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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA877661
`
`Filing date:
`
`02/15/2018
`
`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
`
`Defendant
`Pharmascript of Michigan, Inc.
`
`DAVID J MARR
`CLARK HILL PLC
`130 E RANDOLPH ST 39TH FL
`CHICAGO, IL 60601
`UNITED STATES
`Email: ipdocket@clarkhill.com, tmccarthy@clarkhill.com, dmarr@clarkhill.com,
`dlau@clarkhill.com
`
`Answer
`
`Timothy M. McCarthy/
`
`tmccarthy@clarkhill.com, dmarr@clarkhill.com, dlau@clarkhill.com, ipdock-
`et@clarkhill.com
`
`Signature
`
`Date
`
`/Timothy M. McCarthy/
`
`02/15/2018
`
`Attachments
`
`Answer_001.pdf(27705 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`PHARMSCRIPT HOLDCO LLC
`
`
`
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`v.
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`
`
`
`
`
`
`
`
`PHARMASCRIPT OF MICHIGAN, INC,
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`
`
`
`
`
`
`
`
`Registrant.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`No. 92067001
`
`ANSWER TO AMENDED PETITION FOR CANCELLATION
`
`
`The Registrant, PHARMASCRIPT OF MICHIGAN, INC, by its attorneys, for its
`
`Answer to the Amended Petition for Cancellation, states:
`
`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.
`
`ANSWER: Registrant has no knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in Paragraph 1.
`
`2.
`
`Pharmscript is a leading pharmacy, partnering with healthcare institutions and
`
`providers to manage and enhance their pharmacies and pharmacy services. Pharmscript's clients
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`include long-term and post-acute care facilities throughout the U.S. Pharmscript provides these
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`clients with systems and services for supplying medications to thousands of clients' residents and
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`patients. Additional information about Pharmscript and its services is available at URL
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`www.pharmscript.com.
`
`ANSWER: Registrant has no knowledge or information sufficient to form a belief as to
`
`the truth of the allegations in Paragraph 2.
`
`
`
`
`

`

`3.
`
`On information and belief, Registrant PMI offers pharmacy services to long-term
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`healthcare facilities in Macomb and Oakland Counties in Michigan. On information and belief,
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`PMI did not use the name and alleged trademark "PHARMASCRIPT" or the PHARMASCRIPT
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`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
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`not offered or rendered services under the PHARMASCRIPT name or mark outside of Macomb
`
`and Oakland Counties.
`
`ANSWER: Registrant admits it offers pharmacy services to long-term healthcare
`
`facilities in Macomb and Oakland Counties in Michigan, as well as in other locations.
`
`Registrant denies the remainder of the allegations in Paragraph 3.
`
`4.
`
`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.
`
`ANSWER: Registrant denies the allegations in the first two sentences of Paragraph 4
`
`and admits the allegations in the third sentence of Paragraph 4.
`
`5.
`
`On October 24, 2016, immediately following the discussions referenced in
`
`Paragraph 4 above, PMI filed its U.S. federal trademark application to register the
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`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 is the subject of this Petition for Cancellation.
`
`ANSWER: Registrant admits filing the referenced trademark application but denies that
`
`the filing was “immediately following” anything.
`
`6.
`
`Registrant's PHARMASCRIPT Logo mark is confusingly similar to Pharmscript's
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`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
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`Logo mark, and/or are otherwise authorized, sponsored or licensed by Pharmscript, in violation
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`of Section 2(d) of the Lanham Act, 15 U.S.C. §105 2(d). As a result, the continued registration of
`
`the PHARMASCRIPT Logo mark to Registrant will cause substantial damage and injury to
`
`Opposer.
`
`ANSWER: Registrant has no knowledge or information sufficient to form a belief as to
`
`the truth of the allegations regarding a “PHARMSCRIPT Logo mark.” Registrant denies
`
`the remainder of the allegations in Paragraph 6.
`
`7.
`
`Pharmscript's first use in commerce of the PHARMSCRIPT name and mark for
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`its services at least as early as 2009 is earlier than any date of use upon which Registrant could
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`rely. Specifically, on information and belief, Registrant's actual date of first use is in 2011.
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`ANSWER: Registrant has no knowledge or information sufficient to form a belief as to
`
`the truth Pharmscript’s first use in commerce of the PHARMSCRIPT name and mark
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`and denies the remainder of the allegations in Paragraph 7.
`
`
`
`
`

`

`8.
`
`Registrant's application to register the PHARMASCRIPT Logo was filed based
`
`on alleged actual use of the mark in commerce under Trademark Act Section 1(a). 15 U.S.C. §
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`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.
`
`ANSWER: Registrant admits the allegations in Paragraph 8.
`
`9.
`
`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,
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`under 18 U.S.C. § 1001, that it was entitled to use the PHARMASCRIPT Logo in commerce,
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`and, to the best of the declarant's knowledge and belief, "no other persons ... have the right to use
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`the mark in commerce, either in the identical form or in such near resemblance ... "
`
`ANSWER: Registrant admits the allegations in Paragraph 9.
`
`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
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`aware of Pharmscript and aware of Pharmscript's use of the PHARMSCRIPT name and
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`trademark in interstate commerce since at least as early as 2009.
`
`ANSWER: Registrant denies the allegations in Paragraph 10.
`
`11.
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`PMI' s statements to the Office in its application to register the PHARMASCRIPT
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`Logo mark were knowingly and willfully false. Specifically, PMI's (1) claim of actual use of the
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`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
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`Pharmscript, were all knowingly and willfully false and made in a clear attempt to preempt any
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`rights Pharmscript would claim in its PHARMSCRIPT name and marks.
`
`ANSWER: Registrant denies the allegations in Paragraph 11.
`
`
`
`
`

`

`12.
`
`The false statements were material to the application and therefore constitute
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`fraud before the Office.
`
`ANSWER: Registrant denies the allegations in Paragraph 12.
`
`13.
`
`There is a reasonable apprehension on the part of Pharmscript that, if sustained,
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`PMI' s PHARMASCRIPT Logo federal registration would be used to preempt Pharmscript's
`
`business activities under the PHARMSCRIPT name and mark.
`
`ANSWER: Registrant denies the allegations in Paragraph 13.
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`WHEREFORE, Registrant prays that judgment be entered in its favor and against
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`CLARK HILL PLC
`
`s/Timothy M. McCarthy
`
`
`
`
`
`
`
`Opposer.
`
`
`
`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Timothy M. McCarthy
`David J. Marr
`CLARK HILL PLC
`130 E. Randolph St., 39th Fl.
`Chicago IL 60601
`312-985-5900
`tmccarthy@clarkhill.com
`dmarr@clarkhill.com
`
`Date: February 15, 2018
`
`
`
`
`
`

`

`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on February 15, 2018, I electronically filed the foregoing: Answer
`
`with the TTAB using the ESTTA system, which will send notification of such filing to the
`
`participants of record, and additionally emailed a copy to CHRISTIANE S CAMPBELL,
`
`ccampbell@duanemorris.com.
`
`
`
`
`
`
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`216455623.1 58028/322085
`
`
`
`
`
`
`
`s/Timothy M. McCarthy
`
`
`
`
`
`6
`
`

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