United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 08, 2020

 

 

Applicant must address issues shown below.  On January 3, 2020, the examining attorney and Neil Juneja discussed the issues below. 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods are not permitted.  37 C.F.R. §2.71(a).

IDENTIFICATION:  The identification of services in CLASS 35 ONLY is amended to read as follows:  See TMEP §§1402.01, 1402.01(e).

 

CLASS 35 - Retail gift shops; Smoke shops; Tobacco shops; none of the foregoing featuring Cannabis sativa L or devices or equipment designed for use or primarily intended for use in consuming or preparing Cannabis sativa L.

PRIORITY ACTION

 

Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

Previously registration was refused under Sections 1 and 45 of the Trademark Act, 15 USC Section 1051, 1127, based on the mark not being in use in connection with lawful goods.  This refusal was limited solely to two items listed in the identification of goods in Class 34, namely, oral vaporizers for smokers and oral vaporizers for smoking purposes and all of the services in Class 35.  In light of the amendment above, the refusal to register as to the services in Class 35 is WITHDRAWN.  The examining attorney has considered applicant’s arguments with regard to the goods in Class 34, but finds them unpersuasive.  However, an identification amendment is being proposed along with an option to amend the filing date of the application which could obviate the above refusal.  Pending applicant’s response to the issues raised below, the refusal to register under Sections 1 and 45 of the Trademark Act is CONTINUED AND MAINTAINED.

 

DRUG PARAPHERNALIA REFUSAL – BASED ON EVIDENCE – NOT LAWFUL USE IN

COMMERCE – CONTINUED AND MAINTAINED

The previously issued refusal to register because the applied-for mark is not in lawful use in commerce under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907, is CONTINUED AND MAINTAINED for the reason stated below.  As stated above, the refusal is limited solely to the items identified in the application in Class 34 as “oral vaporizers for smokers” and “oral vaporizers for smoking purposes.”

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 will be applied are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971.    The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport “drug paraphernalia,” which is defined as “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing in the human body a controlled substance.”  21 U.S.C. § 863.  Under the CSA, marijuana is a controlled substance.  21 U.S.C. §§ 812(a), (c), 841, 844.

The identification of goods/services includes the following item(s): oral vaporizers for smokers and oral vaporizers for smoking purposes.

In determining whether an item is drug paraphernalia, relevant evidence may include instructions or descriptive materials provided with the item concerning its use; advertising concerning its use; and the manner in which the item is displayed for sale. See 21 U.S.C. §863(e); In re Brown, 119 USPQ2d 1350, 1351-52 (TTAB 2016) (relying on applicant’s specimen and website to establish that its retail store services included the sale of marijuana). 

Evidence was attached to the June 4, 2019 Office Action from applicant’s website showing that applicant is operating marijuana dispensaries and that applicant is featuring oral vaporizers and cartridges therefor which are comprised of or pre-filled with cannabis based substances.  Applicant has argued that the designed for use or primarily intended for use language in 21 USC Section 863 concerns the intent of the manufacturer of the goods if it is principally used with illegal drugs by virtue of objective features.  Here, the objective features are obvious as oral vaporizers which are sold to consumers pre-filled with cannabis, as shown in applicant’s website, is intended to deliver the cannabis into the body. Because this application is for the goods themselves, it is fair to presume that applicant is manufacturing such goods and is actually selling such goods in commerce.  This evidence supports the conclusion that applicant is selling equipment, for inhaling, or introducing to the body marijuana. 

Applicant also contends in its response that its goods are lawful under federal law based 21 USC Section 863(f).  This provision states:

            This section shall not apply to:

(1)   Any person authorized by local, state or federal law to manufacture, distribute or possess such items;

(2)   Any item, that in the lawful course of business, is imported, exported, transported or sold by the mail or any other means, and traditionally intended for use with tobacco products including any pipe, paper or accessory.

Applicant has not specified any particular state or local law which allows it to sell drug paraphernalia.  However, since applicant is located in Washington state, a known recreational marijuana state, presumably applicant contends that Washington state law permits the sale of such goods.  Thus, in effect, it is applicant’s position that it may sell and distribute such items to anyone anywhere despite the prohibitions outlined in the federal Controlled Substances Act.  However, applicant’s implied contention is not persuasive.

The federal Controlled Substance Act is primarily a criminal statute that is used for the purpose of determining criminal liability at the federal level for possession or distribution of any prohibited drug or drug paraphernalia.  It is also intended to prohibit the flow of drugs (including marijuana) and drug paraphernalia across state lines or federal borders. Marijuana is still a prohibited controlled substance under the CSA, 21 USC Sections 812, 841(a), 844(a) and 802(16) defining marijuana.  Drug paraphernalia is prohibited under 21 USC Section 863.  The issue here concerns the registrability of applicant’s applied-for mark under Sections 1 and 45 of the Trademark Act, 15 USC Section 1051 and 1127, which as mentioned above, requires compliance with all federal laws in order to have lawful use of the mark on the identified goods.  It is beyond the scope of the examining attorney’s purview to determine whether or not applicant can be prosecuted under Washington or federal law for the sale and distribution of drug paraphernalia in Washington or anywhere else.  Therefore, the examining attorney will not comment one way or another as to whether applicant is at risk for any criminal prosecution under 21 USC Section 863 at the state or federal level.  However, 21 USC Section 863 must be read in its entirety to determine whether applicant’s mark can be used in connection with goods that can be lawfully used in commerce, namely, interstate commerce or commerce between the United States and foreign countries, and thus be eligible for a federal trademark registration.

The state of Washington cannot effectively legalize drug paraphernalia everywhere in the country nor can it control the distribution or transport of drug paraphernalia beyond its borders.   Only the federal government can regulate such commerce and the text of 21 USC Section 863 is clear in that applicant’s goods cannot and are not in compliance with the federal Controlled Substance Act.  The following three acts with regard to drug paraphernalia are prohibited under 21 USC §863(a):

(1)   To sell or offer to sell drug paraphernalia;

(2)   To use the mails or any other facility of interstate commerce to transport drug paraphernalia;

(3)   To import or export drug paraphernalia.

Applicant must comply with all three of the above provisions, not just one of them, in order for applicant’s goods to be used in lawful commerce and, thus, applicant’s mark be registrable under Sections 1 and 45 of the Trademark Act.  Sections 863(d) and (e) of the CSA generally define what drug paraphernalia is under federal law and establishes factors to consider in determining whether something is drug paraphernalia.  Among the factors in Section 863(e) are instructions concerning its use, depictions of its use, any sort of advertising and promotional materials which depict or promote its use, among other factors.  The evidence in the record clearly shows that applicant is promoting the goods for the primary purpose of vaping or introducing into the human body a controlled substance, namely, marijuana or cannabis based substances.  Applicant’s own website displays such goods pre-filled with cannabis oils. 

Furthermore, applicant’s identification for these items is unrestricted.  If applicant had specified in its identification that these goods are not designed for use or primarily intended for use with marijuana or if it had specified that the goods are for tobacco based substances, then the provisions of Section 863(f) would be applicable in this case and the goods would otherwise be lawful because the use of such goods with unlawful substances would be specifically excluded from the coverage of the application or registration which issues therefrom.  When an identification is unrestricted, it must be presumed to include devices which may be used for any purpose or sold with any type of liquid, including cannabis, especially where the evidence shows that the goods are sold pre-filled with cannabis.  See In re Brown, 119 USPQ2d 1350, 1353 (TTAB 2016).

Accordingly, because the identified goods with which the mark is used consist of or include within its scope items that are prohibited under the Controlled Substances Act, the applied-for mark, as used in connection with such goods, cannot be in lawful use in commerce. See In re Brown, 119 USPQ2d at 1352.  

Applicant’s website also shows that it sells or may sell such devices which are pre-filled with cannabidiol (CBD) which may or may not be derived from hemp, that is, cannabis with a tetrahydrocannabinol (THC) content of no more than 0.3 percent on a dry weight basis.  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).  Any such goods intended to be used with hemp 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 are 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.  Applicant will also be required to amend the identification of goods to limit the goods to items which are not for use with Cannabis sativa L with a THC content of more than 0.3 percent on a dry weight basis.  See below under the “Identification of Goods” heading.

 

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. 

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

NEW ISSUE – IDENTIFICATION OF GOODS – CLASS 34 ONLY

 

If applicant elects to amend the filing date of the application as discussed above, applicant must further amend the identification of goods in Class 34 to limit the refused items to those which do not contain or are not designed for use or primarily intended for use in connection with Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis.  Applicant may adopt the following wording, if accurate: (proposed changes in boldface).

 

CLASS 34 - Cigar boxes; Lighters for smokers; Pipe tampers; Cigarette lighters; Smoking pipe cleaners; Oral vaporizers for smokers and Oral vaporizers for smoking purposes; none of the foregoing oral vaporizers sold pre-filled with, or designed for use or primarily intended for use in connection with, inhaling any oils, liquids, extracts or derivatives from Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis.

 

Alternatively, if applicant elects to retain its current filing date, applicant may adopt the following form of identification in Class 34:

 

CLASS 34 - Cigar boxes; Lighters for smokers; Pipe tampers; Cigarette lighters; Smoking pipe cleaners; Oral vaporizers for smokers and Oral vaporizers for smoking purposes; none of the foregoing oral vaporizers sold pre-filled with, or designed for use or primarily intended for use in connection with, inhaling any oils, liquids, extracts or derivatives from Cannabis sativa L.

 

Applicant’s identifications in Classes 22, 25 and 35 are acceptable and need no further amendment.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See TMEP §1402.07(e).

 

DIVISION OF FILE OPTION

The stated refusal refers to the following goods and does not bar registration for the other goods:  “oral vaporizers for smokers and oral vaporizers for smoking purposes” in Class 34

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the goods to which the refusal pertains;

 

(2)  Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).

 

PARTIAL ABANDONMENT ADVISORY

If applicant does not respond to this Office action within the six-month period for response, the following goods in Class 34 will be deleted from the application:  oral vaporizers for smokers and oral vaporizers for smoking purposes.

The application will then proceed with the following goods in International Class 34 only:  Cigar boxes; Lighters for smokers; Pipe tampers; Cigarette lighters; smoking pipe cleaners and all of the goods listed in Classes 22, 25 and 35.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  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.  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

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 08, 2020 for

U.S. Trademark Application Serial No. 88136852

 

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. 

 

 

/Jeffrey J Look/

Jeffrey J Look

Trademark Examining Attorney

Law Office 108

Phone:  571-272-1652

Email:  jeffrey.look@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 08, 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.”