Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1299293
`07/24/2023
`
`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 ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Docket no.
`
`Katadyn Produkte AG
`07/26/2023
`
`PFÃ#FFIKERSTRASSE 37
`KEMPTTHAL, 8310
`SWITZERLAND
`
`JOEL D. LEVITON
`STINSON LLP
`50 SOUTH SIXTH STREET, SUITE 2600
`MINNEAPOLIS, MN 55402
`UNITED STATES
`Primary email: joel.leviton@stinson.com
`Secondary email(s): trademark.mpl@stinson.com
`No phone number provided
`2054993.0125
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`International re-
`gistration no.
`Applicant
`
`NONE
`
`97389801
`07/24/2023
`
`Publication date
`Opposition period
`ends
`International re-
`gistration date
`ART PHARMACEUTICAL LTD.
`400 RUE ROBERT-MCKENZIE
`BEAUHARNOIS, QUEBEC, J6N0N9
`CANADA
`
`03/28/2023
`07/26/2023
`
`NONE
`
`Goods/services affected by opposition
`
`Class 005. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Antiseptic preparations; Antiseptics;
`Gargles; Nasal rinse
`
`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.
`
`2750396
`
`Application date
`
`07/22/2002
`
`
`ESTTA Tracking number:
`ESTTA1299293
`07/24/2023
`
`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 ex-
`tension
`Address
`
`Attorney informa-
`tion
`
`Docket no.
`
`Katadyn Produkte AG
`07/26/2023
`
`PFÃ#FFIKERSTRASSE 37
`KEMPTTHAL, 8310
`SWITZERLAND
`
`JOEL D. LEVITON
`STINSON LLP
`50 SOUTH SIXTH STREET, SUITE 2600
`MINNEAPOLIS, MN 55402
`UNITED STATES
`Primary email: joel.leviton@stinson.com
`Secondary email(s): trademark.mpl@stinson.com
`No phone number provided
`2054993.0125
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`International re-
`gistration no.
`Applicant
`
`NONE
`
`97389801
`07/24/2023
`
`Publication date
`Opposition period
`ends
`International re-
`gistration date
`ART PHARMACEUTICAL LTD.
`400 RUE ROBERT-MCKENZIE
`BEAUHARNOIS, QUEBEC, J6N0N9
`CANADA
`
`03/28/2023
`07/26/2023
`
`NONE
`
`Goods/services affected by opposition
`
`Class 005. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Antiseptic preparations; Antiseptics;
`Gargles; Nasal rinse
`
`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.
`
`2750396
`
`Application date
`
`07/22/2002
`
`
`
`Register
`Registration date
`
`Principal
`08/12/2003
`
`Foreign priority
`date
`
`06/26/2002
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`KATADYN
`
`NONE
`
`Class 001. First use: First Use: None First Use In Commerce: None
`catalytic and oxidative compounds used for disinfection and preservation applic-
`ations in liquids and on surfaces
`Class 011. First use: First Use: None First Use In Commerce: None
`Water and waste water purifying units for domestic, commercial, industrial and
`municipal uses.
`
`1736371
`
`Principal
`12/01/1992
`
`KATADYN
`
`NONE
`
`Application date
`
`03/01/1991
`
`Foreign priority
`date
`
`NONE
`
`Class 011. First use: First Use: 1975 First Use In Commerce: 1975
`water and waste water purifying units for domestic, commercial, industrial and
`municipal uses
`
`0649935
`
`Principal
`08/13/1957
`
`KATADYN
`
`NONE
`
`Application date
`
`01/21/1954
`
`Foreign priority
`date
`
`NONE
`
`Class 006. First use: First Use: May 31, 1928 First Use In Commerce: May 31,
`1928
`METALLIC SUBSTANCE HAVING OLIGODYNAMIC ACTIVITY USED AS A
`STERILIZING AND WATER PURIFYING MASS IN FILTERS OR WATER
`COOLERS
`
`U.S. application/ registration
`no.
`Register
`Registration date
`Mark
`Goods/services
`
`NONE
`
`Application date
`
`NONE
`
`NONE
`NONE
`KATADYN
`Sterilization, purification, and disinfecting products
`
`
`
`Attachments
`
`Notice of Opposition_KATADINE.pdf(11649 bytes )
`
`Signature
`Name
`Date
`
`/Joel D. Leviton/
`JOEL D. LEVITON
`07/24/2023
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`KATADYN PRODUKTE AG,
`
`Opposer,
`
`v.
`
`Opposition No.:
`
`Mark: KATADINE
`
`Serial No. 97389801
`
`ART PHARMACEUTICAL LTD.,
`
`Published: March 28, 2023
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Katadyn Produkte AG (“Katadyn”), a corporation organized under the laws of Switzerland
`
`with an address of Pfäffikerstrasse 37, 8310 Kemptthal, Switzerland, believes it will be damaged
`
`by registration of the mark shown in intent-to-use Application Serial No. 97/389,801 (the
`
`“Application”) and hereby opposes the same pursuant to the provisions of 15 U.S.C. § 1063.
`
`The grounds for opposition are as follows:
`
`1.
`
`2.
`
`Katadyn is a global leader in providing water treatment solutions.
`
`For over 90 years, Katadyn has used the trademark KATADYN in connection with
`
`a variety of sterilization and purification products such as (among others) water purifiers, water
`
`sterilizers, disinfectants, compounds used in disinfectants, water purifying units, and desalination
`
`systems.
`
`3.
`
`Katadyn owns longstanding United States common law rights in its KATADYN
`
`trademark for sterilization, purification, and disinfecting products.
`
`CORE/2054993.0125/183307377.1
`
`1
`
`
`
`4.
`
`In addition to its longstanding common law rights, Katadyn owns the following
`
`U.S. registrations for its KATADYN mark: Registration No. 649,935 for the mark KATADYN in
`
`connection with “metallic substance having oligodynamic activity used as a sterilizing and water
`
`purifying mass in filters or water coolers,” which issued in 1957; Registration No. 1,736,371 for
`
`the mark KATADYN in connection with “water and waste water purifying units for domestic,
`
`commercial, industrial and municipal uses,” which issued in 1992; and Registration No. 2,750,396
`
`for the mark KATADYN and design in connection with “catalytic and oxidative compounds used
`
`for disinfection and preservation applications in liquids and on surfaces” and “water and waste
`
`water purifying units for domestic, commercial, industrial and municipal uses,” which issued in
`
`2003. Katadyn’s common law and registered mark set forth herein are collectively referred to as
`
`the “KATADYN Trademark.”
`
`5.
`
`On April 29, 2022, applicant Art Pharmaceutical Ltd. filed an intent-to-use
`
`application seeking to register KATADINE as a trademark in International Class 5 in connection
`
`with “Antiseptic preparations; Antiseptics; Gargles; Nasal rinse” (“Applicant’s Mark”).
`
`6.
`
`The Application was published for opposition on March 28, 2023, and Katadyn
`
`obtained an extension of time, until July 26, 2023, to oppose the Application. This Notice of
`
`Opposition is timely filed.
`
`7.
`
`Katadyn has priority over Applicant. Katadyn’s common law rights in its
`
`KATADYN trademark for sterilization, purification, and disinfecting products predate the priority
`
`date of the Application and, upon information and belief, any U.S. priority date on which Applicant
`
`may rely. Katadyn’s registered rights in its KATADYN trademark also predate the priority date
`
`of the Application and, upon information and belief, any U.S. priority date on which Applicant
`
`may rely.
`
`CORE/2054993.0125/183307377.1
`
`2
`
`
`
`8.
`
`Applicant’s Mark, KATADINE, is phonetically identical, and nearly visually
`
`identical, to the KATADYN Trademark.
`
`9.
`
`The goods identified in the Application are nearly identical and/or highly similar to
`
`goods offered by Katadyn under the KATADYN Trademark. For example, the Application covers
`
`antiseptics, which are similar in nature to the various sterilizers, disinfectants, and purifiers offered
`
`under the KATADYN trademark. Antiseptics, sterilizers, disinfectants, and purifiers all are
`
`designed to cleanse and help prevent or destroy harmful material.
`
`10.
`
`Applicant’s KATADINE mark that is the subject of the Application so resembles
`
`the previously adopted, used, and registered KATADYN Trademark that Applicant’s Mark, when
`
`used in connection with the goods identified in the Application, is likely to cause confusion, to
`
`cause mistake, or to deceive. Consumers are likely to mistakenly believe that such goods that
`
`Applicant intends to offer under the KATADINE mark are produced, provided, sponsored,
`
`endorsed, or approved by Katadyn, or are in some way affiliated, connected, or associated with
`
`Katadyn and the products offered and sold under the KATADYN Trademark. Therefore, the
`
`Application should be refused under 15 U.S.C. §§ 1052(d) and 1063.
`
`11.
`
`Registration of Applicant’s Mark would be a further source of damage to Katadyn,
`
`as it would confer upon Applicant various statutory presumptions to which it is not entitled in view
`
`of Katadyn’s prior rights in the KATADYN Trademark.
`
`WHEREFORE, pursuant to Section 13 of the Lanham Act, 15 U.S.C. § 1063, Katadyn
`
`respectfully requests that its opposition be sustained and that registration of the mark shown in
`
`Application Serial No. 97/389,801 be refused. Please charge the Notice of Opposition fee to the
`
`Deposit Account of Stinson LLP Account No. 19-4409.
`
`CORE/2054993.0125/183307377.1
`
`3
`
`
`
`Date: July 24, 2023
`
`Respectfully submitted,
`
`/Joel D. Leviton/
`Joel D. Leviton
`STINSON LLP
`50 South Sixth Street, Suite 2600
`Minneapolis, MN 55402
`Telephone: (612) 335-1562
`
`Attorneys for Katadyn Produkte AG
`
`CORE/2054993.0125/183307377.1
`
`4
`
`
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