To: | aronow capital, llc (genuve@aol.com) |
Subject: | U.S. Trademark Application Serial No. 88014871 - SQUAD - N/A |
Sent: | September 30, 2019 07:25:40 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88014871
Mark: SQUAD
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Correspondence Address:
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Applicant: aronow capital, llc
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 30, 2019
This Office action is in response to applicant’s communication filed on August 13, 2019. Applicant’s substitute specimen has been accepted into the record. Applicant’s amendment to the identification of goods is not acceptable for reasons that will be discussed in more detail below. Since applicant’s amendment to the identification of goods raises a new issue, a new non-final Office Action is being issued. Registration was also refused under Sections 1 and 45 of the Trademark Act, 15 USC Sections 1051 and 1127, based on the mark not being in use in connection with lawful goods. Those refusals are CONTINUED AND MAINTAINED and will be discussed further below.
NEW ISSUE – IDENTIFICATION AMENDMENT EXPANDS SCOPE
In this case, the application identified the goods as follows: “energy drinks and fruit juices with hemp based CBD.”
However, the proposed amendment identifies the following goods: “energy drinks and fruit juices.”
This proposed amendment is beyond the scope of the current identification because as originally identified, the goods were limited only to energy drinks and fruit juices comprised of hemp based CBD. Applicant’s amendment broadens the scope to include not only the goods as originally identified but also energy and fruit juices that (a) have no hemp based ingredients at all and (2) energy and fruit drinks that have hemp based ingredients but no CBD. These latter types of goods were not part of the original identification and cannot be added herein by broadening the identification to delete the narrow and specific limitation originally stated in the application which is for energy and fruit juices that are comprised of CBD from hemp.
Applicant is advised that the proposed amendment will not be entered into the record and the original identification will remain operative and will be re-entered into the Office’s search database.
CBD-SPECIFIED GOODS - BASED ON IDENTIFICATION - NOT IN
LAWFUL USE IN COMMERCE AS OF FILING DATE
Registration is refused because the applied-for mark was not in lawful use in commerce as of the filing date of the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. However, recent changes in federal law concerning hemp based goods may affect the registrability of applicant’s goods under the CSA. Therefore, the previously issued refusal to register under Sections 1 and 45 is CONTINUED AND MAINTAINED subject to applicant’s response to this office action.
To qualify for federal trademark/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 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 are applied were unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971, as of August 13, 2018, the date on which the application was filed. Applicant’s goods consist of, or include, items or activities that are or were prohibited by the CSA, namely, “energy drinks and fruit juices with hemp based CBD.”
Cannabidiol (CBD) is a chemical constituent of the cannabis plant that is encompassed within the CSA’s definition of marijuana. See Clarification of the New Drug Code (7350) for Marijuana Extract, http://www.deadiversion.usdoj.gov/schedules/marijuana/m_extract_7350.html, copy attached to the November 20, 2018 Office Action; see also, 21 C.F.R. §1308.11(d)(58). Applicant’s identified goods are broad enough to include products produced from “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). 21 U.S.C. §802(16).
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.
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 or activities 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 contain CBD derived from cannabis plants that meet the current statutory definition of hemp, the goods may presently be lawful under the CSA.
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 lieu of amending the filing date, 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 the following additional ground for refusal.
REFUSAL – NOT IN LAWFUL USE IN COMMERCE – CBD FOOD GOODS – FDCA – SECTION 1(A)
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). Because applicant’s original identification remains operable, this refusal is CONTINUED AND MAINTAINED.
The items or activities listed in the application for which use of the mark is alleged involve a per se violation of federal law. See In re Brown, 119 USPQ2d at 1352. 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.
In the present case, the application identifies applicant’s goods as follows: energy drinks and fruit juices with hemp based CBD in Class 32.
Applicant’s website shows, pages of which are attached hereto, shows that the goods are comprised of CBD.
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 or activities that are a per se violation of federal law, the applied-for mark as used in connection with such goods is not in lawful use in commerce.
IDENTIFICATION OF GOODS – AMENDMENT REQUIRED IF FILING DATE IS CHANGED
If applicant elects to amend the filing date of the application to December 20, 2018 as discussed above, applicant must also amend its identification of goods to limit the hemp to that which has a THC content of no more than 0.3 percent on a dry weight basis. The following language is suggested (proposed changes in boldface.)
CLASS 32 – Energy drinks and fruit juices with hemp-based CBD none of which are comprised of hemp with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis.
Applicant is advised that while amending the filing date to December 20, 2018 and amending the identification of goods as suggested above will overcome the refusal to register based on the goods not being in compliance with the CSA, it will not overcome the separate refusal based on the goods not being in compliance with the FDCA.
DATE OF FIRST USE IN COMMERCE – AMENDMENT REQUIRED IF FILING DATE CHANGED
If applicant elects to amend its application filing date to December 20, 2018, applicant must also amend its date of first use in commerce to a date that is not earlier than December 20, 2018, which is the date when hemp with no more than 0.3 percent THC was made lawful under the 2018 Farm Bill.
For an overview of the response options referenced above and instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Dates of Use webpage.
How to respond. Click to file a response to this nonfinal Office action
/Jeffrey J Look/
Jeffrey J Look
Trademark Examining Attorney
Law Office 108
Phone: 571-272-1652
Email: jeffrey.look@uspto.gov
RESPONSE GUIDANCE