UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88003956
MARK: CROWN
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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: Crown, Robert
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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: 6/11/2019
The referenced application and voluntary amendments have been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO INTERNATIONAL CLASS 30 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2112447, 1656390, 3271911, 2123555, 3385310, and 3254742. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant seeks to register the mark CROWN (and design) for, in relevant part, “Bakery goods; Cakes; Cereal based energy bars; Confectionery made of sugar; Cookies; Cookies and crackers; Cracker and cheese combinations; Crackers; Frozen cookie, brownie and biscotti dough; Granola snacks; Granola-based snack bars; Rice cakes; Rice crackers” in International Class 30.
The mark in U.S. Registration No. 2112447 is CROWN (in standard characters) for “chocolate, chocolate candies and candy” in International Class 30.
The mark in U.S. Registration No. 1656390 is CROWN CHOCOLATE (in typed drawing form) for “chocolate candies” in International Class 30.
The mark in U.S. Registration No. 3271911 is CROWN CONFECTIONERY (in standard characters) for “chocolates, chocolate candies” in International Class 30.
The mark in U.S. Registration No. 2123555 is CROWN TRUFFLES (in typed drawing form) for “chocolate, namely, truffles” in International Class 30.
The marks in U.S. Registration Nos. 2112447, 1656390, 3271911, and 2123555 are all owned by Chocolate Pkg. & Mfg., Corp., a corporation of Utah.
The mark in U.S. Registration No. 3385310 is CROWN FARMS (in standard characters) for goods including “Coffee; tea; sugar; rice; tapioca; sago; flour; processed cereals; bread; pastries and confectionery, namely, candy sweets, candies and baked goods, namely, cakes, cookies, pies; yeast; baking powder; salt; mustard; vinegar; sauces; spices; sandwiches; pizzas; processed grains” in International Class 30.
The mark in U.S. Registration No. 3254742 is CROWN FARMS (and design) for goods including “Coffee; tea; sugar; rice; tapioca; sago; flour; processed cereals; bread; pastries and confectionery, namely, candy sweets, candies and baked goods, namely, cakes, pies; flavored ices; honey; yeast; baking powder; salt; mustard; vinegar; sauces; spices; sandwiches; pizzas; processed grains” in International Class 30.
The marks in U.S. Registration Nos. 3385310 and 3254742 are owned by Euro Foods Group Limited, a private limited company of the United Kingdom.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
In the present case, applicant’s mark and registrant’s mark is partly identical and highly similar in terms of sound, appearance, connotation and commercial impression to the marks in each of the cited registrations.
In re U.S. Registration No. 2112447 (CROWN)
Here, applicant’s mark and the registered mark are partly identical in that they share the term “CROWN” and are therefore identical in sound and nearly identical in appearance, connotation and commercial impression. Therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
In re U.S. Registration Nos. 1656390 (CROWN CHOCOLATE), 3271911 (CROWN CONFECTIONERY), 2123555 (CROWN TRUFFLES), 3385310 (CROWN FARMS), and 3254742 (CROWN FARMS and design)
Here, applicant’s mark is partly identical to each of the registered marks in that they share the term “CROWN.” Thus, the marks are overall highly similar in terms of sound, appearance, connotation and commercial impression. Although the registered marks each contain additional wording, this wording is highly descriptive of or generic for the goods identified in the respective registrations and has accordingly been disclaimed in each registration.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Thus, the inclusion of these additional terms in the registered marks does not obviate the overall confusing similarity between these marks and the applied-for mark.
Lastly, although applicant’s mark and the mark in U.S. Registration No. 3254742 contain designs, the designs primarily feature crowns, which serve to reinforce the “CROWN” wording in the marks and do not imbue either mark with a particularly unique meaning or commercial impression. Moreover, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In sum, because the marks share the dominant wording “CROWN” and are not significantly distinguished by their additional literal and/or design elements, the marks at issue are confusingly similar.
Relatedness of the Goods
Here, applicant’s goods are closely related, if not identical in part, to the goods identified in each of the cited registrations. Specifically, applicant’s goods consist of a variety of snack food and confectionery food items, including “confectionery made of sugar” and “bakery goods.” The attached dictionary evidence from http://www.merriam-webster.com/dictionary/confectionery shows that “confectionery” refers to “sweet foods (such as candy or pastry).” Each of the cited registrations contains sweet foods that would generally be considered confectionery items, such as chocolate candies (U.S. Reg. Nos. 2112447, 1656390, and 3271911), chocolate truffles (U.S. Reg. No. 2123555), and “confectionery, namely, candy sweets, candies” (U.S. Reg. Nos. 3385310 and 3254742). The application and U.S. Registration Nos. 3385310 and 3254742 both also includes “cakes.” Thus, applicant’s goods are identical in part to the goods in each cited registration.
Summary
In sum, due to the similarity of the marks and the relatedness of the respective goods, it is likely consumers will mistakenly believe the goods emanate from the same source. The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrants from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrants. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988). Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
PARTIAL REFUSAL RESPONSE OPTIONS
The stated refusal refers to International Class 30 only and does not bar registration in the other class. Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the class to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
Applicant should note the following additional ground for refusal.
SECTIONS 1 AND 45 REFUSAL – NOT IN LAWFUL USE IN COMMERCE – CSA
Registration is refused because the applied-for mark is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.
To qualify for federal trademark and/or service mark registration, the use of a mark in commerce must be lawful. 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); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, the goods and/or services to which the mark is applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing 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’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
Additional Information Regarding Applicant’s Goods in International Class 34
Here, the items to which the proposed mark will be applied are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport “drug paraphernalia,” which is defined as “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 in the human body a controlled substance.” 21 U.S.C. § 863. Under the CSA, marijuana is a controlled substance. 21 U.S.C. §§ 812(a), (c), 841, 844.
The identification of goods includes the following items: “Cigarette rolling papers; Smoking pipes; Tobacco pipes.”
In determining whether an item is drug paraphernalia, relevant evidence may include instructions or descriptive materials provided with the item concerning its use; advertising concerning its use; and the manner in which the item is displayed for sale. See 21 U.S.C. §863(e); In re Brown, 119 USPQ2d 1350, 1351-52 (TTAB 2016) (relying on applicant’s specimen and website to establish that its retail store services included the sale of marijuana).
In this case, the specimen indicates that applicant’s cigarette rolling papers are labeled “hemp rolling papers.” Additionally, the attached evidence from applicant’s website, www.crowncannabis.com, indicates that the applicant is involved in the cannabis industry due to the inclusion of the term “cannabis” in the webpage URL itself and applicant’s use of “cannabis” in variations of the applied-for mark shown on the website. The fact that applicant also sells a variety of products specifically labeled as including CBD (cannabidiol) indicates that applicant is in the business of providing items used for inhaling or ingesting cannabis or CBD. This evidence supports the conclusion that applicant is producing and selling products and equipment that can be used for inhaling or introducing to the body marijuana and unlawful derivatives thereof.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) The claimed use of the applied-for mark in connection with such goods was not in lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.
Accordingly, because the identified goods with which the mark is used consist of or include items that are prohibited under the Controlled Substances Act, the applied-for mark, as used in connection with such goods, cannot be in lawful use in commerce. See In re Brown, 119 USPQ2d at 1352.
Additional Information Regarding Applicant’s Goods in International Class 30
Here, the evidence of record indicates that the items to which the proposed mark will be applied were unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971, as of 6/18/2018, the date on which the application was filed.
Specifically, the attached evidence from applicant’s website, www.crowncannabis.com, indicates that the applicant is involved in the cannabis industry due to the inclusion of the term “cannabis” in the webpage URL itself and applicant’s use of “cannabis” in variations of the applied-for mark shown on the website. The fact that applicant also sells a variety of products specifically labeled as including CBD (cannabidiol) indicates that applicant is in the business of items including or used for ingesting cannabis or CBD.
The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and any material or preparation containing marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]” as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions)).
In this case, the attached excerpts from applicant’s website plainly indicate that applicant’s identified goods include items that are prohibited by the CSA, namely, bakery goods, cakes, confectionery and other food items including cannabis, CBD or other prohibited substances.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976). Applicant’s goods consist of, or include, items that are or were prohibited by the CSA, namely, bakery goods, cakes, confectionery and other food items including cannabis, CBD or other prohibited substances. Thus, the claimed use of the applied-for mark in connection with such goods was not in lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.
On December 20, 2018, the CSA was amended to remove hemp from the definition of marijuana and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c )(17). The goods identified did not potentially comply with applicable federal laws until that date. Because the identified goods consist of or include items that are or were prohibited under the Controlled Substances Act, the applicant did not have a valid basis for filing the application. Nevertheless, to the extent the applicant’s goods are derived from cannabis plants that meet the current statutory definition of hemp, the goods may presently be lawful.
Due to the changed circumstances and the potential lawfulness of certain products and activities that meet the definition of the Agricultural Marketing Act of 1946, as amended (AMA), applicant may request to amend the filing date of the current application to be December 20, 2018. See Examination Guide 1-19 Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill http://www.gov.uspto.report/sites/default/files/documents/Exam%20Guide%201-19.pdf. Applicant must specifically state for the record that such a change to the filing date is being authorized and must establish a valid filing basis under 37 C.F.R. §2.34 by satisfying the relevant requirements. See 37 C.F.R. §§2.34 et seq., TMEP §§806 et seq. In the event of such an amendment, the undersigned examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03 For instructions on how to satisfy basis requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage. In addition, applicant may be required to amend their identification of goods to be compliant with the amended definition of hemp if applicant wishes to overcome this refusal.
In lieu of amending the filing date, applicant may elect to abandon the current application and file a new application with a new fee that will have an application filing date that is later than the enactment of the December 20, 2018 amendments to the AMA. Alternatively, applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.
Applicant should note, however, that even if applicant amends the application as outlined above to obviate this CSA refusal, such amendment will not be sufficient to overcome the additional FDCA refusal set forth immediately below.
Applicant should note the following additional ground for refusal.
PARTIAL SECTIONS 1 AND 45 REFUSAL – NOT IN LAWFUL USE IN COMMERCE – FDCA
THIS PARTIAL REFUSAL APPLIES ONLY TO INTERNATIONAL CLASS 30
Registration is also refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907, because the goods are not in compliance with the federal Food, Drug and Cosmetic Act (FDCA). The goods to which the mark is applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing 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’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
This refusal issues when “(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-relevant activities involve a per se violation of a federal law.” In re Brown, 119 USPQ2d at 1351 (citing Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988); Santinine Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981)); TMEP §907.
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).
Cannabidiol (CBD) is an active ingredient in an FDA-approved drug, Epidiolex®, (see http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm611046.htm copy attached) and is the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements. See FDA Regulation of Cannabis and Cannabis-derived Products: Questions and Answers http://www.fda.gov/NewsEvents/PublicHealthFocus/ucm421168.htm copy attached.
Applicant’s goods are broad enough to encompass products that consist of, or include, items that are or were prohibited by the FDCA, namely, foods containing CBD. The attached excerpts from applicant’s website indicates that applicant’s identified goods include items that are prohibited by the FDCA, namely, foods containing CBD and that such goods are currently being marketed, promoted or offered for sale to consumers.
It is unlawful to introduce food containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. See Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds.
http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm copy attached.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) Accordingly, because applicant’s goods consist of or include items that violate federal law, the applied-for mark as used in connection with such goods is not in lawful use in commerce.
PARTIAL REFUSAL RESPONSE OPTIONS
The stated refusal refers to International Class 30 only and does not bar registration in the other class. Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the class to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
Applicant should note the following additional ground for refusal.
MARK DIFFERS ON DRAWING AND SPECIMEN
THIS PARTIAL REFUSAL APPLIES TO INTERNATIONAL CLASS 30 ONLY
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 30, which is required in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the drawing displays the mark as having an overall rectangular background shape; however, the mark on the specimen in International Class 30 does not include this shape. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a new drawing of the mark that shows the mark on the specimen and, if appropriate, an amendment of the description and/or color claim that agrees with the new drawing. See 37 C.F.R. §2.72(a)-(b). The following amended description is suggested, if accurate: “The mark consists of the term ‘CROWN’ beneath a design of three interconnecting leaves, both inside a three-pointed crown design, which is within a circle.” Applicant may amend the mark in the drawing to match the mark on the specimen but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. NOTE: Applicant may resolve this issue by simply inverting the colors on the current drawing of record to show the mark wording and design elements in black on a white background, which will have the effect of removing the overall rectangular background shape of the drawing.
(2) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application, and (b) was in actual use in commerce at least as early as the filing date of the application.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
PARTIAL REFUSAL RESPONSE OPTIONS
The stated refusal refers to International Class 30 only and does not bar registration in the other class. Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal or by following the response options listed immediately above. In addition, applicant may respond by doing one of the following:
(1) Deleting the class to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
MARK DESCRIPTION AMENDMENT REQUIRED
Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.
The following description is suggested, if accurate:
The mark consists of the term ‘CROWN’ beneath a design of three interconnecting leaves, both inside a three-pointed crown design, which is within a circle; all of the foregoing appearing on a rectangular background.
NOTE: If applicant amends the current drawing of record by inverting the colors to show the mark wording and design elements in black on a white background, applicant should adopt the suggestion above except the wording “all of the foregoing appearing on a rectangular background.”
REQUEST FOR INFORMATION
To permit proper examination of the application, applicant must submit additional information about applicant’s goods. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
Additionally, applicant must submit a written statement indicating whether all the goods identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971 (see questions below). 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. §8 02(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.
Applicant must respond to the following inquiries:
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 $125 per 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 or e-mail without incurring this additional fee.
/J. Evan Mucha/
J. Evan Mucha
Examining Attorney
Law Office 106
(571) 270-1989
evan.mucha@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.
