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:  July 24, 2019

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Refusal under Trademark Act Sections 1 and 45 - Cannabis-Related Services Refusal
• Refusal under Trademark Act Sections 1 and 45 - Drug Paraphernalia Refusal
• Requirement for Information
• Requirement for an Accurate Description of the Mark

 

CSA UNLAWFUL USE REFUSAL

 

Registration is refused because the applied-for mark was not in lawful use 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 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 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 activities to which the proposed mark are applied were unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971, as of 10/15/2018, the date on which the application was filed.  Applicant’s specimen of record includes a photograph of a marijuana leaf with the wording “CBD” and the molecular design of such in the list of products offered by applicant. Applicant’s services, namely, “Smoke shops” thus appear to feature items that are or were prohibited by the CSA. 

 

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 attached; see also, 21 C.F.R. §1308.11(d)(58).  Applicant’s identified services are broad enough to include products produced 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)  The claimed use of the applied-for mark in connection with such services was not in lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.    

 

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 services identified did not potentially comply with applicable federal laws until that date.  Because the identified services feature 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 services feature products that contain CBD derived from cannabis plants that meet the current statutory definition of hemp, the services may presently be lawful.

 

Due to the changed circumstances and the potential lawfulness of certain products and activities that meet the definition of the Agricultural Marketing Act of 1946, as amended (AMA), applicant may request to amend the filing date of the current application to be December 20, 2018.  See Examination Guide 1-19 Examination of Marks for Cannabis and Cannabis-Related Goods and Services after Enactment of the 2018 Farm Bill http://www.gov.uspto.report/sites/default/files/documents/Exam%20Guide%201-19.pdf.  Applicant must specifically state for the record that such a change to the filing date is being authorized and must establish a valid filing basis under 37 C.F.R. §2.34 by satisfying the relevant requirements. See 37 C.F.R. §§2.34 et seq., TMEP §§806 et seq.  In the event of such an amendment, the undersigned examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03 For instructions on how to satisfy basis requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

Applicant is advised that if the filing date is amended as suggested above, applicant will also need to amend the identification of services featuring products consistent with the legal definition of “hemp” under the Agriculture Improvement Act of 2018.  

 

In lieu of amending the filing date, may elect to abandon the current application and file a new application with a new fee that will have an application filing date that is later than the enactment of the December 20, 2018 amendments to the AMA.  Alternatively, applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. 

 

Applicant should note the following additional ground for refusal. Applicant should note that amending the application as suggested above will not overcome the Drug Paraphernalia refusal below.

 

DRUG PARAPHERNALIA UNLAWFUL USE REFUSAL

Registration is refused because the applied-for mark is not in lawful use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. 

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

The identification of services includes the following: “Smoke shops”.

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 following evidence establishes that applicant’s services are primarily intend for use with marijuana/controlled substances: applicant’s specimen of record includes a list of products such as “smoke pieces” and “vaporizers” and such which, under the marijuana design and wording CBD indicates that the products are to be used in connection with marijuana. Applicant’s services, namely, “Smoke shops” thus appear to feature items that are or were prohibited by the CSA.

This evidence supports the conclusion that applicant is selling equipment, products, or materials for manufacturing, processing, inhaling, or introducing to the body marijuana.   

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)  The claimed use of the applied-for mark in connection with such services was not in lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.    

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

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.

 

REQUIREMENT FOR ADDITIONAL INFORMATION

 

To permit proper examination of the application, applicant must submit additional information about applicant’s services.  See 37 C.F.R. §2.61(b); TMEP §814.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods sold in applicant’s smoke shop. Factual information must clearly indicate the products’ salient features, their ingredients, and their prospective customers and channels of trade.

 

In addition, applicant must respond to the following questions:

 

1.         Do or will applicant’s identified services provide for or enable users of the services to directly purchase, trade, exchange, barter or sell, distribute or disseminate preparations, oils, extracts, ingredients, or derivatives from cannabis, marijuana, or hemp?

2.         Do or will applicant’s services feature food, beverages or supplements containing cannabidiol (CBD)? If yes, identify the source plant of the CBD, e.g., hemp, marijuana, etc.

3.         Do or will applicant’s services feature goods containing tetrahydrocannabinol (THC)? If yes, indicate the amount of THC in the goods

4.         Are any of the goods sold in applicant’s shop primarily intended or designed for use with cannabis or cannabis extracts?

5.         Do or will any of applicant’s services feature goods with a delta-9 tetrahydrocannabinol concentration of more than 0.3 percent on a dry weight basis?

6.         Upon information and belief, do applicant’s goods comply with the Controlled Substances Act?

7.         Upon information and belief, do applicant’s goods comply with the Federal Food, Drug and Cosmetic Act?

 

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 and 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).

 

DESCRIPTION OF MARK REQUIRED

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant 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 an alien head with large eyes and a cigarette.”

 

RESPONSE GUIDELINES

 

Please contact the assigned trademark examining attorney at Tasneem.hussain@uspto.gov 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. 

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

U.S. COUNSEL RULES CHANGES ADVISORY

 

On Augusts 3, 2019, changes to the federal trademark regulations will become effective that require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO. In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

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  

 

 

/Ms. Tasneem Hussain/

Trademark Examining Attorney

Law Office 118

tasneem.hussain@uspto.gov (preferred)

571.272.8273

 

 

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 July 24, 2019 for

U.S. Trademark Application Serial No. 88155472

 

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. 

 

 

/Ms. Tasneem Hussain/

Trademark Examining Attorney

Law Office 118

tasneem.hussain@uspto.gov (preferred)

571.272.8273

 

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 July 24, 2019, 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.”