To: | Dennis Hunter (taraklaux@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86727808 - CANNALICIOUS - DH-9 |
Sent: | 4/21/2016 3:26:27 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86727808
MARK: CANNALICIOUS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Dennis Hunter
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 4/21/2016
This Office Action issues subsequent to the Office Action issued January 26, 2016.
It has since come to the attention of the examining attorney that the attorney of record may be an employee of the United States Patent and Trademark Office, an agency of the federal government. Federal law and agency ethics rules prohibit employees of the federal government from providing legal representation to others before any federal agency. See 15 U.S.C. § 78u-1; 18 U.S.C. § 208; 5 C.F.R. §§ 2635.401–2635.403, 2635.501-2635.503, and 2640.201–2640.202; Ethics Pledge, Executive Order No. 13490, 74 Fed. Reg. 4673 (1/21/2009).
I. Requirement for Additional Information – CSA Compliance
To permit proper examination of the application, applicant must submit additional information about the goods. See 37 C.F.R. §2.61(b); TMEP §814. The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods. If such materials are not available, applicant must provide a detailed factual description of the goods. Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application.
In addition, applicant must submit a written statement indicating whether the goods identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971. See 37 C.F.R. §2.69; TMEP §907. The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”). The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.
Finally, applicant must provide written responses to the following questions:
Failure to satisfactorily respond to a requirement for information is a ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Garden of Eatin’ Inc., 216 USPQ 355, 357 (TTAB 1982); TMEP §814. Please note that merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to the above requirement and is insufficient to make the relevant information properly of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant is advised that, upon consideration of the information provided by applicant in response to the above requirement, registration of the applied-for mark may be refused on the ground that the mark, as used in connection with the identified goods , is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.
II. DECLARATION REQUIRED: The signature that appears on the declaration in support of the application is that of Tara Laux. Because it is unclear whether the Ms. Laux is authorized to sign on behalf of applicant, the application may not have a valid signed verification, which is an application requirement. See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). Therefore, applicant must verify the statements specified further below in an affidavit or signed declaration under 37 C.F.R. §2.20. See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response form, answer “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing.
III. ADDITIONAL INFORMATION REQUIRED: To permit proper examination of the application, applicant’s attorney must address the following. See 37 C.F.R. §2.61(b).
Specifically, applicant’s attorney must respond to the following:
1) Has the attorney of record been previously employed by the United States Patent and Trademark Office, a division thereof, or any other agency of the United States government?
2) Is the attorney of record presently employed by the United States Patent and Trademark Office, a division thereof, or any other agency of the United States government?
3) Was the attorney of record an employee of any agency of the United States government before September 10, 2015, the application date for this application?
4) Was the attorney of record an employee of any agency of the United States government on the date of September 10, 2015, the application date for this application?
Failure to comply with a request for information can be grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
AUTHORIZED SIGNATORIES -- Advisory
Responses to Office actions must be properly signed. See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01. If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).
If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and U.S. commonwealths and U.S. territories; and (2) Canadian agents and/or attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO. See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.01.
If an applicant is initially represented by an attorney, and then later retains another attorney from a different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney. See 37 C.F.R. §2.18(a)(7); TMEP §604.03.
LOSS OF TEAS PLUS STATUS: A TEAS Plus application must include a verified statement that meets the requirements of 37 C.F.R. §2.33, which is dated and signed by a person properly authorized to sign on behalf of the applicant pursuant to 37 C.F.R. §2.193(e)(1). 37 C.F.R. §2.22(a)(11); TMEP §819.01(l). The attorney-of-record’s electronic signature appears on the application and it is unclear whether the attorney is authorized to sign on behalf of applicant as indicated above. If the attorney-of-record was an employee of the United States Patent and Trademark Office or other federal agency on the date the application was filed, the signature attachment in applicant’s TEAS Plus application did not include either (1) a proper verified statement that includes all the averments required under 37 C.F.R. §2.33 or (2) the required dated signature. By omitting a proper verified statement that includes all the averments required under 37 C.F.R. §2.33 or a dated signature, applicant failed to provide the required verified statement.
In that case, because applicant has not satisfied all the TEAS Plus application filing requirements, applicant must submit an additional processing fee of $50 per class. See 37 C.F.R §§2.6(a)(1)(v), 2.22(a)(11), (c); TMEP §819.04. The additional fee is required even if applicant later satisfies this requirement by submitting a proper verification of the application.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/jeffreyjlook/
Jeffrey J Look
Law Office 108
571-272-1652
jeffrey.look@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.