To:
`
`Subject:
`
`Sent:
`Sent As:
`
`Pollie Gautsch(pollie@gandalegal.com)
`U.S. Trademark Application Serial No. 90599433
`THERAPEUTICS
`April 15, 2022 12:24:58 PM EDT
`tmng.notices@uspto.gov
`
`- MYCRODOSE
`
`Attachments
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`
`
`U.S. Application Serial No.  90599433
`
`Mark:   MYCRODOSE THERAPEUTICS
`
`Correspondence Address:  
`Pollie Gautsch
`G&A Legal, APC
`665 San Rodolfo 124-209
`Solana Beach CA 92075 UNITED STATES
`
`Applicant:   Mycrodose Therapeutics
`
`Reference/Docket No.  N/A
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`Correspondence Email Address:   pollie@gandalegal.com
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`SUSPENSION NOTICE
`No Response Required
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`Issue date:   April 15, 2022
`
`INTRODUCTION
`
`Pursuant to TMEP §716.01, applicant is advised of the following status of the application.  Prior to
`issuance of this examiner’s amendment, the following issues were outstanding with this
`application:
`
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`1.
`2.
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`Section 2(d) Refusal - Likelihood of Confusion
`Prior-filed Pending Applications Advisory
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`3.
`4.
`5.
`6.
`7.
`8.
`9.
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`Section 2(e)(1) Refusal - Mark Is Merely Descriptive
`Supplemental Register Advisory
`Disclaimer Advisory
`Request for Additional Information Requirement
`Identification of Goods and Services Requirement
`Clarification of Number of Classes for which Registration Is Sought Requirement
`Specimen Requirement 
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`3.
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`4.
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`5.
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`6.
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`2.
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`In light of applicant’s communication dated March 26, 2022 and the amendments detailed below,
`the examining attorney has determined the following:
`1.
`Applicant's arguments against the Section 2(d) refusal are unpersuasive, and the refusal
`is  maintained and continued;
`One of the pending applications remains live and pending, and the application will
`be  suspended  pending registration or abandonment of the pending application; 
`Applicant's arguments against the Section 2(e)(1) refusal are unpersuasive, and the refusal
`is  maintained and continued;
`Applicant has provided a disclaimer of THERAPEUTICS, and the disclaimer advisory
`is  satisfied
`Applicant's response to the Request for Information Requirement is acceptable and made of
`record, and the requirement is  satisfied
`Applicant's amended identification misclassifies the services "Research and development in the
`field of pharmaceutical and dietary supplements," and, while the wording in the identification is
`acceptable, the requirements to provide a properly classified identification and to clarify the
`number of classes for which registration is sought is  maintained and continued
`Applicant did not respond to the specimen requirement, and the requirement is  maintained and
`continued
`
`7.
`
`
`Preliminary Response to Applicant's Arguments
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`Section 2(d) Refusal
`
`Applicant asserts that the marks are different based on factors such as the number of syllables in the
`marks, the spelling differences, the tenses of the marks, and the additional term in applicant's mark.
`However, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but
`instead whether the marks are sufficiently similar in terms of their commercial impression such that
`[consumers] who encounter the marks would be likely to assume a connection between the parties.”
`Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting
`Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir.
`2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who
`retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126
`USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d
`1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169
`USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019);
`TMEP §1207.01(b).  Here, the overall commercial impression--that the goods provide micro doses of
`pharmaceuticals or supplements--is the same.
`
`Applicant also asserts that its supplements are pharmaceutical grade supplements, while registrant's
`supplements are not. However, the compared goods and services need not be identical or even
`competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d
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`

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`1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54
`USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some
`manner and/or if the circumstances surrounding their marketing are such that they could give rise to the
`mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v.
`Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-
`Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).  Moreover,
`determining likelihood of confusion is based on the description of the goods and/or services stated in
`the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit
`Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re
`i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  Applicant's
`identification merely states that the supplements are "Dietary, nutritional,  and herbal supplements for
`treatment of mental health conditions and cognitive degenerative diseases," which overlaps with
`registrant's nutritional supplements.
`
`Section 2(e)(1) Refusal
`
`Applicant primarily argues that the meaning of THERAPEUTICS is ambiguous with respect to
`applicant's goods and services. However, per its own identification, applicant provides "Pharmaceutical
`preparations for treatment of mental health conditions and cognitive degenerative diseases," which falls
`within applicant's preferred definition. Moreover, applicant has disclaimed THERAPEUTICS, thereby
`conceding its descriptiveness. 
`
`Applicant also does not address the descriptiveness of MYCRODOSE in its arguments. Applicant
`admits in the Request for Information Requirement, though, that applicant's products "deliver a small,
`sustained and controlled dose of medication slowly into the body over time." 
`
`Supplemental Register Advisory
`
`Applicant notes its willingness to amend the Supplemental Register if the arguments against the Section
`2(e)(1) Refusal are unpersuasive. If applicant confirms that it is amending the applicant to the
`Supplemental Register, the Section 2(e)(1) Refusal will be obviated.
`
`Classification of Goods and Services Requirement
`
`Applicant has classified “Research and development in the field of pharmaceuticals and dietary
`supplements” in International Class 5; however, the proper classification is International Class 42.
`Therefore, applicant may respond by (1) adding International Class 42 to the application and
`reclassifying these goods and/or services in the proper international class, (2) deleting “Research and
`development in the field of pharmaceuticals and dietary supplements” from the application, or (3)
`deleting the remainder of the items in the identification and reclassifying the specified goods and/or
`services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If
`applicant adds one or more international classes to the application, applicant must comply with the
`multiple-class requirements specified in this Office action.
`
`CLARIFICATION OF NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
`REQUIREMENT
`
`The application references goods and/or services based on use in commerce in more than one
`international class; therefore, applicant must satisfy all the requirements below for each international
`
`

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`class:
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`List the goods and/or services by their international class number in
`(1)       
`consecutive numerical order, starting with the lowest numbered class (for example,
`International Class 3: perfume; International Class 18: cosmetic bags sold empty).
`
`Submit a filing fee for each international class not covered by the fee(s)
`(2)       
`already paid (view the USPTO’s current fee schedule). Specifically, the application
`identifies goods and/or services based on use in commerce that are classified in at least 2
`classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant
`must either (a) submit the filing fees for the classes not covered by the submitted fees or
`(b) restrict the application to the number of classes covered by the fees already paid.
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`Submit verified dates of first use of the mark anywhere and in commerce
`(3)       
`for each international class. See more information about verified dates of use.
`
`Submit a specimen for each international class. The current specimen is
`(4)       
`not acceptable for any international class. See more information about specimens.
`
`Examples of specimens.  Specimens for goods include a photograph of (1) the actual
`goods bearing the mark; (2) an actual container, packaging, tag or label for the goods
`bearing the mark; or (3) a point-of-sale display showing the mark directly associated with
`the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen
`submitted as a display associated with the goods must show the mark in association with a
`picture or textual description of the goods and include information necessary for ordering
`the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 
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`Specimens for services must show a direct association between the mark and the services
`and include: (1) copies of advertising and marketing material, (2) a photograph of business
`signage or billboards, or (3) materials showing the mark in the sale, rendering, or
`advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 
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`Any webpage printout or screenshot submitted as a specimen must include the webpage’s
`URL and the date it was accessed or printed on the specimen itself, within the TEAS form
`that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C.
`§1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
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`Submit a verified statement that “The specimen was in use in commerce
`(5)       
`on or in connection with the goods and/or services listed in the application at least as
`early as the filing date of the application.” See more information about verification.
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`See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
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`For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the
`requirements online using the Trademark Electronic Application System (TEAS) form, see the
`Multiple-class Application webpage.
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`The fee for adding classes to a TEAS Standard application is $350 per class. See 37 C.F.R.
`§2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class
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`

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`Application webpage.
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`Specimen Requirement
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`Applicant did not respond to the specimen requirement, and the requirement is  maintained and
`continued.
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`ACTION IS SUSPENDED
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`The application is suspended for the reason(s) specified below.   See 37 C.F.R. §2.67; TMEP §§716 et
`seq.  
`
`The pending application(s) below has an earlier filing date or effective filing date than applicant's
`application.  If the mark in the application(s) below registers, the USPTO may refuse registration of
`applicant's mark under Section 2(d) because of a likelihood of confusion with the registered
`mark(s).  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is
`suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R.
`§2.83(c).  Information relevant to the application(s) below was sent previously.  
`
`
`- U.S. Application Serial No(s).  88960002
`
`
`Suspension process.  The USPTO will periodically check this application to determine if it should
`remain suspended.   See TMEP §716.04.  As needed, the trademark examining attorney will issue a
`letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05.  
`
`No response required.  Applicant may file a response, but is not required to do so.  
`
`
`/Marynelle Wilson/
`Marynelle Wilson
`Trademark Examining Attorney
`Law Office 113
`(571) 272-7978
`marynelle.wilson@uspto.gov
`
`
`
`           
`

`

`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on April 15, 2022 for
`U.S. Trademark Application Serial No.  90599433
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You may be required to respond to this Office action.  Follow the steps below.
`
`(1) Read the Office action.   This email is NOT the Office action.
`
`(2) Respond to the Office action, if a response is required. Respond by deadline using the
`Trademark Electronic Application System (TEAS). Your response must be received by the
`USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.
`Otherwise, your application will be abandoned. See the Office action itself regarding how to
`respond.
`
`(3) Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.
`
`GENERAL GUIDANCE
`
`•
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`•
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`•
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`Check the status of your application periodically in the Trademark Status &
`Document Retrieval (TSDR) database to avoid missing critical deadlines.
`
`Update your correspondence email address to ensure you receive important USPTO
`notices about your application.
`
`Beware of trademark-related scams . Protect yourself from people and companies that
`may try to take financial advantage of you. Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you. We will never request your credit card number or social security
`number over the phone. And all official USPTO correspondence will only be emailed
`from the domain “@uspto.gov.” Verify the correspondence originated from us by using
`your Serial Number in our database, TSDR, to confirm that it appears under the
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`

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`“Documents” tab, or contact the Trademark Assistance Center. 
`
`•
`
`Hiring a U.S.-licensed attorney . If you do not have an attorney and are not required to
`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process. The
`USPTO examining attorney is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.
`
` 
`