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. 88141979 MIRACLECBD(Standard Characters, see http://uspto.report/TM/88141979/mark.png) has been amended as follows:

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

In the Office Action dated July 19, 2019 (“Office Action”) concerning the trademark MIRACLECBD the Examining Attorney refuses registration of this application for “Tropical creams” in Class 5 (“Application” or “Applicant’s Mark”).   Applicant respectfully requests that the application be approved for publication.

  The product contains CBD derived solely from authorized, approved industrial hemp, and in accordance with the December 20, 2018 amendments to the CSA, such use is lawful and Applicant requests that the filing date of the Application be amended to December 20, 2018. The concentration of delta-9 tetrahydrocannabinol (THC) is not more than 0.3 percent on a dry weight basis.

The goods contained in Applicant’s are not ingested or consumed and is instead a topical cream applied to the skin.  Indeed, the Trademark Office registered multiple marks for goods including topical creams containing CBD derived from hemp including the following:

• NATURE’S ORIGINAL MADE WITH CANATREX UNCLE BUD’S TOPICAL PAIN RELIEVER (Reg. No. 5305026) for “topical analgesics; analgesic balm; Topical gel for medical and therapeutic treatment of minor aches and pains of muscles and joints; all of the foregoing containing CBD derived from industrial hemp.

• CBD FOR LIFE (Reg. No. 5130016) for Herbal topical creams, gels, salves, sprays, powder, balms liniment and ointments for the relief of aches and pain comprising cannabidiol (CBD).

• REAL SCIENTIFIC HEMP OIL (Reg. No. 5234688) for Dietary and nutritional supplements comprised of hemp with naturally occurring cannabidiol (CBD); hemp protein powder with naturally occurring cannabidiol (CBD) for use as a nutritional supplement; hemp protein with naturally occurring cannabidiol (CBD) for use as a nutritional supplement in various powered and ready-to-drink beverages; meal replacement powders comprised of hemp for medical purposes; meal replacement bars comprised of hemp for medical purposes; meal replacement drink mixes comprised of hemp for medical purposes; hemp-based dietary supplement drink mixes with naturally occurring cannabidiol (CBD); hemp-based nutraceuticals with naturally occurring cannabidiol (CBD) for use as a dietary supplement; hemp-based topical creams, gels, salves, sprays, balms and ointments for analgesic purposes; nutrition supplements comprised of hemp with naturally occurring cannabidiol (CBD) in drop form, capsule form, and in liquid form; edible hemp oil with naturally occurring cannabidiol (CBD) for use as a dietary supplement; hemp oil with naturally occurring cannabidiol (CBD) as a nutritional supplement.

   

• CBD MD (Reg. No. 5173264) for Medicinal creams for skin care; Medicinal herbal preparations; Medicinal oils; Herbs for medicinal purposes; all of the aforementioned containing CBD.

 

The aforementioned registrations contain similar goods to those claimed in the Application. Based on the foregoing, Applicant requests that its Application be approved for publication.

Conclusion

Based on the foregoing, Applicant respectfully requests that the Trademark Examining Attorney withdraw the refusal and allow the mark to publish in the Official Gazette of the U.S. Trademark Office. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Topical Creams
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Proposed:
Tracked Text Description: Topical Creams; Topical Creams containing CBD for temporary relief of aches and pain.Class 005 for Topical Creams containing CBD for temporary relief of aches and pain.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

The applicant's current attorney information: Jenny T. Slocum. Jenny T. Slocum of DICKINSON WRIGHT PLLC, is located at

      1825 EYE STREET N.W.; SUITE 900
      WASHINGTON, District of Columbia 20006
      US
The docket/reference number is 064944-00000.

The phone number is 202-659-6927.

The fax number is 844-670-6009.

The email address is dwtrademarks@dickinsonwright.com

The applicants proposed attorney information: Jenny T. Slocum. Jenny T. Slocum of DICKINSON WRIGHT PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1825 EYE STREET N.W.; SUITE 900
      WASHINGTON, District of Columbia 20006
      United States
The docket/reference number is 064944-00000.

The phone number is 202-659-6927.

The fax number is 844-670-6009.

The email address is dwtrademarks@dickinsonwright.com

Jenny T. Slocum 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: JENNY T. SLOCUM. JENNY T. SLOCUM of DICKINSON WRIGHT PLLC, is located at

      1825 EYE STREET N.W.; SUITE 900
      WASHINGTON, District of Columbia 20006
      US
The docket/reference number is 064944-00000.

The phone number is 202-659-6927.

The fax number is 844-670-6009.

The email address is dwtrademarks@dickinsonwright.com; jsartz@dickinsonwright.com; jslocum@dickinsonwright.com; kboie@dickinsonwright.com

The applicants proposed correspondence information: Jenny T. Slocum. Jenny T. Slocum of DICKINSON WRIGHT PLLC, is located at

      1825 EYE STREET N.W.; SUITE 900
      WASHINGTON, District of Columbia 20006
      United States
The docket/reference number is 064944-00000.

The phone number is 202-659-6927.

The fax number is 844-670-6009.

The email address is dwtrademarks@dickinsonwright.com; jslocum@dickinsonwright.com; kboie@dickinsonwright.com

SIGNATURE(S)
Response Signature
Signature: /Jenny Slocum/     Date: 01/21/2020
Signatory's Name: Jenny Slocum
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 2026596927

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:    JENNY T. SLOCUM
   DICKINSON WRIGHT PLLC
   
   1825 EYE STREET N.W.; SUITE 900
   WASHINGTON, District of Columbia 20006
Mailing Address:    Jenny T. Slocum
   DICKINSON WRIGHT PLLC
   1825 EYE STREET N.W.; SUITE 900
   WASHINGTON, District of Columbia 20006
        
Serial Number: 88141979
Internet Transmission Date: Tue Jan 21 18:44:17 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202001211844177
16492-88141979-7008b6774b25484219483ed77
a8c83b2de2c9cdedb28b5ae1facd61db79ebe8f1
5-N/A-N/A-20200121183244160080