| To: | Cannara Biotech, Inc. (trademark@traskbritt.com) |
| Subject: | U.S. Trademark Application Serial No. 88150265 - CANNABAR - .01-TM3575US |
| Sent: | February 25, 2020 08:32:48 PM |
| Sent As: | ecom106@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88150265
Mark: CANNABAR
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Correspondence Address:
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Applicant: Cannara Biotech, Inc.
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Reference/Docket No. .01-TM3575US
Correspondence Email Address: |
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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 25, 2020
This Office action is in response to applicant’s communication filed on 1/29/2020 and is supplemental to and supersedes the previous Office action issued on 7/9/2019 in connection with this application.
Applicant was previously advised of a potential refusal under Section 2(d) of the Trademark Act for a likelihood of confusion with the mark in pending U.S. Application No. 87625038. The referenced pending application has matured into U.S. Registration No. 5974752. Accordingly, the partial Section 2(d) refusal is now maintained and modified. 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: Partial Section 2(d) refusal for a likelihood of confusion with the mark in U.S. Registration 5694472; Partial Sections 1 and 45 Refusal – CSA; Partial Sections 1 and 45 Refusal – Paraphernalia; Partial Sections 1 and 45 Refusal – FDCA; and Partial Sections 1 and 45 Refusal - Pharmaceuticals. In addition, applicant was required to satisfy the following requirements: disclaim the term “CANNABAR” in the mark, respond to a request for information, amend the identification and classification of goods, comply with the multiple-class application requirements, and amend the mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: amend the identification and classification of goods and comply with the multiple-class application requirements. See TMEP §713.02.
In addition, upon further consideration, the Sections 1 and 45 paraphernalia refusal and the requirement for information have been withdrawn as to the following goods: “Smokers' articles and accessories namely, lighters” and “Lighters for smokers; Cigar lighters; Cigarette lighters not of precious metal; Non-electric cigar lighters not of precious metal” in International Class 34. See TMEP §§713.02.
However, for the reasons set forth below, the remaining refusals and requirements are maintained and continued. See TMEP §§713.02. Applicant will note that the Sections 1 and 45 FDCA refusal and Section 1 and 45 pharmaceuticals refusal have been combined for the sake of clarity.
The following is a SUMMARY OF ISSUES that applicant must address:
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO INTERNATIONAL CLASSES 5, 30, 31, 32, AND 33.
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5694472 and 5974752. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. A copy of U.S. Registration No. 5974752 is attached. A copy of U.S. Registration No. 5694472 was attached previously.
Applicant seeks to register the mark CANNABAR (and design) for, in relevant part, “Plant extracts for medical, veterinary and pharmaceutical purposes; Plant extracts for pharmaceutical purposes; dietary pet supplements in the form of pet treats” in International Class 5, “Cakes; Confectioneries, namely, snack foods, namely, chocolate; Cookies” in International Class 30, “edible pet treats” in International Class 31, “beverages, namely, fruit beverages, fruit juices, water beverages, mineral and aerated waters, beer, non-alcoholic malt beverages, soft drinks, and vegetable juices” in International Class 32, and “beverages, namely, alcoholic beverages, except beer; alcoholic beverages, namely wine, liquor and spirits” in International Class 33.
The mark in U.S. Registration No. 5694472 is CANNABAR (in standard characters) for “Healthy snacks, namely, food bars comprised primarily of nuts, fruits, and hemp; none of the foregoing containing CBD” in International Class 29.
The mark in U.S. Registration No. 5974752 is CANNABAR (and design) for “Healthy snacks, namely, food bars comprised primarily of nuts, fruits, and hemp derived solely from the mature stalks and sterilized seeds; none of the foregoing containing CBD” in International Class 29.
Both of the registered marks are owned by the same entity, namely, Cannabars, LLC.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In the present case, applicant’s mark is identical in terms of sound, appearance, connotation and commercial impression to the word portion the registered marks. Therefore, the addition of a design element in one mark or the other does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Relatedness of the Goods
In a likelihood of confusion analysis, the goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Here, applicant’s goods and registrant’s goods are closely related in that each party provides consumable items that are frequently produced by the same entities and sold under the same brand to the same classes of consumers.
The trademark examining attorney has previously attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely snack food bars, on the one hand, and plant extracts and similar pharmaceutical or supplement products, confectionery such as cakes, cookies and chocolate, pet treats, and/or beverages, on the other hand, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
In addition, the previously attached Internet evidence, consisting of websites of third parties that produce snack food bars as well as plant extracts, cakes, cookies, and chocolates, pet treats, and beverages, establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Applicant’s Arguments
Applicant provided arguments in its response against a finding of a likelihood of confusion between the applicant’s mark and the mark in U.S. Registration No. 5694472. First, applicant argues that confusion between the applied-for mark and the registered marks is unlikely because “the goods in applicant’s application are not the same as those in the registration.” This argument is unpersuasive. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
Applicant has also referenced certain of the third party registrations cited in the prior Office action and attacked their validity on various grounds, such as having digitally altered specimens. Evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.
Summary
In sum, due to the similarity of the marks and the relatedness of the respective goods, it is likely consumers will mistakenly believe the goods emanate from the same source. The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988). Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
PARTIAL SECTIONS 1 AND 45 REFUSAL – CSA – CANNABIS GOODS
THIS PARTIAL REFUSAL APPLIES ONLY TO INTERNATIONAL CLASSES 5, 30, 31, 32, AND 33.
Registration is refused because applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce as of the filing date of the application. 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 evidence of record indicates that the items to which the proposed mark will be applied were unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971, as of 10/10/2018, the date on which the application was filed.
Specifically, the previously attached evidence from applicant’s LinkedIn® page shows that the applicant “plans to operate the largest indoor cannabis biotech facility in Quebec” and “will offer a variety of cannabis infused products and flower.” The additional previously attached evidence from applicant’s website shows that the applicant’s “facility will be leveraged to partner with proven entities allowing for cannabis infused production on-site” and that their cannabis brand portfolio “will span across many categories, including recreational, cosmeceutical, edible and beverage products.”
The previously attached evidence from applicant’s CANNABAR brand website further shows that its products do in fact contain cannabis, including both THC and CBD components. Applicant states that its “THC-CBD hybrid bars are perfectly and consistently dosed for your mood” and that its “CBD-only bars are ideal for your relief of aches and pains.”
The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and any material or preparation containing marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]” as “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)).
In this case, the attached evidence plainly indicates that applicant’s identified goods include items that are prohibited by the CSA, namely, plant extracts, dietary pet supplements, confectionery and other food items, pet treats, and beverages containing cannabis or derivatives thereof.
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). Applicant’s goods consist of, or include, items that are or were prohibited by the CSA. Applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with the 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.”); 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. Because the identified goods consist of or include items 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.
If applicant requests to amend the filing date of the application to December 20, 2018 to obviate this refusal, applicant must also amend the identification of goods to indicate that the relevant goods do not contain cannabis or cannabis extracts or derivatives with a delta-9 THC concentration of more than 0.3 percent on a dry weight basis.
In lieu of amending the filing date, applicant may choose to file a new application with a new fee that will have a later application filing date that is later than the enactment of the December 20, 2018 amendments to the AMA.
Once again, applicant argues in its response that it “intends to use the trademark on lawful goods in the US” and that its good will not include CBD. However, absent limitation of the identified goods to expressly indicate that the goods are lawful, the goods can be presumed to consist of or include those which are presently unlawful under the CSA given the abundant evidence indicating that applicant currently offers or intends to offer goods containing cannabis or derivatives thereof.
Accordingly, this refusal is maintained and continued.
Applicant should note the following additional ground for refusal.
PARTIAL SECTIONS 1 AND 45 REFUSAL – CSA – PARAPHERNALIA
THIS PARTIAL REFUSAL APPLIES ONLY TO THE FOLLOWING GOODS: “Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Smokers' mouthpieces for electronic cigarettes and vaporizers; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes” and “Cigarette holders; Cigarette cases; Cigarette cases not of precious metal; Cigarette filters; Cigarette paper; Cigarette rolling papers; Cigarette-rolling machines; Pocket appliances for rolling one's own cigarettes” in International Class 34.
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/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 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 includes the following items: “Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Smokers' mouthpieces for electronic cigarettes and vaporizers; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes” and “Cigarette holders; Cigarette cases; Cigarette cases not of precious metal; Cigarette filters; Cigarette paper; Cigarette rolling papers; Cigarette-rolling machines; Pocket appliances for rolling one's own cigarettes.”
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).
The evidence of record establishes that the goods on which the mark will be used are primarily intend for use with marijuana/controlled substances. Specifically, the previously attached evidence from applicant’s LinkedIn® page shows that the applicant “plans to operate the largest indoor cannabis biotech facility in Quebec” and “will offer a variety of cannabis infused products and flower.” The additional previously attached evidence from applicant’s website shows that the applicant’s “facility will be leveraged to partner with proven entities allowing for cannabis infused production on-site” and that their cannabis brand portfolio “will span across many categories, including recreational, cosmeceutical, edible and beverage products.”
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). Accordingly, 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. 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). Because the identified goods consist of or include items that are still prohibited under the Controlled Substances Act, namely various smokers’ articles broad enough to include those for use with cannabis, the applicant did not have a valid filing basis for any such items. However, to the extent the applicant’s goods are exclusively for use with products derived solely from cannabis plants that meet the current statutory definition of hemp, such goods may 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.
If applicant requests to amend the filing date of the application to December 20, 2018 to obviate the refusal, applicant must also amend the identification of goods to indicate that the relevant goods are not for use with cannabis or cannabis extracts or derivatives with a delta-9 THC concentration of more than 0.3 percent on a dry weight basis.
In lieu of amending the filing date, applicant may choose to file a new application with a new fee that will have a later application filing date that is later than the enactment of the December 20, 2018 amendments to the AMA.
Once again, applicant argues in its response that it “intends to use the trademark on lawful goods in the US” and that its good will not include CBD. However, absent limitation of the identified goods to expressly indicate that the goods are lawful, the goods can be presumed to consist of or include those considered paraphernalia under the CSA given the abundant evidence indicating that applicant currently offers or intends to offer goods containing or for use with cannabis or derivatives thereof.
Accordingly, this refusal is maintained and continued.
Applicant should note the following additional ground for refusal.
PARTIAL SECTIONS 1 AND 45 REFUSAL – FDCA/PHARMACEUTICALS
THIS PARTIAL REFUSAL APPLIES ONLY TO INTERNATIONAL CLASSES 5, 30, 31, 32, AND 33.
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).
This refusal issues when “(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-relevant activities involve a per se violation of a federal law.” In re Brown, 119 USPQ2d at 1351 (citing Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988); Santinine Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981)); TMEP §907.
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 will be 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.
The Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug or a biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the Federal Food, Drug and Cosmetic Act).
Cannabidiol (CBD) is an active ingredient in an FDA-approved drug, Epidiolex®, (see http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm611046.htm copy previously attached) and was the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements. See FDA Regulation of Cannabis and Cannabis-derived Products: Questions and Answers http://www.fda.gov/NewsEvents/PublicHealthFocus/ucm421168.htm copy previously attached.
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.
Applicant’s goods are broad enough to encompass products that consist of, or include, items that are or were prohibited by the FDCA, namely, plant extracts for medical, veterinary and pharmaceutical purposes, dietary pet supplements, various confectionery and other food items, edible pet treats, and alcoholic and non-alcoholic beverages containing CBD.
The previously attached excerpts from applicant’s website and LinkedIn® page and the newly attached news release evidence plainly indicates that applicant’s dietary pet supplements, food and beverage items, and pet treats contain cannabis or cannabis derivatives and that such goods are currently being marketed, promoted or offered for sale to consumers. The previously attached evidence from applicant’s CANNABAR brand website further shows that its products do in fact contain cannabis, including both THC and CBD components. Applicant states that its “THC-CBD hybrid bars are perfectly and consistently dosed for your mood” and that its “CBD-only bars are ideal for your relief of aches and pains.”
It is unlawful to introduce food containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. See Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds, http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm copy previously attached.
In addition, 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. The previously referenced excerpts from applicant’s website plainly indicate that applicant’s pharmaceuticals contain or are comprised of cannabidiol and are promoted to have therapeutic or medical benefits that affect the structure or function of the body.
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 introduction of such goods into commerce 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 e.g. 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.
Once again, applicant argues in its response that it “intends to use the trademark on lawful goods in the US” and that its good will not include CBD. However, absent limitation of the identified goods to expressly indicate that the goods are lawful, the goods can be presumed to consist of or include those unlawful under the FDCA given the abundant evidence indicating that applicant currently offers or intends to offer goods containing cannabis or derivatives thereof, namely, CBD.
Accordingly, this refusal is maintained and continued.
PARTIAL REFUSALS RESPONSE OPTIONS
International Class 5: Plant extracts for medical, veterinary and pharmaceutical purposes; Plant extracts for pharmaceutical purposes; dietary pet supplements in the form of pet treats; none of the foregoing containing cannabis or cannabis extracts or derivatives with a THC concentration of more than 0.3 percent on a dry weight basis and none of the foregoing containing CBD
International Class 30: Cakes; Confectioneries, namely, snack foods, namely, chocolate; Cookies; beverages, namely, coffee-based beverages, artificial coffee, tea-based beverages, herbal food beverages, chocolate-based beverages, kombucha tea, tea, coffee; none of the foregoing containing cannabis or cannabis extracts or derivatives with a THC concentration of more than 0.3 percent on a dry weight basis and none of the foregoing containing CBD
International Class 31: edible pet treats; none of the foregoing containing cannabis or cannabis extracts or derivatives with a THC concentration of more than 0.3 percent on a dry weight basis and none of the foregoing containing CBD
International Class 32: beverages, namely, fruit beverages, fruit juices, water beverages, mineral and aerated waters, beer, non-alcoholic malt beverages, soft drinks, and vegetable juices; none of the foregoing containing cannabis or cannabis extracts or derivatives with a THC concentration of more than 0.3 percent on a dry weight basis and none of the foregoing containing CBD
International Class 33: Beverages, namely, alcoholic beverages, except beer; alcoholic beverages, namely wine, liquor and spirits; none of the foregoing containing cannabis or cannabis extracts or derivatives with a THC concentration of more than 0.3 percent on a dry weight basis and none of the foregoing containing CBD
International Class 34: Smokers' articles and accessories namely, lighters; Electronic cigarette refill cartridges sold empty; Electronic cigarettes; Smokers' mouthpieces for electronic cigarettes and vaporizers; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes; Lighters for smokers; Cigar lighters; Cigarette lighters not of precious metal; Non-electric cigar lighters not of precious metal; Cigarette holders; Cigarette cases; Cigarette cases not of precious metal; Cigarette filters; Cigarette paper; Cigarette rolling papers; Cigarette-rolling machines; Pocket appliances for rolling one's own cigarettes; none of the foregoing containing, consisting of or intended or marketed for use with cannabis with a THC concentration of 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).
PARTIAL REQUIREMENT FOR INFORMATION
This partial requirement applies to the following goods:
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).
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:
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)
DISCLAIMER REQUIRED FOR SPECIFIED CLASSES
THIS PARTIAL REQUIREMENT APPLIES ONLY TO INTERNATIONAL CLASSES 5, 30, AND 31
Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “CANNA BAR” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The previously attached evidence from Urban Dictionary® shows that the term “CANNA” is commonly used to refer to a “cannabis cigarette” or to “ganja” generally, which in turns means “marijuana, pot, cannabis, weed, etc.” The additional previously attached evidence shows that it is common for the term “CANNA” to be used to describe food and beverage items containing cannabis. Thus, when viewed in connection with applicant’s goods, which consist of various food items, the term “CANNA” in the mark therefore immediately indicates to consumers that the goods contain cannabis. In fact, as shown by the attached evidence from applicant’s CANNABAR brand website, the goods do in fact contain cannabis.
Next, the previously attached evidence from http://www.lexico.com/en/definition/bar#bar shows that a “bar” is “an amount of food or another substance formed into a narrow block.” As the attached evidence from third party websites shows, it is common for pet treats to be formed into narrow bocks and described as “bars.” Additionally, applicant’s website indicates that its food items are shaped into narrow blocks and described as “bars.” Thus, the term “BAR” in the mark merely describes a feature or characteristic of the goods, namely their shape.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (holding BATTLECAM merely descriptive of computer game software with a feature that involve battles and provides the player with the option to utilize various views of the battlefield); In re Cox Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE ATL for the city of Atlanta); In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of highly automated cooling towers); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1085 (TTAB 2001) (holding AGENTBEANS merely descriptive of computer software for use in developing and deploying application programs on a global computer network).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the combined wording in the mark, CANNABAR, immediately indicates to consumers that the goods are shaped into bars and contain cannabis.
Applicant argues in its response first that the mark is not descriptive because “applicant will offer goods which do not include CBD.” Applicant appears to misapprehend the reasoning for the refusal. The term “CANNA” in the mark does not merely describe goods that contain CBD, but that include cannabis or cannabis-derived ingredients more broadly. The previously referenced evidence from applicant’s website clearly indicates that the goods do or will in fact contain cannabis or derivatives thereof.
Applicant also argues that refusal is improper because the mark cited as a bar to registration under Section 2(d), which is identical to the mark at issue, was not refused on the same ground. However, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).
Next, applicant argues that “assembling definitions of individual words are [sic] inadequate to sustain a merely descriptive refusal.” To the contrary, a trademark examining attorney may consider the significance of each element separately in the course of evaluating the mark as a whole. See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1253, 103 USPQ2d 1753, 1756-57 (Fed. Cir. 2012) (reversing Board’s denial of cancellation for SNAP! with design for medical syringes as not merely descriptive when noting that the Board “to be sure, [could] ascertain the meaning and weight of each of the components that ma[de] up the mark”); In re Hotels.com, L.P., 573 F.3d 1300, 1301, 1304, 1306, 91 USPQ2d 1532, 1533, 1535, 1537 (Fed. Cir. 2009) (holding HOTELS.COM generic for information and reservation services featuring temporary lodging when noting that the Board did not commit error in considering “the word ‘hotels’ for genericness separate from the ‘.com’ suffix”).
As discussed above, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)). Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.
Lastly, applicant argues that the mark is not descriptive but rather suggestive, making reference to cases in which descriptiveness refusals were reversed. The applicant has not indicated how the analyses in those cases apply to the analysis at hand, instead simply stating that “the mark as a whole would not be perceived as immediately describing the goods” and is “vague and suggestive and has no exact meaning in connection with the goods.” This argument is therefore unpersuasive. The abundant evidence of record clearly indicates that the terms “CANNA” and “BAR,” both individually and when combined, readily convey to consumers information as to an ingredient of the goods and the form of the goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CANNA BAR” for International Classes 5, 30 and 31 apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
MARK DESCRIPTION AMENDMENT REQUIRED
Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.
The following description is suggested, if accurate: The mark consists of a large stylized design of a cannabis leaf above two horizontal lines, beneath which is the word “CANNABAR”.
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.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
