UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 6/16/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SUMMARY OF ISSUES:

 

       I.          Trademark Act Section 2(d) Refusal

     II.          Trademark Act Sections 1 And 45 Refusal No Bona Fide Intent To Lawfully Use In Commerce As Of Filing Date – CSA Refusal

   III.          Identification Amendment Required

  IV.          Insufficient Fee/Multiple-Class Application Requirements – Advisory

    V.          Entity Clarification Required

  VI.          Information About Goods and Services Required

VII.          Intent to Perfect – Advisory

 

 

I.         SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Please note this refusal applies only to applicant’s Class 025 goods.

 

Registration of the applied-for mark, RU, in standard characters for “Athletic clothing; casual clothing; children's clothing; clothing belts and buckles; headwear, namely, hats, baseball caps and toques” is refused because of a likelihood of confusion with the following marks:

 

·       U.S. Registration No. 5656035, RU, stylized, for “Clothing, namely, hats, sweatshirts, aprons, bandanas, leather pants; clothing, namely, T-shirts, long sleeve shirts, polo shirts, night shirts, boxer shorts, jackets, sweatpants, sun visors, and baby shoes.”

 

·       U.S. Registration No. 5465692, RU, stylized, for “Bras; Hats; Jackets; Pants; Scarfs; Shirts; Shorts; Socks; Sweaters; Sweatshirts; Underwear; Baseball shoes; Bowling shoes; Boxing shoes; Cycling shoes; Leather shoes; Leisure shoes; Rugby shoes; Skiing shoes; Sleeveless jerseys; Soccer shoes; Tennis shoes; Training shoes; Volleyball shoes; Women's shoes.”

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

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.  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.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant 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 registrant.  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).

 

A.     Comparison of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is RU and registrants’ marks are RU.  The wording in these marks is identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  Id.

 

Although registrant’s marks are stylized, this stylization is insufficient to obviate any confusion because applicant has applied for a standard character mark.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Therefore, the marks are confusingly similar. 

 

 

B.     Comparison of the Goods

 

Applicant’s goods are: “Athletic clothing; casual clothing; children's clothing; clothing belts and buckles; headwear, namely, hats, baseball caps and toques.”

 

Registrant’s goods for U.S. Registration No. 5656035 are: “Clothing, namely, hats, sweatshirts, aprons, bandanas, leather pants; clothing, namely, T-shirts, long sleeve shirts, polo shirts, night shirts, boxer shorts, jackets, sweatpants, sun visors, and baby shoes.”

 

Registrant’s goods for U.S. Registration No. 5465692 are: “Bras; Hats; Jackets; Pants; Scarfs; Shirts; Shorts; Socks; Sweaters; Sweatshirts; Underwear; Baseball shoes; Bowling shoes; Boxing shoes; Cycling shoes; Leather shoes; Leisure shoes; Rugby shoes; Skiing shoes; Sleeveless jerseys; Soccer shoes; Tennis shoes; Training shoes; Volleyball shoes; Women's shoes.”

 

Determining likelihood of confusion is based on the description of the goods 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)).  

 

In this case, the application uses broad wording to describe its goods, namely, “athletic clothing, “causal clothing,” and “children’s clothing,” which presumably encompasses all goods of the type described, including registrant’s more narrow items of clothing.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Further, decisions regarding likelihood of confusion in the clothing field have found many different types of apparel to be related goods.  Cambridge Rubber Co. v. Cluett, Peabody & Co., 286 F.2d 623, 624, 128 USPQ 549, 550 (C.C.P.A. 1961) (women’s boots related to men’s and boys’ underwear); Jockey Int’l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1236 (TTAB 1992) (underwear related to neckties); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s pants, blouses, shorts and jackets related to women’s shoes); In re Pix of Am., Inc., 225 USPQ 691, 691-92 (TTAB 1985) (women’s shoes related to outer shirts); In re Mercedes Slacks, Ltd., 213 USPQ 397, 398-99 (TTAB 1982) (hosiery related to trousers); In re Cook United, Inc., 185 USPQ 444, 445 (TTAB 1975) (men’s suits, coats, and trousers related to ladies’ pantyhose and hosiery); Esquire Sportswear Mfg. Co. v. Genesco Inc., 141 USPQ 400, 404 (TTAB 1964) (brassieres and girdles related to slacks for men and young men).

 

In sum, consumers are likely to encounter the parties’ goods in the same commercial contexts.  Given the similarity of the marks overall and the related nature of the goods, consumers encountering the marks are likely to mistake the underlying sources of the goods.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Applicant should note the additional grounds for refusal.

 

 

II.        TRADEMARK ACT SECTIONS 1 AND 45 REFUSAL NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE AS OF FILING DATE – CSA REFUSAL

 

Please note that this refusal applies only to applicant’s goods in Classes 007, 008, 016, and 034.

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 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. 

Here, the items or activities 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:

International Class 007: Rosin presses; Extraction presses for extracting herbal extracts from herbal substances; Heat plates, namely, heat plates for use with rosin presses and/or extraction presses

            International Class 008: hand held pre-press tools for rosin

            International Class 016: Rosin filter bags; Bags for holding herbal substances

International Class 034: Pipes for smoking herbal substances and herbal extracts, namely, glass pipes, metals pipes, wooden pipes, ceramic pipes, and water pipes; Grinders used to shred herbal substances; Vaporizers for vaporization of herbal substances and herbal extracts and for extracting the active ingredients from herbal substances and herbal extracts; Vaporizer and pipe accessories, namely, vaporizer glass wands, vaporizer tubings, vaporizer screens, vaporizer domes, vaporizer bowls, vaporizer lighters, vaporizer storage cases, vaporizer carrying cases, pipe cleaners, pipe lighters, pipe racks, pipe storage cases, pipe carrying cases, pipe humidors

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). 

The following evidence, namely, applicant’s website establishes that the goods on which the mark will be used are primarily intend for use with marijuana/controlled substances.  Specifically, applicant’s website notes that “rosin,” the central theme of applicant’s goods and services, is “a solvent cannabis extract.”  Applicant website also notes that its goods and services are intended for people working with cannabis (“Whether you’re a dispensary, a medical marijuana patient, an experienced rosin connoisseur, or just getting your feet wet with rosin extraction, RosinUnity is the best place to start!”) and notes that the applicant is “a team of seasoned cannabis enthusiasts.”  Accordingly, based on applicant’s website, applicant is clearly in the cannabis industry and its goods and services are intended to be used with cannabis.

This evidence supports the conclusion that applicant is producing and selling equipment and product for manufacturing, processing, inhaling, and/or introducing marijuana to the body. 

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 use of the applied-for mark in connection with such goods and/or services was not lawful as of the filing date, applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce.  See In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.   

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below

 

 

III.      IDENTIFICATION AMENDMENT REQUIRED

 

International Class 007:

 

The wording “rosin presses” and “extraction presses for extracting herbal extracts from herbal substances” and “heat plates” in the identification of goods is indefinite and must be amended to generally clarify the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Specifically, applicant must clarify that the presses are industrial machines and that heat plates are machine parts in order to ensure proper classification.

 

International Class 008:

 

The wording “hand held pre-press tools for rosin” is indefinite and must be further amended to explicitly list the types of tools by their common commercial names.

 

International Class 009:

 

The wording “research data related to rosin” is indefinite and applicant must follow this with “namely” to further clarify what data the applicant is referring to. 

 

International Class 016:

 

The wording “rosin filter bags” and “bag for holding herbal substances” is indefinite and must be further clarified to better understand the nature of the goods.  Specifically, applicant must further clarify the nature and purpose of these bags.

 

International Class 025:

 

The wording “clothing” is indefinite.  Applicant must further clarify the specific types of clothing.  In addition, the wording “buckles” is a Class 026 good and should be deleted or applicant should add a new class.

 

International Class 034:

 

First, the wording “grinders” is indefinite and must be amended to clarify that it is for tobacco.  In addition, “vaporizers” is indefinite and must be amended to clarify that it is an oral vaporizer in nature and to note that these are for smokers.  Finally, the wording “pipe” is indefinite and must be amended to clarify that it is a smoking pipe.

 

International Class 041:

 

The wording “providing a website featuring educational information in the field of…” is generally classified by the subject matter of the information.  Here, the wording “rosin, rosin quality, rosin concentration, and educational information on procedures for extracting rosin from cannabis plants” is too broad and spans several classes.  As such, applicant must generally clarify the nature of the subject matter and classify the services accordingly.

 

International Class 044:

 

These services are incorrectly classified in Class 044 and should be amended to re-classify them in Class 042 since they are a computer technology service.  In addition, the wording “research data related to rosin” is indefinite and applicant must follow this with “namely” to further clarify what data the applicant is referring to. 

 

If accurate, applicant may adopt the following identification in their appropriate international classes:

 

International Class 007: rosin presses in the nature of {further clarify, e.g., industrial machine presses used for extracting rosin, extracting machines for chemical processing}; industrial machine extraction presses for extracting herbal extracts from herbal substances; Heat plates being machine parts, namely, heat plates for use with rosin press and/or and extraction press machines

 

International Class 008 [if adopted]: hand held pre-press tools for rosin, namely, {specify using common commercial name of tools}

 

International Class 009 [if adopted]: downloadable mobile applications for interacting with web-based technology that allows users to upload, store, manage, and share research data related to rosin, namely, rosin quality, rosin concentration, and data related to procedures for extracting rosin from cannabis plants

 

International Class 016 [if adopted]: Rosin filter bags in the nature of {further specify, e.g., plastic bags containing filter paper for filtering [applicant must specify what is being filtered]}; Bags for holding herbal substances {needs further clarification, e.g., plastic bags for packing herbal substances};

 

International Class 025 [if adopted]: Athletic clothing, namely, {specify, e.g., shirts, pants, etc.}; casual clothing, namely, {specify, e.g., shirts, pants, etc.}; children's clothing, namely, {specify, e.g., shirts, pants, etc.}; clothing belts and buckles {delete – clothing buckle is a Class 026 good}; headwear, namely, hats, baseball caps and toques;

 

International Class 026 [if adopted]: Buckles for clothing

 

International Class 034 [if adopted]: Pipes for smoking herbal substances and herbal extracts, namely, glass pipes, metals pipes, wooden pipes, ceramic pipes, and water pipes; tobacco grinders used to shred herbal substances; oral vaporizers for smokers for vaporization of herbal substances and herbal extracts and for extracting the active ingredients from herbal substances and herbal extracts; Oral vaporizers for smokers and smoking pipe accessories, namely vaporizer glass wands, vaporizer tubings, vaporizer screens, vaporizer domes, vaporizer bowls, vaporizer lighters, vaporizer storage cases, vaporizer carrying cases, smoking pipe cleaners, pipe lighters, pipe racks, pipe storage cases, pipe carrying cases, pipe humidors

 

International Class 041 040 [if adopted]: providing a website featuring educational information in the field of {need further generally clarification, and classification will depend on clarification, e.g., processing of medicinal plants – Class 040}, including rosin, rosin quality, rosin concentration, and educational information on procedures for extracting rosin from cannabis plants;

 

International Class 044 042 [if adopted]: providing an interactive website featuring technology that allows users to upload, store, manage, and share research data related to rosin, namely, rosin quality, rosin concentration, and data related to procedures for extracting rosin from cannabis plants; providing a website for the electronic storage of research data related to rosin, namely, rosin quality, rosin concentration, and data related to procedures for extracting rosin from cannabis plants;

 

 

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

IV.       INSUFFICIENT FEE/MULTIPLE CLASS APPLICATION REQUIREMENTS – ADVISORY

 

The application identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted a fee sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

Therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

V.        ENTITY CLARIFICATION REQUIRED

 

Applicant’s business name includes the foreign business designation “Ltd”; however, applicant set forth “Corporation” as the legal entity in the application.  This business designation is generally considered the equivalent of a “Limited Company” or “Limited Liability Company.”  See TMEP app. D.  Therefore, applicant must clarify the entity type in the application.  See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i).  Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate.  See TMEP §803.03(i). 

 

Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “Corporation” in this instance than to the legal entities listed in TMEP Appendix D.  See id.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

 

VI.       INFORMATION ABOUT GOODS AND SERVICES REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods and services because the nature of such services is not clear from the present record.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  The requested information should include fact sheets, brochures, and/or advertisements and promotional materials.  If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ.  If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

 

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 regarding the services will not satisfy this requirement for information.

 

In addition, applicant must submit a written statement indicating whether the goods and services 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 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)). 

 

Finally, applicant must provide written responses to the following questions:

 

1. Do or will applicant’s identified goods include use with or are intended for use with any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)?  If so, please specify.
2. Do applicant’s websites allow or otherwise enable consumers to purchase marijuana, cannabis, hemp, marijuana-based, cannabis-based or hemp-based preparations, or marijuana, cannabis or hemp-based extracts or derivatives which are derived from any part of the plant Cannabis sativa L?
3. Do applicant’s websites include or involve any feature or function related to the sale, distribution, delivery, or dispensing of marijuana, marijuana-based preparations, marijuana extracts, or the like?
4. Do applicant’s mobile applications allow or otherwise enable consumers to purchase marijuana, cannabis, hemp, marijuana-based, cannabis-based or hemp-based preparations, or marijuana, cannabis or hemp-based extracts or derivatives which are derived from any part of the plant Cannabis sativa L?
5. Do applicant’s mobile applications include or involve any feature or function related to the sale, distribution, delivery, or dispensing of marijuana, marijuana-based preparations, marijuana extracts, or the like?
6. Upon information and belief, do applicant’s services comply with the Controlled Substances Act?

 

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 and 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).

 

 

VII.     INTENT TO PERFECT – ADVISORY

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

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.  

 

 

 

/Elle Marino/

Trademark Examining Attorney

Law Office 121

Phone: (571) 270-3699

E-mail: elle.marino@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/16/2019 FOR U.S. APPLICATION SERIAL NO. 88005002

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/16/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.