Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA848521
`
`Filing date:
`
`09/27/2017
`
`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 has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Correspondence
`information
`
`Pharmscript Holdco LLC
`
`limited liability company
`
`Citizenship
`
`Delaware
`
`150 Pierce Street
`Somerset, NJ 08873
`UNITED STATES
`
`Christiane S. Campbell
`Duane Morris LLP
`30 South 17th Street
`Philadelphia, PA 19103
`UNITED STATES
`Email: ccampbell@duanemorris.com
`Phone: 2159791817
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5217423
`
`Registration date
`
`06/06/2017
`
`Registrant
`
`Pharmascript of Michigan, Inc.
`37484 Interchange Dr.
`Farmington Hills, MI 48335
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 035. First Use: 2008/06/01 First Use In Commerce: 2008/06/01
`All goods and services in the class are subject to cancellation, namely: Pharmaceutical services,
`namely, closeddoor retail pharmacy services for long term care facilities; Retail pharmacy services;
`Supplying prescription drugs to long term care facilities
`
`Grounds for Cancellation
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Related Proceed-
`ings
`
`Pharmascript of Michigan Inc and Pharmascript of Shelby, Inc. v. Pharmscript of
`MI LLC, 2017-161014-CB
`
`Attachments
`
`PHARMASCRIPT Petition for Cancellation 9-27-17.pdf(439601 bytes )
`
`Signature
`
`Name
`
`/Christiane S. Campbell/
`
`Christiane S. Campbell
`
`
`
`ESTTA Tracking number:
`
`ESTTA848521
`
`Filing date:
`
`09/27/2017
`
`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 has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Correspondence
`information
`
`Pharmscript Holdco LLC
`
`limited liability company
`
`Citizenship
`
`Delaware
`
`150 Pierce Street
`Somerset, NJ 08873
`UNITED STATES
`
`Christiane S. Campbell
`Duane Morris LLP
`30 South 17th Street
`Philadelphia, PA 19103
`UNITED STATES
`Email: ccampbell@duanemorris.com
`Phone: 2159791817
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5217423
`
`Registration date
`
`06/06/2017
`
`Registrant
`
`Pharmascript of Michigan, Inc.
`37484 Interchange Dr.
`Farmington Hills, MI 48335
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 035. First Use: 2008/06/01 First Use In Commerce: 2008/06/01
`All goods and services in the class are subject to cancellation, namely: Pharmaceutical services,
`namely, closeddoor retail pharmacy services for long term care facilities; Retail pharmacy services;
`Supplying prescription drugs to long term care facilities
`
`Grounds for Cancellation
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Related Proceed-
`ings
`
`Pharmascript of Michigan Inc and Pharmascript of Shelby, Inc. v. Pharmscript of
`MI LLC, 2017-161014-CB
`
`Attachments
`
`PHARMASCRIPT Petition for Cancellation 9-27-17.pdf(439601 bytes )
`
`Signature
`
`Name
`
`/Christiane S. Campbell/
`
`Christiane S. Campbell
`
`
`
`Date
`
`09/27/2017
`09/27/2017
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration No. 5217423
`Filed: October 24, 2016
`For the mark: PHARMASCRIPT
`
`Registered on: June 6, 2017
`
`Pharmscript Holdco, LLC
`Petitioner
`
`V.
`
`Pharmascript of Michigan, Inc.
`
`Registrant
`
`Cancellation No:
`
`PETITION FOR CANCELLATION
`
`Petitioner, Pharmscript Holdco, LLC, a limited liability company organized and existing
`
`under the laws of the state of Delaware, having an address at 150 Pierce Street, Somerset, New
`
`Jersey 08873 (hereinafter “Petitioner” or “Pharmscript”), believes that it is and will continue to
`
`be damaged by registration of PHARMASCRIPT as a trademark covering pharmaceutical
`
`services in International Class 35 as shown in US. Registration No. 5217423, and hereby seeks
`
`the cancellation of the registration for the same, obtained in the name of Pharmascript of
`
`Michigan, Inc., a corporation organized and existing in the state of Michigan, having an address
`
`at 37484 Interchange Dr., Farmington Hills, Michigan 48335 (hereinafter “Registrant” or
`
`“PMI”).
`
`As grounds for the petition for cancellation, Pharmscript, through its counsel, alleges
`
`that:
`
`
`
`
`
`Since at least as early as 2009, Pharmscript, and its subsidiaries,affiliates, and/or
`
`licensees have been engaged in the offering and rendering of pharmaceutical services and
`
`related goods and services, throughout the U.S., in connection with the PHARMSCRIPT
`
`name and trademark.
`
`Pharmscript is a leading pharmacy, partnering with healthcare institutions and providers
`
`to manage and enhance their pharmacies and pharmacy services. Pharmscript’s clients
`
`include long-term and post-acute care facilities throughout the U.S. Pharmscript provides
`
`these clients with systems and services for supplying medications to thousands of clients’
`
`residents and patients. Additional information about Pharmscript and its services is
`
`available at URL wwwpharmscriptcom.
`
`On information and belief, Registrant PMI offers pharmacy services to long—term
`
`healthcare facilities in Oceana, Macomb and Oakland Counties in Michigan. On
`
`information and belief, PMI did not use the name and alleged trademark
`
`“PHARMASCRIPT” in connection with services offered in Michigan until 2011. To
`
`date, PMI has not offered or rendered services under the PHARMASCRIPT name or
`
`mark outside of Michigan, and specifically has not offered or rendered services under the
`
`PHARMASCRIPT name or mark outside of Oceana, Macomb, and Oakland Counties.
`
`In or about early October, 2016, representatives of Pharmscript met with representatives
`
`of PMI to discuss a possible acquisition of PMI by Pharmscript. During the discussions
`
`between the parties, Pharmscript disclosed to PMI that it was operating and had been
`
`operating under the PHARMSCRIPT name and brand, throughout the U.S., since at least
`
`
`
`as early as 2009. The discussions did not result in either party merging with or acquiring
`
`the interests of the other, and to date, the parties continue to operate as separate entities.
`
`On October 24, 2016, immediately following the discussions referenced in Paragraph 4
`
`above, PMI filed its US. federal trademark application to register PHARMASCRIPT for
`
`“Pharmaceutical services, namely, closed door retail pharmacy services for long term
`
`care facilities; Retail pharmacy services; Supplying prescription drugs to long term care
`
`facilities” in International Class 35. That application resulted in the registration that is the
`
`subject of this Petition for Cancellation.
`
`Registrant’s application to register PHARMASCRIPT was filed based on alleged actual
`
`use ofthe mark in commerce under Trademark Act Section 1(a). 15 U.S.C. § 1051(a).
`
`The application claimed actual use of the PHARMASCRIPT mark on June 1, 2008 and
`
`actual use of the PHARMASCRIPT mark in commerce on June 1, 2008.
`
`In Registrant’s application for the PHARMASCRIPT mark filed on October 24, 2016,
`
`Registrant declared, under threat of punishment by fine or imprisonment, or both, under
`
`18 U.S.C. § 1001 , that it was entitled to use PHARMASCRIPT in commerce, and, to the
`
`best of the declarant’s knowledge and belief, “no other persons. .
`
`. have the right to use
`
`the mark in commerce, either in the identical form or in such near resemblance. . .”
`
`In light of the information cited in Paragraphs 4-7, above, and upon information and
`
`belief, at the time of filing its application to register PHARMASCRIPT, PMI was aware
`
`of Pharmscript and aware of Pharmscript’s use of the PHARMSCRIPT name and
`
`trademark in interstate commerce since at least as early as 2009.
`
`
`
`
`
`
`
`PMI’s statements to the Office in its application to register the PHARMASCRIPT mark
`
`were knowingly and willfillly false. Specifically, PMI’s (1) claim of actual use of the
`
`PHARMASCRIPT mark in interstate or foreign commerce; (2) claimed date of first use
`
`and date of first use in commerce; and (3) statutory declaration that it was unaware of
`
`Pharmscript, were all knowingly and willfially false and made in a clear attempt to
`
`preempt any rights Pharmscript would claim in its PHARMSCRIPT name and marks.
`
`The false statements were material to the application and therefore constitute fraud before
`
`the Office.
`
`PMI has initiated a lawsuit against Pharmscript in the Circuit Court for the County of
`
`Oakland in the state of Michigan, Pharmascript ofMichigan Inc and Pharmascrz'pt of
`
`Shelby, Inc. v. Pharmscript ofMI LLC, 2017-161014-CB, alleging infringement of PMI’s
`
`‘ common law rights in the asserted PHARMASCRIPT mark. There is a reasonable
`
`apprehension on the part of Pharmscript that, if sustained, PMI’s PHARMASCRIPT
`
`federal registration would be used unj ustifiably to preempt Pharmscript’s business
`
`activities under the PHARMSCRIPT name and mark, in and outside of Michigan.
`
`10.
`
`11.
`
`
`
`
`
`12.
`
`As a result, continued registration by PMI will cause substantial damage and injury to
`
`Pharmscript and PMI is not entitled to continued registration for the claimed mark.
`
`WHEREFORE, Pharmscript respectfully requests that this cancellation action be
`
`sustained and that Registration No. 5217423 for PHARMASCRIPT be cancelled.
`
`Dated: September 27, 2017
`
`Respectfully submitted,
`
`DUANE ®LL
`
`
`
`45 lane S.
`
`ampbell
`
`
`
`Attorneys for Petitioner, Pharmscript Holdco,
`LLC
`
`30 South 17'11 Street
`
`Philadelphia, PA 19103
`(tel) 215.979.1817
`(fax) 215.979.1020
`vccampbell@duanemorris.com
`
`
`
`CERTIFICATE OF ELECTRONIC FILING
`
`I HEREBY CERTIFY THAT THIS CORRESPONDENCE IS BEING FILED ELECTRONICALLY WITH THE UNITED STATES
`PATENT AND TRADEMARK OFFICE TRADEMARK TRIAL AND APPEAL BOARD, VIA ESTTA, ON THE DATE
`INDICATED BELOW.
`
`x
`
`'
`
`arm/pr
`
`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §2.119§a[
`
`I hereby certify that on September 27, 2017 the following documents are being deposited with the United States
`Postal Service, with sufficient postage as first class mail in an envelope addressed to Registrant at:
`
`ERIN MORGAN KLUG
`
`VARNUM, RIDDERING SCHMIDT & HOWLETT LLP
`39500 HIGH POINTE BLVD., SUITE 350
`
`NOVI, MICHIGAN UNITED STATES 48375
`
`Electronic copies of the below documents are being sent to Registrant’s Correspondent’s e-mail at the following e-
`mail address:
`
`trademarksgazvarnumlawcom emkluggawamumlawcom
`
`Documents:
`
`PETITIONER’S PETITION FOR CANCELLATION
`
`(Date)
`
`(Signature)
`
`DM2\8201051.1
`
`
`
`
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