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:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
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.


Proposed:

Tracked Text Description: Topical Creams containing CBD for temporary relief of aches and pain; Topical Creams containing CBD for temporary relief of aches and pain derived solely from hemp with a delta-9 THC concentration of no more than 0.3 percent on a dry weight basisClass 005 for Topical Creams containing CBD for temporary relief of aches and pain derived solely from hemp with a delta-9 THC concentration of no more than 0.3 percent on a dry weight 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Ontel Products Corporation, a corporation of New Jersey, having an address of
      21 Law Drive
      Fairfield, New Jersey 07004
      United States

Proposed: Ontel Products Corporation, a corporation of New Jersey, having an address of
      21 Law Drive
      Fairfield, New Jersey 07004
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant also believes that the refusal to register the application based on no bona fide intent to use in lawful commerce is misguided. Applicant has already confirmed that the concentration of delta-9 tetrahydrocannabinol (THC) is not more than 0.3 percent on a dry weight basis. Under the 2018 Farm Bill, such hemp product is compliant with the Controlled Substances Act. Moreover, Applicant believes that approval under the FDA is unnecessary. The goods in the application are not ingested and are not used for the diagnosis, treatment of any disease. The reference cited by the Examining Attorney concerning the FDA approved prescription containing CBD is specifically for treatment of epilepsy, a clear medical condition and that product has a very specific purpose in treating this medical condition. In contrast, Applicant's products have no such function and are not to treat or cure any disease. Upon information and belief, Applicant believes it is fully compliant with the FDCA. Moreover, as cited in Applicant's prior office action response, the Trademark Office has previously registered very similar topical creams.

Correspondence Information (current):
      Jenny T. Slocum
      PRIMARY EMAIL FOR CORRESPONDENCE: dwtrademarks@dickinsonwright.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jslocum@dickinsonwright.com; kboie@dickinsonwright.com

The docket/reference number is 064944-00000.
Correspondence Information (proposed):
      Jenny T. Slocum
      PRIMARY EMAIL FOR CORRESPONDENCE: dwtrademarks@dickinsonwright.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jslocum@dickinsonwright.com; kboie@dickinsonwright.com

The docket/reference number is 064944-00000.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Jenny Slocum/     Date: 08/11/2020
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 Aug 11 16:56:03 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202008111656035
96728-88141979-740b6ff1ef1963e84d345b113
972a1fbb66438230635c7110dd35c67c847ce66f
5e-N/A-N/A-20200811165045202113