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:  April 03, 2020

 

This Office action is supplemental to and supersedes the previous Office action issued on July 24, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted the requirement that the Date of Use in Commerce must be amended to December 20, 2020 relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the goods must be lawful at the date of use in commerce.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue. 

 

Applicant must address all issues raised in this Office action, in addition to the issues raised in the Office action dated July 24, 2019.  The issues raised in the previous July 24, 2019 Office action are as follows and are maintained: 

 

SUMMARY OF ISSUES

 

1)     CBD Related Goods Refusal – Not in Lawful Use in Commerce as of Filing Date.

2)     FDCA Related Goods Refusal – Not in Lawful Use in Commerce as of Filing Date.

3)     Pharmaceuticals/Topicals Refusal.

4)     Additional Information Required.

5)     Identification of Goods Requirement.

 

See Prior Office Action Dated July 24, 2019. 

 

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

 

            • NEW ISSUE:  Date of Use Must Be Amended.

 

Applicant must respond to all issues raised in this Office action and the previous July 25, 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).

 

DATES OF USE IN COMMERCE MUST BE AMENDED

 

Because the identified goods consist of or include items or activities that were prohibited under the Controlled Substances Act at the time of the use dates in commerce, the applicant did not have a valid use date in commerce.  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 dates of use in commerce of the current application to be December 20, 2018.

 

An application based on use in commerce under Trademark Act Section 1(a) must include the date of first use of the mark in commerce.  15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii)-(iii); TMEP §§903, 903.03. 

 

Therefore, applicant must amend the dates of first use in commerce to December 20, 2018, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.34(a)(1)(ii)-(iii), 2.193(e)(1); TMEP §903. 

 

For an overview of the requirements for providing verified dates of first use and instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademark/laws-regulations/dates-use.

 

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 Use date in Commerce 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 Use in Commerce 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. 

 

USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form.  Current TEAS RF applicants will generally need to continue to meet similar application requirements.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7).  And current TEAS Regular applicants must now provide an email address when submitting documents through TEAS, will generally be sent correspondence electronically from the USPTO, and will pay a filing fee of $275 per class (instead of $400) when adding a class.  For more information about these changes, see the Mandatory Electronic Filing webpage. 

 

 

.

 

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

 

 

 

 

 

 

 

/Howard Smiga/

Examining Attorney

Law Office 102

571-272-9220

Howard.Smiga@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 April 03, 2020 for

U.S. Trademark Application Serial No. 88127969

 

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. 

 

 

/Howard Smiga/

Examining Attorney

Law Office 102

571-272-9220

Howard.Smiga@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 April 03, 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.”