To: | Halcyon Organics LLC (cscott@tfhlegal.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87484426 - HALCYON - 6865.02 |
Sent: | 12/22/2017 11:05:52 AM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87484426
MARK: HALCYON
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CORRESPONDENT ADDRESS: TAYLOR, FEIL, HARPER, LUMSDEN & HESS, P. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Halcyon Organics LLC
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 12/22/2017
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
NO SIMILAR MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Applicant, however, should note the following refusal.
SECTIONS 1 AND 45 REFUSAL – NOT IN LAWFUL USE IN COMMERCE
Registration is refused because applicant does not have a bona fide intention to lawfully use the applied-for mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1948 (TTAB 2010); TMEP §907.
To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful. In re Brown, 119 USPQ2d 1350 (TTAB 2016); In re JJ206, LLC, 120 USPQ2d 1568 (TTAB 2016); See Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630, 81 USPQ2d 1592, 1595 (9th Cir. 2007). Thus, any goods or services to which the mark is applied must comply with all applicable federal laws. See In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘“use in commerce,” means a “lawful use in commerce,” and [that the sale or] the shipment of goods in violation of [a] federal statute . . . may not be recognized as the basis for establishing trademark rights’” (quoting Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982))); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907. If the items or activities that the mark is intended to be used in connection with are unlawful, actual lawful use in commerce is not possible and there can be no bona fide intent to lawfully use the mark in commerce.
The Controlled Substances Act (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]”). In addition, the CSA 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.
Here, the application identifies applicant’s goods as follows: “Herbal dietary and nutritional supplements containing cannabidiol (CBD).”
Applicant’s goods and/or services consist of, or include, items or activities that are prohibited by the CSA, namely, CBD and supplements containing CBD. As shown by the attached evidence from DEADiversion.usdoj.gov, CBD does not naturally occur in the non-marijuana parts of the hemp plant. As such, CBD constitutes an illegal marijuana extract or derivative.
Because the identified goods and/or services are prohibited by the CSA, applicant does not have a bona fide intention to lawfully use the applied-for mark in commerce.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
ADVISORY – SUPPLEMENTS CONTAINING CBD
Applicant is advised that with regard to supplements and foods which contain CBD, the Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug or a biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the Federal Food, Drug and Cosmetic Act).
The U.S. Food & Drug Administration has stated that substantial clinical investigations of cannabidiol have begun and thus products containing cannabidiol may not be sold as dietary supplements. See U.S. Food & Drug Administration, FDA and Marijuana: Questions and Answers, available at http://www.fda.gov/newsevents/publichealthfocus/ucm421168.htm#dietarysuppl; see also U.S. Food & Drug Administration, Draft Guidance for Industry: Dietary Supplements: New Dietary Ingredient Notifications and Related Issues, available at http://www.fda.gov/Food/GuidanceRegulation/GuidanceDocumentsRegulatoryInformation/ucm257563.htm (“The general rule is that an article that has been authorized for investigation as a new drug or as a biologic before being marketed as a food or as a dietary supplement cannot be marketed as a dietary supplement if substantial clinical investigations of the article have begun and the existence of such investigations has been made public.”).
For purposes of this potential refusal, it does not matter what the source of the CBD is, e.g., from hemp oil or imported industrial hemp or from marijuana. However, since this law only applies to the current sale of supplements and foods containing CBD, applicant is advised that if it files an allegation of use and the specimens or other evidence is made of record showing that its dietary and nutritional supplements contain cannabidiol (CBD), a refusal based upon the mark not being in use in lawful commerce under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1127, because the goods are not lawful under the Food, Drug & Cosmetic Act may be raised at that time if the FDA has not authorized the sale of such goods when the allegation of use is examined.
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
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 and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a 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. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
/Robert J. Struck/
Robert J. Struck
Trademark Examining Attorney
Law Office 109
Robert.Struck@uspto.gov
571-272-1513
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.