Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88093671 FEATHER(Standard Characters, see http://uspto.report/TM/88093671/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the specific questions posed by the Examiner's July 29, 2019 office action, the Applicant states as follows: 1. Will the Applicant's identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)? Do or will applicant's identified services feature goods including any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)? Yes 2. If the answer to Question 1 is "yes," does the hemp used or to be used in applicant's goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis? No 3. If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response. No documentation is available 4. If the goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives. Not more than 0.3 5. If the "hemp" is grown in the United States of America, was the hemp used in the goods obtained from an authorized grower or supplier of industrial hemp from a hemp growing pilot program set up under the 2014 Farm Bill? Hemp will be from an authorized grower or supplier of industrial hemp from a hemp growing pilot program set up under the 2014 Farm Bill 6. Do or will applicant's identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L? Do or will applicant's identified services feature goods including CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L? No 7. Will applicant's identified services involve the possession, sale, or provision of marijuana, cannabis, hemp, cannabidiol (CBD) 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 other than the mature stalks or seeds from the said plant synthetic marijuana, or any other illegal controlled substances? No 8. Will applicant's identified services involve the possession, sale, or provision of oils, extracts, compounds or derivatives obtained from resins extracted from any part of the Cannabis sativa L plant including the stalks, flowering tops or seeds of said plant? No In view of the foregoing responses to the Examiner's questions, Applicant submits that the applied-for-goods do not constitute drug paraphernalia and respectfully requests that the Examiner withdraw partial refusal on this basis. Applicant has also requested amendment of the application filing date to December 20, 2018 in response to the Examiner's Section 1 and 45 partial refusal - not in lawful use in commerce as of filing date - set forth in July 29, 2019 office action.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 034 for electric vaporizers for the ingestion and inhalation of cannabidiol (CBD); electric vaporizers for the vaporization of cannabidiol (CBD) e-liquid; electric vaporizers, namely, smokeless vaporizer pipes for the ingestion and inhalation of herbal matter derived from legal sources; oral vaporizers for smokers; oral vaporizers for smoking purposes; smokeless electronic cigarettes
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/26/2018 and first used in commerce at least as early as 07/26/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: electric vaporizers for the ingestion and inhalation of cannabidiol (CBD); electric vaporizers for the inhalation of cannabidiol (CBD); electric vaporizers for the vaporization of cannabidiol (CBD) e-liquid; electric vaporizers, namely, smokeless vaporizer pipes for the ingestion and inhalation of herbal matter derived from legal sources; oral vaporizers for smokers; oral vaporizers for smoking purposes; smokeless electronic cigarettes; all of the foregoing intended for use only with cannabidiol derived from industrial hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basisClass 034 for electric vaporizers for the inhalation of cannabidiol (CBD); electric vaporizers for the vaporization of cannabidiol (CBD) e-liquid; electric vaporizers, namely, smokeless vaporizer pipes for the ingestion and inhalation of herbal matter derived from legal sources; oral vaporizers for smokers; oral vaporizers for smoking purposes; smokeless electronic cigarettes; all of the foregoing intended for use only with cannabidiol derived from industrial hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/26/2018 and first used in commerce at least as early as 12/20/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 034 .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for providing a website featuring information in the fields of cannabis, medical marijuana, tetrahydrocannabinol (THC), cannabis strains, tetrahydrocannabinol (THC) extraction process, effects of cannabis, cannabidiol (CBD); educational services in the fields of cannabis and medical marijuana
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2018 and first used in commerce at least as early as 08/01/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: providing a website featuring information in the fields of cannabis, medical marijuana, tetrahydrocannabinol (THC), cannabis strains, tetrahydrocannabinol (THC) extraction process, effects of cannabis, cannabidiol (CBD); providing a website featuring general information about cannabis, medical marijuana, tetrahydrocannabinol (THC), cannabis strains, tetrahydrocannabinol (THC) extraction process, effects of cannabis, cannabidiol (CBD); educational services in the fields of cannabis and medical marijuanaClass 041 for providing a website featuring general information about cannabis, medical marijuana, tetrahydrocannabinol (THC), cannabis strains, tetrahydrocannabinol (THC) extraction process, effects of cannabis, cannabidiol (CBD)
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2018 and first used in commerce at least as early as 08/01/2018 , and is now in use in such commerce.
The applicant's current attorney information: Benjamin Lieb. Benjamin Lieb of TALUS LAW GROUP LLC, is located at

      2816 SOUTH ADAMS STREET
      DENVER, Colorado 80210
      US
The docket/reference number is 1036-007.

The phone number is 303-246-4767.

The email address is ben@taluslaw.com

The applicants proposed attorney information: Benjamin Lieb. Benjamin Lieb of TALUS LAW GROUP LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2816 SOUTH ADAMS STREET
      DENVER, Colorado 80210
      United States
The docket/reference number is 1036-007.

The phone number is 303-246-4767.

The email address is ben@taluslaw.com

Benjamin Lieb submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: BENJAMIN LIEB. BENJAMIN LIEB of TALUS LAW GROUP LLC, is located at

      2816 SOUTH ADAMS STREET
      DENVER, Colorado 80210
      US
The docket/reference number is 1036-007.

The phone number is 303-246-4767.

The email address is ben@taluslaw.com

The applicants proposed correspondence information: Benjamin Lieb. Benjamin Lieb of TALUS LAW GROUP LLC, is located at

      2816 SOUTH ADAMS STREET
      DENVER, Colorado 80210
      United States
The docket/reference number is 1036-007.

The phone number is 303-246-4767.

The email address is ben@taluslaw.com

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Benjamin B. Lieb/      Date: 01/27/2020
Signatory's Name: Benjamin B. Lieb
Signatory's Position: Attorney of Record, Colorado bar member
Signatory's Phone Number: 3032464767


Response Signature
Signature: /Benjamin B. Lieb/     Date: 01/27/2020
Signatory's Name: Benjamin B. Lieb
Signatory's Position: Attorney of Record, Colorado bar member

Signatory's Phone Number: 3032464767

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    BENJAMIN LIEB
   TALUS LAW GROUP LLC
   
   2816 SOUTH ADAMS STREET
   DENVER, Colorado 80210
Mailing Address:    Benjamin Lieb
   TALUS LAW GROUP LLC
   2816 SOUTH ADAMS STREET
   DENVER, Colorado 80210
        
Serial Number: 88093671
Internet Transmission Date: Mon Jan 27 14:35:55 EST 2020
TEAS Stamp: USPTO/ROA-XXX.X.XXX.XXX-2020012714355575
1509-88093671-7002c53765ec5cf1cdf7e383c4
778571ed2ea53ca240f54bcdc2fc9a6a29475179
-N/A-N/A-20200127141528760345