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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA856582
`
`Filing date:
`
`11/06/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067000
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Pharmscript Holdco LLC
`
`CHRISTIANE S CAMPBELL
`DUANE MORRIS LLP
`30 SOUTH 17TH STREET
`PHILADELPHIA, PA 19103
`UNITED STATES
`Email: ccampbell@duanemorris.com
`
`Motion to Amend Pleading/Amended Pleading
`
`Christiane S. Campbell
`
`ccampbell@duanemorris.com
`
`/Christiane S. Campbell/
`
`11/06/2017
`
`PHARMASCRIPT Motion to Amend Petition to Cancel Word Mark
`11-6-17.pdf(165952 bytes )
`PHARMASCRIPT Amended Petition to Cancel Word Mark 11-6-17.pdf(495689
`bytes )
`
`

`

`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: 92067000
`
`MOTION TO AMEND PETITION FOR CANCELLATION
`
`This motion to amend Petitioner’s petition for cancellation is being submitted along with
`
`the amended petition for cancellation, pursuant to Fed. R. Civ. P. 15(a)(1)(A) and TBMP 507.
`
`The petition for cancellation was originally filed on September 27, 2017. The cancellation action
`
`was instituted on October 3, 2017 and upon the Board’s notice of trial dates, the Registrant’s
`
`Answer is due November 12. The subject petition for cancellation has been amended to add a
`
`claim of priority and likelihood of confusion.
`
`Petitioner hereby movesthe Board to grant it leave to amend the pleadings, and such
`
`leave should be given freely when justice so requires.
`
`
`
`

`

`WHEREFORE, Petitioner respectfully requests leave to amend the subject petition for
`
`cancellation.
`
`Respectfully submitted,
`
`DUANEMO ’ '
`
`Dated: November
`
`(’2 ,2017
`
`
`
`
`Hu
`1
`
`
`Ch 'tJa'n6 .Cmpl
`
`
`
`Attorneys for Petitioner, Pharmscript Holdco,
`LLC
`
`30 South 17th Street
`
`Philadelphia, PA 19103
`(tel) 215.979.1817
`(fax) 215.979.1020
`ccampbell@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.
`
`By:
`
`/L/
`
`Date:
`
`[I
`
`(I
`
`[4'
`
`
`
`
`

`

`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §2.119§a[
`I hereby certify that on November é , 2017 the following documents are being sent electronically to Registrant’s
`counsel of record at the following e-mail addresses:
`IPDOCKETgazCLARKHILLCOM, tmccarthngclarkhillcom, dlau@clarkhill.com,
`dmarr@clarkhill.com
`PETITIONER’S AMENDED PETITION FOR CANCELLATION ( MOW,»
`
`Documents:
`
`On:
`
`(Hill/’71
`
`(Date)
`
`(Signa
`
`
`
`DM2\8290669.1
`
`

`

`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: 92067000
`
`AMENDED PETITION FOR CANCELLATION
`
`This amended petition for cancellation is being submitted together with a motion for
`
`leave to amend Petitioner’s Petition for Cancellation filed on September 27, 2017 and instituted
`
`on October 3, 2017. Fed. R. Civ. P. 15(a)(1)(A).
`
`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:
`
`1.
`
`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.
`
`2.
`
`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.
`
`3.
`
`On information and belief, Registrant PMI offers pharmacy services to long-term
`
`healthcare facilities in 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 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 PHARMASCRIPT mark is confusingly similar to Pharmscript’s
`PHARMSCRIPT name and mark in sight, sound, and meaning. The services offered
`
`under the parties’ marks, i.e., pharmacy and prescription services for long-term or skilled
`
`care providers, are overlapping or at least related and are marketed to the same types of
`
`consumers. Registrant’s PHARMASCRIPT mark is likely to cause confusion and/or to
`
`cause mistake, or to deceive the trade and the general public into believing that
`
`Registrant’s services come from the same source as services offered or sold in connection
`
`with Pharmscript’s name and PHARMSCRIPT MARK, and/or are otherwise authorized,
`
`sponsored or licensed by Pharmscript, in violation of Section 2(d) of the Lanham Act, 15
`
`U.S.C. §1052(d). As a result, the continued registration of the PHARMASCRIPT mark
`
`to Registrant will cause substantial damage and injury to Opposer.
`
`3
`
`

`

`Pharmscript’s first use in commerce of the PHARMSCRIPT name and mark for its
`
`services at least as early as 2009 is earlier than any date of use upon which Registrant
`
`could rely. Specifically, on information and belief, Registrant’s actual date of first use is
`
`in201‘1.
`
`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. . .”
`
`10.
`
`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.
`
`ll.
`
`PMI’s statements to the Office in its application to register the PHARMASCRIPT mark
`
`were knowingly and willfully 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
`
`

`

`12.
`
`13.
`
`Pharmscript, were all knowingly and willfully 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.
`
`There is a' reasonable apprehension on the part of Pharmscript that, if sustained, PMI’s
`
`PHARMASCRIPT federal registration would be used to preempt Pharmscript’s business
`
`activities under the PHARMSCRIPT name and mark.
`
`
`
`

`

`
`
`14.
`
`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: November
`
`l;
`
`, 2017
`
`Respectfully submitted,
`
`
`
`Attorneys for Petitioner, Pharmscript Holdco,
`LLC
`
`30 South 17th Street
`
`Philadelphia, PA 19103
`(tel) 215.979.1817
`(fax) 215.979.1020
`ccampbell@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.
`
`By;
`
`,
`
`mfg/(1
`
`

`

`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §2.119ga[
`
`
`
`, 2017 the following documents are being sent electronically to Registrant’s
`I hereby certify that on November
`counsel of record at the following e-mail addresses:
`IPDOCKETgaZCLARKHILLCOM, tmccarthy@clarkhill.com, dlau@clarkhill.com,
`dn1a1r@clarkhill.com
`
`Documents:
`
`PETITIONER’S AMENDED PETITION FOR CANCELLATION
`
`On: ultll’l
`
`(Date)
`
`€22: ¥_/______
`
`(Signature)
`
`DM2\8240407.1
`
`

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