Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA856583
`
`Filing date:
`
`11/06/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067001
`
`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 Logo Mark
`11-6-17.pdf(174137 bytes )
`PHARMASCRIPT Amended Petition to Cancel Logo Mark 11-6-17.pdf(507612
`bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA856583
`
`Filing date:
`
`11/06/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067001
`
`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 Logo Mark
`11-6-17.pdf(174137 bytes )
`PHARMASCRIPT Amended Petition to Cancel Logo Mark 11-6-17.pdf(507612
`bytes )
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration No. 5217424
`
`
`
`.,
`
`.
`
`For the mark:
`
`Registered on: June 6, 2017
`
`Pharmscript Holdco, LLC
`Petitioner
`
`V.
`
`Pharr'nascript of Michigan, Inc.
`
`Registrant
`
`Cancellation No: 92067001
`
`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 moves the 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,
`
`
`
`Dated: November {g ,2017
`
`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;
`
`f
`
`L/
`
`(\(6/(4
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. §2.119§a1
`
`
`
`, 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:
`IPDOCKET CLARKHILLCOM, tmccarth ‘ clarkhill.com, dlau@clarkhill.com,
`,,
`dmarr
`clarkhill.com
`Documents:
`PETITIONER’S AMENDED PETITION FOR CANCELLATION ( M0HON >
`
`On:
`
`(I
`
`(a
`
`‘qu (Date)
`
`(Signature)
`
`DM2\8290846.I
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration No. 5217424
`
` For the mark:
`
`Registered on: Jun
`
`,
`
`Pharmscript Holdco, LLC
`Petitioner
`
`V.
`
`Pharmascript of Michigan, Inc.
`
`Registrant
`
`Cancellation No: 92067001
`
`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 the PHARMASCRIPT Logo as a trademark covering
`
`pharmaceutical services in International Class 35 as shown in US Registration No. 5217424,
`
`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 US. 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 Macomb and Oakland Counties in Michigan. On information and
`
`belief, PMI did not use the name and alleged trademark “PHARMASCRIPT” or the
`
`PHARMASCRIPT Logo in connection with services offered in Michigan until 2011. To
`
`date, PMI has not offered or rendered services under the PHARMASCRIPT Logo outside
`
`of Michigan, and specifically has not offered or rendered services under the
`
`PHARMASCRIPT Logo outside of Macomb and Oakland Counties.
`
`2
`
`
`
`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 U.S. federal trademark application to register the PHARMASCRIPT
`
`Logo 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
`
`p is the subject of this Petition for Cancellation.
`
`Registrant’s PHARMASCRIPT Logo 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 Logo 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 Logo 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 Logo mark to Registrant will cause substantial damage and injury to
`
`Opposer.
`
`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
`
`in 2011.
`
`Registrant’s application to register the PHARMASCRIPT Logo 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 Logo
`
`mark on June 1, 2008 and actual use of the PHARMASCRIPT Logo mark in commerce
`
`on June 1, 2008.
`
`In Registrant’s application for the PHARMASCRIPT Logo 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 the PHARMASCRIPT Logo 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 the PHARMASCRIPT Logo, 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.
`
`
`
`11.
`
`PMI’s statements to the Office in its application to register the PHARMASCRIPT Logo
`
`mark were knowingly and willfully false. Specifically, PMI’s (1) claim of actual use of
`
`the PHARMASCRIPT Logo 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 willfully false and made in a clear
`
`attempt to preempt any rights Pharmscript would claim in its PHARMSCRIPT name and
`
`marks.
`
`12.
`
`The false statements were material to the application and therefore constitute fraud before
`
`the Office.
`
`13.
`
`There is a reasonable apprehension on the part of Pharmscript that, if sustained, PMI’s
`
`PHARMASCRIPT Logo 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. 5217424 for the PHARMASCRIPT Logo be cancelled.
`
`Dated: November (4 ,2017
`
`Respectfully submitted,
`
`
`
`By:
`
`
`.
`Ch ' tia
`
`
`S. Campbell
`
`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:
`
`Date h /c / ML
`
`
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. 2.119 a
`
`
`, 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, tmccarthngclarkhillcom, dlau@clarkhill.com,
`dma1r@clarkhill.com
`
`Documents:
`
`PETITIONER’S AMENDED PETITION FOR CANCELLATION
`
`On: ”[6!le
`
`(Date)
`
`i
`
`E 22p
`
`(Signature)
`
`DM2\8291307.1
`
`
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
