Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

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:  January 18, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 12/25/2019 and is supplemental to and supersedes the previous Office action issued on 6/24/2019 in connection with this application.

 

In the previous Office action dated 6/24/2019, the trademark examining attorney issued the following refusals of registration: Sections 1 and 45 Refusal – No Bona Fide Intent to Use in Lawful Commerce – CSA; Sections 1 and 45 Refusal – No Bona Fide Intent to Use in Lawful Commerce – FDCA.  In addition, applicant was required to respond to a request for information.

 

Based on applicant’s response, the trademark examining attorney notes that the requirement to respond to the request for information has been satisfied.  See TMEP §713.02. 

 

However, for the reasons set forth below, the Sections 1 and 45 refusals for a lack of bona fide intent to use the mark in lawful commerce pursuant to the CSA and FDCA are maintained and continued.  See id. 

 

Lastly, upon additional consideration of the application, the trademark examining attorney now issues the following new requirement:  Amend Identification of Goods to Avoid Deceptiveness Refusal.  See TMEP §§706, 711.02.  The examining attorney apologizes for any inconvenience caused by the delay in issuing this requirement.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• Sections 1 and 45 Refusal – No Bona Fide Intent to Use in Lawful Commerce – CSA
• Sections 1 and 45 Refusal – No Bona Fide Intent to Use in Lawful Commerce – FDCA
• Amend Identification of Goods to Avoid Deceptiveness Refusal – NEW ISSUE

 

Applicant must respond to all issues raised in this Office action and the previous 6/24/2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

SECTIONS 1 AND 45 REFUSAL – NO BONA FIDE INTENT TO USE IN LAWFUL COMMERCE – CSA

 

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark 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. 

 

Here, the items with which the proposed mark will be used were unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971, as of 7/20/2018, the date on which the application was filed.   Applicant’s goods are identified broadly enough to encompass products that consist of, or include, items that are or were prohibited by the CSA, namely, dietary, herbal, nutritional and food supplements and vitamins containing CBD derived from hemp. 

 

As evidenced by the previously attached evidence consisting of a news article regarding applicant’s intent to launch a line of CBD products (and the fact that the mark itself contains the term “CBD”), goods within the scope of the identification bearing the mark contain cannabidiol.   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 previous 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). 

 

It is noted that applicant has stated in its Office action response that the goods do indeed contain CBD, but that the CBD in the goods is derived solely from orange peels rather than from cannabis or hemp.  However, in the absence of limitation in the identification of goods itself, the goods are still broad enough to include those including CBD derived from cannabis or hemp and are therefore unlawful pursuant to the CSA. 

 

Applicant’s request to amend the filing date of the application to 12/20/2018 has also been recognized and made part of the record, but the amendment has not been processed due to the fact such amendment would only be necessary to avoid a CSA-based unlawful use refusal for products containing CBD derived from cannabis meeting the definition of “hemp” provided in the 2018 Farm Bill.  Given applicant’s statement that the CBD in its products is derived solely from orange peel and not from hemp, such amendment of the filing date is not necessary.  However, to overcome the present CSA-based refusal, applicant must include in the identification a limitation indicating that the goods “contain CBD derived solely from orange peel and containing no more than 0.3% THC on a dry weight basis.”  See the proposed amendments set forth below.

 

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)  Because use of the applied-for mark in connection with such goods 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 in connection with such goods.  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.   

 

In the absence of limitation to indicate that the CBD in the goods is derived from sources other than cannabis or hemp, the Sections 1 and 45 unlawful use refusal is maintained and continued.

 

SECTIONS 1 AND 45 REFUSAL – NO BONA FIDE INTENT TO USE IN LAWFUL COMMERCE – FDCA

 

Registration is also refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907 because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with the identified goods because the goods are or will not be in compliance with the federal Food, Drug and Cosmetic Act (FDCA). 

 

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 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.

 

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 to previous Office action) 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 to previous Office action.

 

Applicant’s goods are broad enough to encompass products that consist of, or include, items that are or were prohibited by the FDCA, namely, dietary, herbal, nutritional and food supplements and vitamins containing CBD.  The attached evidence consisting of a news article regarding applicant’s intent to launch a line of CBD products and the fact that the mark itself contains the term “CBD” plainly indicate that applicant’s identified goods supplements containing CBD.

 

The applicant’s attorney has indicated in the response that the goods do in fact contain CBD, but has stated that the CBD is derived only from orange peel and not from cannabis or hemp.  However, the source of the CBD is irrelevant to the determination of legality under the FDCA.  Pursuant to the FDCA, 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 to previous Office action.

 

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)  Because introduction of such items into commerce 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 in connection with such goods.  See e.g. 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.

 

Applicant has also argued against the present refusal by stating that the applicant’s goods are of the same type as those which have been in lawful use in commerce for some time.  Applicant goes on to claim that “CBD was an ingredient documented to be in the food supply prior to October 15, 1994” and that “[t]here is clear proof that hemp which contains CBD was sold in food prior to that date.”  Applicant has neglected to provide any evidence to support its assertions. 

 

As indicated by the previously reference evidence from  http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm, “it’s unlawful under the [FDCA] to introduce food containing added CBD or THC into interstate commerce, or to market CBD or THC products as, or in, dietary supplements, regardless of whether the substances are hemp-derived. This is because both CBD and THC are active ingredients in FDA-approved drugs and were the subject of substantial clinical investigations before they were marketed as foods or dietary supplements.”

 

Accordingly, Sections 1 and 45 unlawful use refusal is maintained and continued.

 

AMEND IDENTIFICATION OF GOODS TO AVOID DECEPTIVENESS REFUSAL

 

Applicant’s mark includes the wording “CBD”, which indicates that applicant’s goods contain cannabidiol (CBD).  This feature or characteristic is considered desirable for applicant’s goods because CBD is commonly promoted as being beneficial for one’s health or wellness, particularly when consumed as a dietary or nutritional supplement.  However, if some or all of the goods do not (or will not) in fact contain CBD, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods contain CBD.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods with the named ingredient will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Please see the suggested amendments below.  The proposed revisions also incorporate those amendments necessary to obviate the CSA-based Sections 1 and 45 refusal issued in the original 6/24/2019 Office action.

 

Applicant should note that any wording in bold, in italics, and/or in ALL CAPS below offers guidance or shows the changes being proposed for the identification of goods.  If there is wording in the applicant’s identification of goods which should be removed, it will be shown with a line through it such as this: strikethrough.  When making amendments, applicant should enter them in standard font, not in bold, in italics, and/or in ALL CAPS.

 

Applicant may adopt the following identification and classification of goods, if accurate:

 

International Class XX:  Dietary supplements, herbal supplements, nutritional supplements, food supplements, and vitamins, all of the foregoing containing CBD derived solely from orange peel and containing no more than 0.3% THC on a dry weight basis

 

See TMEP §1402.01.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

 

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.

 

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.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/J. Evan Mucha/

J. Evan Mucha

Examining Attorney

Law Office 106

571-270-1989

evan.mucha@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 18, 2020 for

U.S. Trademark Application Serial No. 88045814

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/J. Evan Mucha/

J. Evan Mucha

Examining Attorney

Law Office 106

571-270-1989

evan.mucha@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 18, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”