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July 28, 2014

Alleged Exclusive Licensee of PRENATE® Trademarks Sues for Infringement

On November 30, 2012, Plaintiff Avion Pharmaceuticals, LLC ("Avion"), which claims to have an exclusive license to trademarks comprising the term PRENATE in whole or in part ("the PRENATE Marks"), filed suit for infringement against Lawrenceville, Georgia-based TherapeuticsMD, Inc. and Boca Raton, Florida-based BocaGreenMD, Inc. (stated to be a division of TherapeuticsMD).

The complaint alleges: "Pursuant to a license from Acella Pharmaceuticals, LLC ('Acella'), Avion has the exclusive right to promote, market, sell, and distribute products under the famous and distinctive PRENATE marks, which are used in connection with a variety of nutritional supplement and prenatal vitamin products."  Avion identifies the following as "PRENATE Marks":

Mark

Reg. No. or App. Serial No.

Link to PTO Assignment Records

PRENATE

2,850,441

here

PRENATE DHA

3,346,288

here

PRENATE DHA RX PRENATAL VITAMIN & DHA and Design

3,356,954

here

PRENATE ELITE

3,101,227

here

PRENATE MINI

85626593

none

Acella filed its PRENATE MINI application (the serial number for which we inserted the boldfaced “5”) on May 16, 2012 on an “intent-to-use” basis.

In November 2012, according to the complaint, Avion became aware that the defendants were using the marks PRENA1, PRENA1 PLUS, and PRENA1 CHEW for prenatal vitamin products, and on November 14, it sent a cease-and-desist letter to defendants' CEO, to which Avion alleges it did not receive a substantive response.

Avion's complaint asserts counts for trademark infringement, false designation of origin and federal unfair competition (§ 43(a) of the Lanham Act), common law trademark infringement, common law unfair competition, and violation of the Georgia Uniform Deceptive Trade Practices Act.  Counts I and V allege willful conduct.  Avion seeks injunctive and monetary relief, "including without limitation reasonable attorneys' fees and treble damages."

Regarding Avion's claim of standing to sue for infringement, courts have held:  "As with standing analysis in patent infringement cases, 'the determination of whether a licensee has standing to sue under [15 U.S.C.] § 1114 largely depends on the rights granted to the licensee in the licensing agreement.'"  Hako-Med USA, Inc. v. Axiom Worldwide, Inc., No. 8:06-CV-1790, 2006 U.S. Dist. LEXIS 94239, at *19 (S.D. Fla. Nov. 15, 2006) (quoting Ultrapure Sys., Inc. v. Ham-Let Group, 921 F.Supp. 659, 665 (N.D. Cal. 1996)).

The case is Avion Pharmaceuticals, LLC v. TherapeuticsMD, Inc. and BocaGreenMD, Inc., No. 1:12-cv-4164-AT, filed 11/30/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to U.S. District Judge Amy Totenberg.

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