Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA955532
`
`Filing date:
`
`02/20/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91245889
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Vytalyx Inc. dba Vytalyx
`
`VYTALYX INC
`815A BRAZOS STREET SUITE 265
`AUSTIN, TX 78701
`UNITED STATES
`dgranzotti@vytalyx.com, agranzotti@vytalyx.com, legal@vytalyx.com
`512-293-8900
`
`Other Motions/Papers
`
`David A Granzotti
`
`dgranzotti@vytalyx.com, legal@vytalyx.com, TBlofield@winthrop.com
`
`/David Granzotti/
`
`02/20/2019
`
`Attachments
`
`SCAN-02202019174203 executed.pdf(3123007 bytes )
`
`

`

`February 20, 2019
`
`TO:
`
`United States Patent & Trademark Office
`
`Interlocutory Attorney: Andrew R Baxley
`Paralegal: Veronica P White
`
`RE:
`
`Consent Motion to Amend Application
`Opposition No.: 91245889
`In the matter of Application Ser. No.: 87/719,755
`Filed: December 13, 2017
`For the mark: VYTALYX
`
`Dear Mr. Baxley:
`
`Applicant Vytalyx, Inc. (“Applicant”) hereby requests that the United States Patent and
`
`Trademark Office (“USPTO”) amend the identification of goods in International Class 5 in
`
`application US. Serial No. 87/719,755 pursuant to a consented motion to amend and replace it
`
`with the following:
`
`solutions,
`injectables, non-sterile
`sterile
`“Compounded pharmaceuticals, namely,
`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 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; all of the aforesaid, excluding, compounded
`pharmaceuticals and compounded personalized pharmaceuticals for the treatment of
`cancer,” in IC 5
`
`The Applicant submits that the above amendment deletes duplicate goods (as shown
`
`below) and includes an exclusion as identified below in bold:
`
`solutions,
`injectables, non-sterile
`sterile
`“Compounded pharmaceuticals, namely,
`suspensions, ointments, creams, powders, capsules, tablets and troches for use in the areas
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`,,
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`.
`.
`,
`, ..
`.
`
`treatment, Female hormone
`dysfunction treatment, Male hormone
`replacement
`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; all of the aforesaid, excluding, compounded
`pharmaceuticals and compounded personalized pharmaceuticals for the treatment of
`cancer,” in IC 5
`
`This amendment should be considered proper and acceptable as the goods are narrower in scope,
`
`representing a narrower list of conditions, from the original identification of goods.
`
`Celator Pharmaceuticals,
`
`Inc.
`
`(“Opposer”) hereby agrees to the above amendment.
`
`Furthermore, upon approval of the above amendment by the USPTO, Opposer, with the consent
`
`of the Applicant, hereby requests that the USPTO dismiss the above captioned Opposition No.
`
`91245889.
`
`Acknowledged and agreed
`
`VYTALYX, INC.
`
`Name: David Granzotti
`
`CELATORPHARMACEUTIW/IQC.
`
`N me:
`'iffany Blofield
`
`Position: President
`
`
`
`Position: Attorne on behalf of Celator
`
`Pharmaceuticals, Inc.
`
`16884939v2
`
`