To: | WEED, INC. (ipdocket@swlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88061914 - ACAPULCO GOLD - 72983.01000 |
Sent: | December 04, 2019 06:48:51 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88061914
Mark: ACAPULCO GOLD
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Correspondence Address:
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Applicant: WEED, INC.
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Reference/Docket No. 72983.01000
Correspondence Email Address: |
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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: December 04, 2019
This Office action is in response to applicant’s communication filed on November 4, 2019. Applicant’s amendments to the identification of goods in Classes 3 and 5 have been accepted into the record. Applicant deleted Class 31 in its response and is acceptable. Therefore, the previously issued refusal to register based on the mark being a varietal name for the goods in this class is WITHDRAWN.
Previously registration was refused in Class 3 (now including Class 5 since it was split therefrom) based on applicant not having a bona fide intent to use the mark on lawful goods under Sections 1 and 45 of the Trademark Act, 15 USC Sections 1051, 1127, because such goods would not be in compliance with the federal Controlled Substances Act. That refusal is CONTINUED AND MAINTAINED herein subject to new issues raised below related to the amendments made to the identification of goods. Likewise, the previously issued refusal to register under Section 2(e)(1) of the Trademark Act because the mark is merely descriptive of an ingredient of the goods is CONTINUED AND MAINTAINED subject to applicant’s response to this office action which includes a new information request under 37 CFR Section 2.61(b). Therefore, a new non-final office action is being issued related to a change in Office policy regarding the treatment of hemp based goods which occurred after the issuance of the May 2, 2019 Office Action.
CANNABIS-RELATED GOODS REFUSAL –– BASED ON EVIDENCE – NO BONA FIDE
INTENT TO LAWFULLY USE IN COMMERCE – AS OF FILING DATE
Registration is refused because applicant did not have a bona fide intent to lawfully use the applied-for mark 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. More specifically, applicant’s identified goods indicate that at least some of them are comprised of ingredients from hemp specifically while the remaining goods are broad enough to include goods comprised of essential oils or ingredients from Cannabis sativa in general which includes both hemp and marijuana.
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 evidence of record indicates that the items or activities to which the proposed mark will be applied are or were unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971, as of August 1, 2018, the date on which the application was filed.
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, applicant has listed in the identification “cosmetic preparations for skin care containing hemp.” With regard to the remaining goods in both classes such as the essential oils, non-medicated skin creams with essential oils for use in aromatherapy and the medicated hair, bath, shower, lips, hands, feet, and teeth gels, sprays, balms, and ointments, applicant has not specifically indicated that these goods are comprised of hemp or Cannabis sativa based ingredients. Nevertheless, the identification is broad enough to include such goods with Cannabis based derivatives, oils and extracts.
Evidence was attached to the May 2, 2019 Office Action from LEAFLY.COM and ALLBUD.COM showing that “Acapulco Gold” identifies a specific strain of Cannabis sativa L which is the source plant for both marijuana and hemp. Evidence was further included in that Office Action with articles from HOLLYWOODREPORTER.COM and THECANNABIST.CO showing that goods of the type identified by applicant in this case are often infused with cannabis based oils and extracts for either cosmetic or medicinal purposes. Additional evidence is attached hereto from APOTHECANNA.COM and LEAFLY.COM showing cannabis infused creams, lotions and balms as identified herein.
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 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 will be 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 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.
MARK IS MERELY DESCRIPTIVE – SECTION 2(E)(1) – CONTINUED AND MAINTAINED
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
As the evidence in the May 2, 2019 Office Action shows, “Acapulco Gold,” identifies a particular strain of Cannabis sativa L. Applicant’s current identification is broad enough to include essential oils and topical creams, lotions, balms and gels which are comprised of ingredients from the Acapulco Gold strain of cannabis. The evidence in the record shows that it is not unusual for such ingredients to be used in goods of the type identified by the applicant.
SUPPLEMENTAL REGISTER ADVISORY - ITU
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark 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.
REQUEST FOR INFORMATION – HEMP RELATED GOODS
To permit proper examination of the application, applicant must submit additional information about the goods. 37 C.F.R. §§2.61(b), 2.69; Cf. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing Patent Rule 1.105(a)(1), which is the equivalent of Trademark Rule 2.61(b)); TMEP §§814, 907. The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods. If such materials are not available, applicant must provide a detailed factual description of the goods. Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application.
In addition, applicant must submit a written statement indicating whether the goods/services identified in the application comply with the Food, Drug and Cosmetic Act (FDCA). Under the FDCA, any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug. 21 U.S.C. § 321(g)(1) An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j);
Finally, applicant must provide written responses to the following questions:
Failure to satisfactorily respond to a requirement for information is a ground for refusing registration. See In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (affirming refusal of registration because applicant’s appeal brief failed to address the relevant refusals, including a refusal based on noncompliance with a requirement for information); In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (“Failure to comply with a request for information is grounds for refusal,” where applicant provided equivocal responses to examining attorney’s questions and did not address this issue in its brief). Applicant’s failure to respond to an information requirement may result in an adverse evidentiary inference being drawn regarding applicant’s goods. Id. at 1651; In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); TMEP §814.
Please note that merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to the above requirement and is insufficient to make the relevant information properly of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
IDENTIFICATION OF GOODS – BOTH CLASSES
As discussed above in connection with the unlawful use refusal under Sections 1 and 45 of the Trademark Act, for goods which are comprised of ingredients from hemp, applicant may amend its application filing date to overcome such refusal. However, applicant will also be required to specify that any goods comprised of Cannabis sativa L do not have a delta-9 tetrahydrocannabinol content (THC) content of more than 0.3 percent on a dry weight basis. The following identification is suggested for both classes: (proposed changes in boldface.)
CLASS 3 – Essential oils; gels, salves, sprays, balms and ointments, namely, non-medicated hair, bath, shower, body, lips, hands, feet, and teeth gels, salves, sprays, balms, and ointments; cosmetic preparations for skin care containing hemp; non-medicated skin creams with essential oils for use in aromatherapy; none of the foregoing comprised of any oils, extracts or ingredients from Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis;
CLASS 5 – Gels, salves, sprays, balms and ointments, namely, medicated hair, bath, shower, lips, hands, feet, and teeth gels, sprays, balms, and ointments; none of the foregoing comprised of any oils, extracts or ingredients from Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis.
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. 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.
/Jeffrey J Look/
Jeffrey J Look
Trademark Examining Attorney
Law Office 108
Phone: 571-272-1652
Email: jeffrey.look@uspto.gov
RESPONSE GUIDANCE