Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA178778
`ESTTA Tracking number:
`12/05/2007
`
`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 requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Cell Genesys, Inc.
`Corporation
`500 Forbes Boulevard
`South San Francisco, CA 94080
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Chelseaa Bush
`Heller Ehrman LLP
`333 Bush Street
`San Francisco, CA 94104
`UNITED STATES
`sf-trademark@hellerehrman.com Phone:415-772-6000
`Registration Subject to Cancellation
`
`Registration No
`International
`Registration No.
`Registrant
`
`2717137
`NONE
`
`Registration date
`International
`Registration Date
`
`05/20/2003
`NONE
`
`Genesis Biomedical Limited
`2nd Floor 464 Hay Street
`Subiaco WA 6008,
`AUSTRALIA
`Goods/Services Subject to Cancellation
`
`Class 010.
`All goods and services in the class are cancelled, namely: ELECTROTHERAPY DEVICES, NAMELY,
`PULSED ELECTROMAGNETIC FIELD THERAPEUTIC DEVICES; APPARATUS AND
`INSTRUMENTS FOR DELIVERING OF THERAPY FOR MUSCULOSKELETAL AND VASCULAR
`DISORDERS; PARTS AND ACCESSORIES FOR THE AFORESAID GOODS
`
`Grounds for Cancellation
`
`Abandonment
`Priority and likelihood of confusion
`
`Trademark Act section 14
`Trademark Act section 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`Registration Date
`
`1772613
`
`05/18/1993
`
`Application Date
`
`12/05/1990
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA178778
`ESTTA Tracking number:
`12/05/2007
`
`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 requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Cell Genesys, Inc.
`Corporation
`500 Forbes Boulevard
`South San Francisco, CA 94080
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Chelseaa Bush
`Heller Ehrman LLP
`333 Bush Street
`San Francisco, CA 94104
`UNITED STATES
`sf-trademark@hellerehrman.com Phone:415-772-6000
`Registration Subject to Cancellation
`
`Registration No
`International
`Registration No.
`Registrant
`
`2717137
`NONE
`
`Registration date
`International
`Registration Date
`
`05/20/2003
`NONE
`
`Genesis Biomedical Limited
`2nd Floor 464 Hay Street
`Subiaco WA 6008,
`AUSTRALIA
`Goods/Services Subject to Cancellation
`
`Class 010.
`All goods and services in the class are cancelled, namely: ELECTROTHERAPY DEVICES, NAMELY,
`PULSED ELECTROMAGNETIC FIELD THERAPEUTIC DEVICES; APPARATUS AND
`INSTRUMENTS FOR DELIVERING OF THERAPY FOR MUSCULOSKELETAL AND VASCULAR
`DISORDERS; PARTS AND ACCESSORIES FOR THE AFORESAID GOODS
`
`Grounds for Cancellation
`
`Abandonment
`Priority and likelihood of confusion
`
`Trademark Act section 14
`Trademark Act section 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`Registration Date
`
`1772613
`
`05/18/1993
`
`Application Date
`
`12/05/1990
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`CELL GENESYS
`
`NONE
`
`Class 042. First use: First Use: 1992/09/25 First Use In Commerce: 1992/09/25
`research and product development services concerning biotechnology
`
`U.S. Registration
`No.
`Registration Date
`
`2604222
`
`08/06/2002
`
`Application Date
`
`03/29/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`CELL GENESYS
`
`NONE
`
`Class 005. First use: First Use: 1994/10/24 First Use In Commerce: 1994/10/24
`PHARMACEUTICAL PREPARATIONS IN THE NATURE OF VIRAL VECTORS,
`CANCER VACCINES, PACKAGING CELLS AND CELLS TRANSFORMED
`WITH VIRAL VECTORS, ALL FOR THE TREATMENT OF CANCER,
`AUTOIMMUNE DISEASES, INFECTIOUS DISEASES, INFLAMMATORY
`DISEASES AND GENETIC DISEASES
`
`U.S. Registration
`No.
`Registration Date
`
`2604223
`
`08/06/2002
`
`Application Date
`
`03/29/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`CELL GENESYS
`
`NONE
`
`Class 001. First use: First Use: 1994/10/24 First Use In Commerce: 1994/10/24
`BIOCHEMICAL PREPARATIONS IN THE NATURE OF VIRAL VECTORS,
`PACKAGING CELLS AND CELLS TRANSFORMED WITH VIRAL VECTORS,
`ALL FOR RESEARCH USE
`
`Attachments
`
`76232409#TMSN.gif ( 1 page )( bytes )
`76232410#TMSN.gif ( 1 page )( bytes )
`CancellationCELLGEN.pdf ( 5 pages )(125387 bytes )
`
`Certificate of Service
`
`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.
`
`Signature
`Name
`Date
`
`/ChelseaaBush/
`Chelseaa Bush
`12/05/2007
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 2,717,137
`Trademark: CELLGEN
`
`
`
`Cell Genesys, Inc.,
`
`Petitioner,
`
`v.
`
`Genesis Biomedical Limited,
`
`Respondent.
`
`PETITION FOR CANCELLATION
`
`Cell Genesys, Inc. (“Petitioner”), a Delaware corporation having a principal place
`
`of business at 500 Forbes Boulevard, South San Francisco, California 94080, believes
`
`that it is and will continue to be damaged by Registration No. 2717137 for the mark
`
`CELLGEN in International Class 10 and hereby petitions to cancel the same.
`
`As grounds for cancellation, Petitioner alleges:
`
`l.
`
`Genesis Biomedical Limited (“Respondent”) appears as the Registrant of
`
`Registration No. 2,717,137 for CELLGEN for “electrotherapy devices, namely, pulsed
`
`electromagnetic field therapeutic devices; apparatus and instruments for delivering of
`
`therapy for musculoskeletal and vascular disorders; parts and accessories for the aforesaid
`
`goods” in International Class 10.
`
`2.
`
`Respondent is, upon information and belief, an Australian company having
`
`a place of business at 464 Hay Street, Subiaco, Western Australia 6008, Australia.
`
`
`
`3.
`
`Upon information and belief, Respondent has not used CELLGEN as a
`
`trademark in the United States for over three consecutive years, if at all, and therefore
`
`Registrant is presumed to have abandoned the CELLGEN mark pursuant to 15 U.S.C. §
`
`1 127.
`
`4.
`
`Petitioner has used the mark CELL GENESYS since at least as early as
`
`1992. Petitioner is the owner of numerous registrations for CELL GENESYS, including
`
`Registration No. 1772613 registered May 18, 1993 for research and product development
`
`services concerning biotechnology with a date of first use of September 25, 1992,
`
`Registration No. 2604222 registered August 6, 2002 for pharmaceutical preparations with
`
`a date of first use of October 24, 1994, and Registration No. 2604223 registered August 6,
`
`2002 for biochemical preparations with a date of first use of October 24, 1994.
`
`4.
`
`There is no issue as to priority. Respondent’s registration is based on its
`
`foreign registration under Section 44(e) and has been granted a priority date of June 6,
`
`2001. The first date of registration and all the dates of first use of Petitioner’s CELL
`
`GENESYS mark are well before the priority date of Respondent’s CELLGEN mark, and
`
`Petitioner’s CELL GENESYS mark therefore has priority over Respondent’s CELLGEN
`
`registration.
`
`5.
`
`Petitioner has provided its goods and services under the mark CELL
`
`GENESYS throughout the United States and has developed exceedingly valuable
`
`goodwill with respect to the CELL GENESYS mark.
`
`
`
`6.
`
`By virtue of its efforts and the expenditure of considerable sums for
`
`promotional and advertising activities and by virtue of the excellence of its goods and
`
`services, Petitioner has gained for its CELL GENESYS mark a most valuable reputation
`
`and has created, in the minds of the buying public, an exclusive association between the
`
`CELL GENESYS mark and its goods and services.
`
`7.
`
`The trademark registered by Respondent, namely, CELLGEN,
`
`is likely to
`
`be confused with Petitioner’s CELL GENESYS mark because the marks are highly
`
`similar in appearance, sound and overall commercial impression.
`
`8.
`
`Respondent has registered CELLGEN as a mark in connection with goods
`
`that are highly related to the goods of Petitioner and such use so nearly resembles
`
`Petitioner’s use as to be likely to cause confusion, to cause mistake or to deceive within
`
`the meaning of l5 U.S.C. § l052(d).
`9.
`A If Respondent is permitted to use CELLGEN for its goods as specified in
`
`the challenged registration, confusion in trade resulting in damage and injury to Petitioner
`
`would be caused and would result by reason of the fact that Respondent’s mark is
`
`confusingly similar to Petitioner’s CELL GENESYS mark. Persons familiar with
`
`Petitioner’s CELL GENESYS mark would be likely to purchase Respondent’s
`
`CELLGEN goods as goods offered and sold by Petitioner. Furthermore, any defect,
`
`objection, or fault found with Respondent’s goods marketed under CELLGEN would be
`
`likely to reflect upon and seriously injure the reputation that Petitioner has established for
`
`its goods offered under its CELL GENESYS mark.
`
`
`
`10.
`
`If Respondent is permitted to maintain the registration herein opposed, it
`
`will continue to hold at least a prima facie exclusive right to use of CELLGEN. Such a
`
`registration would continue to be a source of damage and injury to Petitioner.
`
`WHEREFORE, Petitioner prays that the cancellation be sustained and that
`
`Registration No. 2,717,137 be cancelled.
`
`Dated: Decembe1‘5,20O7
`
`Respectfully submitted,
`HELLER EHRMAN LLP
`
`By: § Bet M.
`
`o man
`Chelseaa E. Larsen
`Attorneys for Cell Genesys, Inc.
`333 Bush Street
`San Francisco, CA 94104
`415-772-6000
`
`Please refer to Our File No.: 21647~OOO1
`
`
`
`CERTIFICATE OF SERVICE
`
`l certify that a copy of the foregoing PETITION FOR CANCELLATION was sewed by
`First Class Mail, on December 5, 2007, on Respondent at the following address:
`
`Genesis Biomedical Limited
`
`464 Hay Street
`Subiaco, Western Australia 6008
`Australia
`
`and on Respondent’s Attorney of Record/Domestic Representative at the following
`address:
`
`Donna J. Bunton
`
`Nixon & Vanderhye P.C.
`1 100 North Glebe Road, 8th floor
`
`Arlington, VA 22201—4714
`
`Dated: December §, 2007
`
`By:
`
`Chelseaa E. L. Bush
`
`Attorneys for Petitioner
`HELLER EHRMAN LLP
`
`333 Bush Street
`
`San Francisco, California 94104
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
