`
`
`
`Baxley
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`February 19, 2019
`
`Opposition No. 91245889
`
`Celator Pharmaceuticals, Inc.
`
`v.
`
`
`Andrew P. Baxley, Interlocutory Attorney:
`
`Vytalyx Inc. dba Vytalyx
`
`After the Board, in a January 29, 2019 order (5 TTABVUE), rejected the parties’
`
`stipulation (filed January 21, 2019, 4 TTABVUE) to amend involved application
`
`Serial No. 87719755, Applicant, on February 13, 2019, the parties filed a renewed
`
`stipulation to amend that application.
`
`By the renewed proposed amendment, the parties agree to amend the
`
`identification of goods in International Class 5 from
`
`Compounded pharmaceuticals, namely, sterile injectables, non-sterile
`solutions, suspensions, ointments, creams, powders, capsules, tablets
`and troches for use in the areas of, Weight management, Erectile
`dysfunction treatment, Male hormone replacement treatment, Female
`hormone replacement treatment, Bio-identical hormone replacement,
`Adrenal dysfunction treatment, Thyroid dysfunction treatment, Pain
`management, Palliative care, Sports medicine, Amino acid replacement
`therapy, Mineral replacement therapy, Vitamin replacement therapy,
`Anti-aging therapy, Dermatology, Fertility, Growth Hormone therapy;
`and Anticonvulsant agents, Antihypertensive agents, Antidiabetic
`agents, Non-steroidal anti-inflammatory agents, Anesthetic agents,
`Vasoactive agents, Lipotropic agents, Chelating agents, Psychoactive
`agents; Compounded personalized pharmaceuticals, namely, sterile
`
`
`
`

`

`Opposition No. 91245889
`
`
`injectables, non-sterile solutions, suspensions, ointments, creams,
`powders, capsules, tablets and for use in the areas of, Weight
`management, Erectile dysfunction
`treatment, Male hormone
`replacement treatment, Female hormone replacement treatment, Bio-
`identical hormone replacement, Adrenal dysfunction treatment,
`Thyroid dysfunction treatment, Pain management, Palliative care,
`Sports medicine, Amino acid replacement therapy, Mineral replacement
`therapy, Vitamin
`replacement
`therapy, Anti-aging
`therapy,
`Dermatology, Fertility, Growth Hormone therapy; and Anticonvulsant
`agents, Antihypertensive agents, Antidiabetic agents, Non-steroidal
`anti-inflammatory agents, Anesthetic agents, Vasoactive agents,
`Lipotropic agents, Chelating agents, Psychoactive agents; Compounded
`personalized pharmaceuticals, namely, sterile injectables, non-sterile
`solutions, suspensions, ointments, creams, powders, capsules, tablets
`and troches based on medical, genetic, genomic, nutrigenomic,
`pharmacogenomic, microbiomic, metabolomic, proteomic, biochemistry,
`biomarker, health, dietary, nutrition, exercise, physical fitness, lifestyle
`and personal information for use in the areas of, Weight management,
`Erectile dysfunction treatment, Male hormone replacement treatment,
`Female hormone replacement treatment, Bio-identical hormone
`replacement, Adrenal dysfunction treatment, Thyroid dysfunction
`treatment, Pain management, Palliative care, Sports medicine, Amino
`acid replacement therapy, Mineral replacement therapy, Vitamin
`replacement therapy, Anti-aging therapy, Dermatology, Fertility,
`Growth Hormone
`therapy;
`and
`Anticonvulsant
`agents,
`Antihypertensive agents, Antidiabetic agents, Non-steroidal anti-
`inflammatory agents, Anesthetic agents, Vasoactive agents, Lipotropic
`agents, Chelating agents, Psychoactive agents; Genetic marker tests
`comprised of reagents for medical purposes; Medical diagnostic reagents
`and assays for testing of body fluids in the nature of genomic,
`microbiomic, metabolomic, and biochemical tests; Medical diagnostic
`test kits comprised of medical diagnostic reagents and assays used to
`collect test samples for analyzing DNA, blood, hair, saliva and stool
`information for use in DNA, blood, hair, saliva and stool testing of
`humans; Kits comprised of medical diagnostic reagents and assays for
`use in genetic, genomic, microbiomic, metabolomic, and biochemical
`testing; Kits comprised of medical diagnostic reagents and assays for
`use in DNA, blood, hair, saliva and stool testing of humans; Medical
`diagnostic test media in the form of strips, threads, swabs, cartridges,
`and collection tubes for collecting and analyzing genetic, genomic,
`microbiomic, metabolomic, and biochemical data
`
`to (additional wording in bold, deleted wording struck through)
`
`
`
`2
`
`

`

`Opposition No. 91245889
`
`
`pharmaceuticals, namely, Sterile prescription
`Compounded
`injectables, non-sterile prescription
`solutions, prescription
`suspensions, prescription
`ointments, prescription
`creams,
`prescription powders, prescription capsules, prescription tablets
`and prescription troches for use in the areas of Weight management,
`Erectile dysfunction treatment, Male hormone replacement treatment,
`Female hormone replacement treatment, Bio-identical hormone
`replacement, Adrenal dysfunction treatment, Thyroid dysfunction
`treatment, Pain management, Palliative care, Sports medicine, Amino
`acid replacement therapy, Mineral replacement therapy, Vitamin
`replacement therapy, Anti-aging therapy, Dermatology, Fertility,
`Growth Hormone
`therapy;
`and
`Anticonvulsant
`agents,
`Antihypertensive agents, Antidiabetic agents, Non-steroidal anti-
`inflammatory agents, Anesthetic agents, Vasoactive agents, Lipotropic
`agents, Chelating agents, Psychoactive agents; Compounded
`personalized
`pharmaceuticals, namely, Sterile prescription
`injectables, non-sterile prescription
`solutions, prescription
`suspensions, prescription
`ointments, prescription
`creams,
`prescription powders, prescription capsules, prescription tablets
`and troches based on medical, genetic, genomic, nutrigenomic,
`pharmacogenomics, microbiomic, metabolomics, proteomic,
`biochemistry, biomarker, health, dietary, nutrition, exercise,
`physical fitness, lifestyle and personal information for use in the
`areas of, Weight management, Erectile dysfunction treatment, Male
`hormone replacement treatment, Female hormone replacement
`treatment, Bio-identical hormone replacement, Adrenal dysfunction
`treatment, Thyroid dysfunction
`treatment, Pain management,
`Palliative care, Sports medicine, Amino acid replacement therapy,
`Mineral replacement therapy, Vitamin replacement therapy, Anti-aging
`therapy, Dermatology, Fertility, Growth Hormone therapy; and
`Anticonvulsant agents, Antihypertensive agents, Antidiabetic agents,
`Non-steroidal anti-inflammatory agents, Anesthetic agents, Vasoactive
`agents, Lipotropic agents, Chelating agents, Psychoactive agents;
`Compounded personalized pharmaceuticals, namely, sterile injectables,
`non-sterile solutions, suspensions, ointments, creams, powders,
`capsules, tablets and troches based on medical, genetic, genomic,
`nutrigenomic, pharmacogenomic, microbiomic, metabolomic, proteomic,
`biochemistry, biomarker, health, dietary, nutrition, exercise, physical
`fitness, lifestyle and personal information for use in the areas of, Weight
`management, Erectile dysfunction
`treatment, Male hormone
`replacement treatment, Female hormone replacement treatment, Bio-
`identical hormone replacement, Adrenal dysfunction treatment,
`Thyroid dysfunction treatment, Pain management, Palliative care,
`Sports medicine, Amino acid replacement therapy, Mineral replacement
`
`
`
`3
`
`

`

`Opposition No. 91245889
`
`
`therapy,
`therapy, Anti-aging
`replacement
`therapy, Vitamin
`Dermatology, Fertility, Growth Hormone therapy; and Anticonvulsant
`agents, Antihypertensive agents, Antidiabetic agents, Non-steroidal
`anti-inflammatory agents, Anesthetic agents, Vasoactive agents,
`Lipotropic agents, Chelating agents, Psychoactive agents; Genetic
`marker tests comprised of reagents for medical purposes; Medical
`diagnostic reagents and assays for testing of body fluids in the nature of
`genomic, microbiomic, metabolomic, and biochemical tests; Medical
`diagnostic test kits comprised of medical diagnostic reagents and assays
`used to collect test samples for analyzing DNA, blood, hair, saliva and
`stool information for use in DNA, blood, hair, saliva and stool testing of
`humans; Kits comprised of medical diagnostic reagents and assays for
`use in genetic, genomic, microbiomic, metabolomic, and biochemical
`testing; Kits comprised of medical diagnostic reagents and assays for
`use in DNA, blood, hair, saliva and stool testing of humans; Medical
`diagnostic test media in the form of strips, threads, swabs, cartridges,
`and collection tubes for collecting and analyzing genetic, genomic,
`microbiomic, metabolomic, and biochemical data; all of the foregoing,
`excluding pharmaceuticals for the treatment of cancer
`
`A proposed amendment to any application or registration which is the subject of
`
`an inter partes proceeding must also comply with all other applicable rules and
`
`statutory provisions, including Trademark Rules 2.71-2.75. See TBMP §§ 514.01 and
`
`605.03(b). In particular, while an applicant may amend to clarify or limit the
`
`identification, adding to or broadening the scope of the identification is not permitted.
`
`See Trademark Rule 2.71(a); TMEP §§1402.06 et seq., 1402.07. That is, any
`
`amendment to the identification of goods must remain within the scope of the
`
`identification of goods as published for opposition.
`
`The proposed amendment is unacceptable because inasmuch as it identifies goods
`
`are not within the scope of the identification that was published for opposition.1 The
`
`
`1 The revised proposed amendment indicated that the only changes in the identification of
`goods would be deletion of the wording “Compounded pharmaceuticals, namely,” and
`“Compounded personalized pharmaceuticals, namely,” and addition of the wording “all of the
`aforesaid, excluding, pharmaceuticals for the treatment of cancer.” 6 TTABVUE 2. As noted
`
`
`
`4
`
`

`

`Opposition No. 91245889
`
`scope of goods in the identification of goods in International Class 5 that was
`
`published for opposition was defined as “[c]ompounded pharmaceuticals” and
`
`“[c]ompounded personal pharmaceuticals.” The applicable definition of “compound”
`
`is “comprised of two or more substances or parts,” and the applicable definition of
`
`“pharmaceutical” is “[a] drug or medication.” Webster’s II New College Dictionary 231
`
`and 824 (1995). By the proposed amendment, Applicant essentially seeks to redefine
`
`that scope as “prescription” goods. Even if the Board assumes that all such
`
`prescription goods are with the scope of pharmaceuticals and personal
`
`pharmaceuticals, the proposed amended identification is unacceptable because it is
`
`presumed to encompass compounded pharmaceuticals and personal pharmaceuticals,
`
`as well as pharmaceuticals and personal pharmaceuticals that are composed of a
`
`single substance. Cf. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (where goods
`
`are broadly identified and there are no limitations as to their nature, type, channels
`
`of trade or classes of purchasers, the Board must presume that the scope of the
`
`identified goods encompasses all goods of the nature and type described, that those
`
`goods move in all channels of trade that would be normal for such goods, and that the
`
`goods would be purchased by all potential customers). Thus, any amendment must
`
`stay within the broader classification of “[c]ompounded pharmaceuticals” and
`
`
`supra, the proposed amendment included far greater additional wording than “all of the
`aforesaid, excluding, pharmaceuticals for the treatment of cancer.” The parties are reminded
`that their redlining of proposed amendments should accurately reflect additions and
`deletions from the identifications of goods and/or services at issue.
`
`
`
`
`5
`
`

`

`Opposition No. 91245889
`
`“[c]ompounded personal pharmaceuticals,” as Applicant defined its goods prior to
`
`publication of its mark for opposition.
`
`In view of this determination, the motion to amend is denied without prejudice.
`
`The present identification of goods in International Class 5, that is, the identification
`
`prior to the filing of the motion to amend, remains operative for purposes of future
`
`amendment. See Trademark Rule 2.71(a); TMEP §1402.07(d).
`
`However, inasmuch as the filing of the proposed amendment indicates to the
`
`Board that the parties are making efforts to settle this matter, proceedings are
`
`suspended, and the parties are allowed until thirty days from the date of this
`
`order to file a revised motion to amend, failing which the Board will resume
`
`proceedings and reset dates, and the opposition will go forward on the present
`
`application.
`
`
`
`
`
`6
`
`