Medikit, LLC has filed an application for registration of the trademark “EPI-KIT” for “injectable drugs for the treatment of anaphylactic reactions”. Medikit attempted to register this mark in International Class 5, a category that includes “medicinal products and other preparations for medical or veterinary use”. Nevertheless, Medikit requested the EPI-KIT sign to be used with “injectable drugs for the treatment of anaphylactic reactions.” TTAB considered this to be a clear breach of the settlement agreement. A 2004 settlement agreement between Medikit and Mylan is relevant to this discussion. Medikit already attempted to register the EPI-KIT trademark in 2002. Mylan refused to record it. To resolve the dispute, both parties entered into a settlement agreement. In the event of a trademark dispute or trademark conflict, the parties are well advised to consider possibilities for comparison. There are many reasons to avoid litigation, including procedural costs and uncertainty of an adverse outcome. Court proceedings, trademark procedures and redress procedures are lengthy, costly and significantly affect a brand`s marketing program and related activities. In addition to preventing exorbitant legal costs and a quick solution, there are other advantages to resolving a trademark dispute.
It is possible to prepare an agreement that meets the specific needs of the parties involved, you can eliminate the risk of an adverse outcome, you can maintain friendly relations between the parties, you can avoid producing confidential information and documents during discovery, and you can resume daily activities without much interruption. Mylan Inc. owns a registered trademark for EPIPEN. Mylan`s brand also covers “injectable drugs for the treatment of anaphylactic reactions” of international Class 5. Another viable alternative to the regulation is for the applicant or registrant to agree either to abandon his trademark application or to abandon his registration. If the procedure has not yet been initiated, the voluntary task is simple. If the proceedings have been initiated, the party is well advised to obtain the written consent of each opposing party to the proceedings, failing which a judgment will be rendered against the plaintiff and will be subject to an exclusion charge. The same applies to the renunciation of the registration of the mark. Similarly, an opponent or petitioner may agree to withdraw his or her proceedings for a variety of reasons. For example, if an acceptable change in goods or services is made in the trademark application or if the mark is modified, this may result in revocation. Both procedures (opposition or cancellation) may be withdrawn without prejudice if the reply has not been provided.
Another example that could trigger the withdrawal of an opposition or cancellation procedure would be the conclusion of a settlement agreement by the parties. For more information on trademark comparison agreements, check out our websites entitled Resolving Trademark Disputes Without Litigation and Is a Coexistence Agreement the Right Choice for Your Brand? In the transaction, both parties made certain statements: overall, TTAB granted Mylan`s application and rejected medikit`s trademark application for the EPI-KIT trademark. . . .