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:  February 11, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on 7/19/2019 in connection with this application.  In applicant’s Office action response dated 1/21/2020, applicant requested the application filing date be amended to 12/20/2018.  Applicant’s request has been granted.  Accordingly, the examining attorney has performed a supplemental search of the USPTO’s database of registered and pending marks.  TMEP §704.02; see 15 U.S.C. §1052(d).  The examining attorney has found no similar registered marks that would bar registration under Trademark Act Section 2(d); however, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.  Accordingly, the trademark examining attorney now issues the following new issue: Prior-Filed Application.  See TMEP §§706, 711.02. 

 

In the previous Office action, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Sections 1 and 45 for a lack of bona fide intent to use the mark in commerce due to the goods being unlawful under the Controlled Substances Act (CSA), and Trademark Act Sections 1 and 45 for a lack of bona fide intent to use the mark in commerce due to the goods being unlawful under the Federal Food, Drug, and Cosmetic Act (FDCA).  In addition, applicant was required to satisfy the following requirements: respond to a request for information, amend the identification and classification of goods, and comply with the multiple-class application requirements.

 

Based on applicant’s response, the trademark examining attorney notes that the requirements to amend the identification and classification of goods and comply with the multiple-class application requirements have been satisfied.  See TMEP §713.02. 

 

However, for the reasons set forth below, the refusals under Sections 1 and 45 of the Trademark Act and the requirement to respond to the request for information are maintained and continued.  See id. 

 

Lastly, for the record it is noted that applicant has included in its Office action response references to a number of third party registrations to support its argument against the stated refusals.  However, the mere submission of a list of registrations does not make such registrations part of the record.  See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.  To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03.  Accordingly, these registrations are objected to and will not be considered.

 

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

 

• Prior-Filed Application – New Issue
• 1 and 45 Refusal – No Bona Fide Intent to Use in Lawful Commerce – CSA
• 1 and 45 Refusal – No Bona Fide Intent to Use in Lawful Commerce – FDCA
• Request for Information

 

PRIOR-FILED APPLICATION – NEW ISSUE

 

The filing date of pending U.S. Application Serial No. 88190833 (11/12/2018) precedes applicant’s amended filing date of 12/20/2018.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

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 the amended filing date of 12/20/2018 because applicant’s goods, as currently identified, are broad enough to encompass products that consist of, or include, items that are or were prohibited by the CSA, namely, topical creams containing CBD derived from cannabis with a delta-9 THC concentration of more than 0.3% on a dry weight basis. 

 

The amended identification of goods specifies that the goods contain CBD.  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 previously attached; see also, 21 C.F.R. §1308.11(d)(58). 

 

As currently identified, applicant’s identified goods are broad enough to include products containing CBD derived 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). 

 

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.   

 

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.  Nevertheless, to the extent the applicant’s goods contain CBD 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), applicants 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 has requested the application filing date be amended to 12/20/2018 and this request has been granted.  Applicant’s indication in the Office action response that the delta-9 THC concentration of the goods is not more than 0.3% on a dry weight basis has also been noted.  However, despite the filing date amendment and statement in the response, the goods remain unlawful under the CSA because they are identified broadly such that they could still include topical creams containing CBD derived from hemp with a THC concentration greater than 0.3%.  Accordingly, in order to fully obviate this refusal, applicant must also amend the identification of goods to specify that the CBD in the goods is derives solely from hemp with a THC concentration of not more than 0.3%.  Applicant may adopt the following amended identification of goods, if accurate:

 

International Class 5: Topical Creams for the temporary relief of aches and pain containing CBD derived solely from hemp with a delta-9 THC concentration of no more than 0.3 percent on a dry weight basis

 

Applicant is advised that it 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).

 

In the absence of the amendments necessary to indicate that the goods contain CBD derived solely from hemp with a delta-9 THC concentration of no more than 0.3 percent on a dry weight basis, the refusal of registration under Sections 1 and 45 of the Trademark Act is maintained and continued. 

 

Applicant should note, however, that even if applicant amends the application as outlined above to obviate this CSA refusal, such amendment will not be sufficient to overcome the additional FDCA refusal set forth immediately below.

 

Applicant should note the following additional ground for refusal.

 

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

 

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). 

 

In the present case, applicant’s “topical creams” are identified as having a therapeutic purpose or use, namely, the temporary relief of aches and pain.  Further, the identification indicates that the goods contain cannabidiol.  

 

On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved the first prescription pharmaceutical formulation of plant-derived CBD, Epidiolex®, for the treatment of two rare forms of epilepsy, Lennox-Gastaut syndrome and Dravet syndrome.  The Drug Enforcement Administration (DEA) placed Epidiolex® on schedule V of the CSA on September 27, 2018.  Nevertheless, marijuana and CBD derived from marijuana remain unlawful.  No other cannabis-derived drug products have been approved by the FDA.  Under the Food, Drug and Cosmetics Act (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); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers http://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers copy previously attached.

 

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 and/or services.  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.   

 

Applicant states in response to the original refusal that the goods identified in the application are not ingested or consumed and instead consist of a topical cream applied to the skin.  Whether the goods are ingested orally or applied to the skin, however, is irrelevant to the determination of lawfulness under the FDCA.   As indicated by the previously referenced evidence from http://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers, 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.  In this case, applicant’s goods are intended for the therapeutic purpose of temporarily relieving aches and pain.  Thus, the goods are considered a “drug” for purposes of the FDCA and—because they contain a substance (CBD) approved for use as a drug—are unlawful under the FDCA.

 

In the event applicant is currently seeking FDA approval of the marketing of its goods, however, applicant may submit a copy of its marketing application to establish its intent to lawfully use the applied-for mark. 

 

It is once again noted that applicant has submitted a list of third party registrations as evidence that the USPTO has previously registered marks for similar goods containing CBD.  As indicated in the introduction to this Office action, these registrations were not properly attached to the response and the examining attorney objects to their introduction into the record.  However, without considering the particular registrations themselves or addressing the contents of the registrations, the examining attorney reminds the applicant that when determining whether an applied-for mark is eligible for registration, each application must be considered on its own record.  In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“[The Federal Circuit], like the Board, must evaluate the evidence in the present record to determine whether there is sufficient evidence . . . .”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar marks are irrelevant because each application must be considered on its own merits.”); see also In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the [Trademark Trial and Appeal] Board or this court.”).

 

Accordingly, the refusal of registration under Sections 1 and 45 of the Trademark Act is maintained and continued. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

REQUEST FOR INFORMATION

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  Although applicant has provided information pertaining to several of the inquiries set forth in the previous Office action, certain of the other inquiries have been left unanswered.

 

In addition, applicant must submit a written statement indicating whether all the goods identified in the application comply with relevant federal law, including the Controlled Substances Act (CSA) and the Federal Food, Drug, and Cosmetic Act (FDCA), 21 U.S.C. §§801-971 (see questions below). See 37 C.F.R. §2.69; TMEP §907.

 

Applicant must respond to the following questions and/or requests for documentation to satisfy this request for information:

 

1. Does the applicant have any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods?  If so, please submit them with the response.
2. Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L?
3. Is the applicant currently seeking FDA approval for the identified goods?
4. Upon information and belief, do applicant’s goods comply with the Controlled Substances Act (CSA)?
5. Upon information and belief, do applicant’s goods comply with the Federal Food, Drug, and Cosmetic Act (FDCA)?

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

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 February 11, 2020 for

U.S. Trademark Application Serial No. 88141979

 

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 February 11, 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.”