade name is PLX Pharma.
`
`Opposer is a late-stage specialty pharmaceutical company.
`
`Opposer’s official website is: http://www.PLXPharma.com.
`
`Opposer is traded on the NASDAQ stock exchange under the stock ticker name
`
`PLXP.
`
`6.
`
`Opposer is currently focused on developing its clinically validated and patent-
`
`protected PLxGuardTM delivery system to provide effective and safe products.
`
`7.
`
`Opposer owns the following trademark registrations and pending trademark
`
`applications in the United States:
`
`a. PLX word mark in International Class 42 for: “Research and development
`services for pharmaceutical preparations ”and substances, namely, non-steroidal
`anti-inflammatory drug containing preparations; providing medical and scientific
`research information in the fields of pharmaceuticals.” (U.S. Trademark Reg. No.
`5,128,399);
`
`. PLX PHARMA word mark in International Class 42 for: “Research and
`
`development services for pharmaceutical preparations and substances, namely,
`phospholipid and non-steroidal anti-inflammatory drug containing preparations;
`providing medical and scientific research information in the fields of
`pharmaceuticals.” (U.S. Trademark Reg. No. 4,879,464);
`
`. PLX word mark in International Class 5 for: “Pharmaceutical preparations, both
`prescription and over-the-counter, for use in connection with humans as anti-
`inflammatories, analgesics, antipyretics and for the prevention and treatment of
`cancer and for
`the prevention and treatment of cardiovascular and/or
`cerebrovascular disease” (U.S. Trademark Application Serial No. 87/777,592);
`
`. PLX PHARMA word mark in International Class 5 for: “Pharmaceutical
`
`preparations, both prescription and over-the-counter, for use in connection with
`humans as anti-inflammatories, analgesics, antipyretics and for the prevention
`and treatment of cancer and for the prevention and treatment of cardiovascular
`and/or cerebrovascular disease”;
`(U.S. Trademark Application Serial No.
`87/777,601);
`
`

`

`e. PLX PHARMA INC. and Design in International Class 5 for: “Pharmaceutical
`preparations, both prescription and over—the-counter, for use in connection with
`humans”; (U.S. Trademark Application Serial No. 88/040,660); and
`
`f. PLXGUARD in International Class 5 for: “Pharmaceutical preparations, namely,
`an oral drug delivery system comprising capsules, liquids, dissolvable films or
`tablets affecting surface acting lipids to modify the physiochemical properties of
`various drugs to selectively release these drugs to targeted portions of the human
`GI tract” (U.S. Trademark Application Serial No. 87/740,246).
`
`Applicant and Applicant’s Intended Mark
`
`8.
`
`According to the records of the United States Patent and Trademark Office
`
`(“USPTO”), Applicant Metagenics, Inc.
`
`is a Delaware corporation with a principal place of
`
`business located at 25 Enterprise, Suite 200, Aliso Viejo, California 92656.
`
`9.
`
`Upon information and belief, Applicant Metagenics,
`
`Inc. operates as a
`
`nutrigenomics and lifestyle medicine company that engages in the research and development,
`
`manufacture, and marketing of medical foods and nutritional formulas for chronic health
`
`conditions.
`
`10.
`
`Upon information and belief, Applicant Metagenics, Inc. offers products in the
`
`areas of blood sugar balance, body composition, cardiometabolic health, children’s health,
`
`gastrointestinal health, general wellness, metabolic detoxification, neurological health, sports
`
`nutrition, and stress management; immune men’s and women’s health; and muscle, bone, and
`
`joint health.
`
`11.
`
`Upon information and belief, Metagenics, Inc. also provides products for bone
`
`nutrition, menopausal, heart health, fatty acids, probiotics, defy aging, and other nutrition
`
`applications; and products for various health conditions, including bariatric surgery patients,
`
`compromised gut
`
`function, endothelial
`
`function, and high intestinal permeability and
`
`malabsorption. In addition, the company offers lifestyle medicine programs, such as metabolic
`
`detoxification, weight loss, and metabolic syndrome programs.
`
`

`

`12.
`
`Upon information and belief, Applicant Metagenics, Inc. serves healthcare
`
`providers through distributors in the United States and internationally.
`
`13.
`
`Upon information and belief, Applicant Metagenics, Inc. was founded in 1983
`
`and is headquartered in Aliso Viejo, California with a research and development office in Gig
`
`Harbor, Washington.
`
`14.
`
`Upon information and belief, Applicant Metagenics, Inc. also has locations in
`
`Brisbane, Australia; Mississauga, Canada; North Shore City, New Zealand; Ostend, Belgium;
`
`and Eede, the Netherlands.
`
`15.
`
`Upon information and belief, Metagenics, Inc. has subsidiaries in Brussels,
`
`Belgium; and Brisbane, Australia.
`
`16.
`
`Upon information and belief, Applicant Metagenics,
`
`Inc. operates as a
`
`subsidiary of Alticor Inc.
`
`17.
`
`The application for Applicant’s Intended Mark was filed in the USPTO on an
`
`Intent-to-Use basis by Metagenics, Inc.
`
`in International Class 9 for “computer application
`
`software for mobile phones, namely, software for use by patients and healthcare providers to
`
`manage data and provide direct feedback on health, wellness and biomarkers.”
`
`18.
`
`The entirety of Applicant’s Intended Mark is identical to and/or confusingly
`
`similar to several of Opposer’s trademarks, namely: PLX.
`
`19.
`
`The Applicant’s Intended Mark is confusingly similar to each of Opposer’s
`
`trademarks.
`
`20.
`
`21.
`
`The Applicant’s Intended Mark is confusingly similar to Opposer’s trade name.
`
`Applicant has publicly stated that
`
`its pharmaceutical and/or nutraceutical
`
`products are sold through retail channels of trade including but not limited to through medical
`
`professionals.
`
`

`

`22.
`
`There are overlapping, if not identical, channels of trade that currently distribute,
`
`and/or will distribute and evaluate Opposer’s and Applicant’s products and services and have
`
`interacted and/or will interact with Opposer for the sale and distribution of Opposer’s products.
`
`Count 1: False Su
`
`estion of a Connection in Violation of 15 U.S.C.
`
`1052 a
`
`23.
`
`The Applicant’s Intended Mark will be recognized by consumers and healthcare
`
`providers as Opposer’s identity, in that the Applicant’s Intended Mark points uniquely and
`
`unmistakably to Opposer.
`
`24.
`
`25.
`
`Opposer is not connected with the activities performed by Applicant.
`
`The fame or reputation of Opposer is such that, when the Applicant’s Intended
`
`Mark is used in commerce, a connection with Opposer will be presumed.
`
`26.
`
`Opposer will be irreparably injured and damaged by registration of the
`
`Applicant’s Intended Mark because the purchasing public will presume that Applicant
`
`is
`
`connected to Opposer within the meaning of § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a),
`
`relating to the prohibition of allowing registration to issue that may falsely suggest a connection
`
`with an institution.
`
`27.
`
`The Applicant’s Intended Mark violates 15 U.S.C. § 1052(a) and should be
`
`refused registration.
`
`Count II: Likelihood of Confusion in Violation of 15 U.S.C.
`
`28.
`
`Opposer will be irreparably injured and damaged if Applicant permitted to
`
`register the Applicant’s Intended Mark for the products identified, because the purchasing public
`
`will believe that Applicant is connected to Opposer within the meaning of § 2(d) of the Lanham
`
`Act, 15 U.S.C. § 1052(d) related to the prohibitions of permitting registrations to issue that cause
`
`confusion with the trademarks owned and/or used by another.
`
`29.
`
`The Applicant’s Intended Mark therefore violates 15 U.S.C. § 1052(d) and
`
`

`

`should be refused registration.
`
`Count HI: Intentional Misre resentation in Violation of 15 U.S.C.
`
`
`1064 3
`
`
`30.
`
`Opposer will be irreparably injured and damaged if Applicant is permitted to
`
`register the Applicant’s Intended Mark, because Applicant will use Applicant’s Intended Mark
`
`intentionally misrepresent to the purchasing public that Opposer is the source of the products
`
`within the meaning of § 14(3) of the Lanham Act, 15 U.S.C. § 1064(3).
`
`31.
`
`Opposer has no control over the nature and quality of the goods and/or services
`
`provided by Applicant and thus will be damaged and irreparably harmed by reason of the loss of
`
`control over its reputation and the erosion of goodwill in its trademarks.
`32.
`The Applicant’s Intended Mark therefore violates 15 U.S.C. § 1064(3) and
`
`should be refused registration.
`
`

`

`