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:  August 07, 2019

 

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:

• Search Results: Prior-Filed Pending Application
• CSA Refusal – Goods Not in Legal Commerce
• FDCA Refusal – Goods Not in Legal Commerce
• Identification Requirement
• Request-For-Information Requirement: Cannabis or Hemp Related Goods
• Additional Representative Specimens Requirement

 

Search Results: Prior-Filed Pending Application

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 87703511 precedes applicant’s filing date.  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.

 

Applicant should note and respond to the refusals and requirements below.

 

CSA REFUSAL – GOODS NOT IN LAWFUL COMMERCE

 

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 trademark 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 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 or 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 11/21/2018, the date on which the application was filed.  Applicant’s goods consist of, or include, items or activities that are or were prohibited by the CSA, namely, supplements and topicals containing 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; see also, 21 C.F.R. §1308.11(d)(58).  Applicant’s identified goods 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). 

 

Applicant’s specimen also shows good containing “hemp.” Hemp means and includes marijuana. The goods in the identification and shown in the specimen 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 goods 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 goods identified did not potentially comply with applicable federal laws until that date.  Because the identified goods consist of or include items or activities 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.

 

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.

 

FDCA Refusal – Goods Not in Lawful Commerce

 

In addition to the CSA Refusal above, registration is also refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907, because the goods are not in compliance with the federal Food, Drug and Cosmetic Act (FDCA). 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. 

 

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.

 

The items or activities listed in the application for which use of the mark is alleged involve a per se violation of federal law; the identification of goods includes “CBD” and the attached evidence from applicant’s website also shows that the goods have CBD in them. See In re Brown, 119 USPQ2d at 1352.  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). 

 

As applied to applicant’s supplement goods: Cannabidiol (CBD) is an active ingredient in an FDA-approved drug, Epidiolex®, (see http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm611046.htm copy attached) and is 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.

 

As applied to applicant’s topical goods: 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; see also, 21 C.F.R. §1308.11(d)(58).  Applicant’s identified goods 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). 

 

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 attached.

 

In the present case, the application identifies applicant’s goods as follows: supplements and topicals containing cannabis-derived ingredients and CBD.

 

It is unlawful to introduce food containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements or topical products, 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.

 

In the event applicant is currently seeking FDA approval of the marketing of its goods, applicant may submit a copy of its marketing application and amend the filing basis of the application to claim a bona fide intent to use the mark in commerce under Section 1(b), 15 U.S.C. §1051(b), until such time as applicant’s application is approved, and lawful use may be alleged.   See 37 C.F.R. §§2.34 et seq., TMEP §§806 et seq.  Alternatively, applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. 

 

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 applicant’s goods consist of or include items or activities that are a per se violation of federal law, the applied-for mark as used in connection with such goods is not in lawful use in commerce.

 

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

 

IDENTIFICATION REQUIREMENT

 

Applicant has identified the following goods:

 

Class 5: Herbal tinctures for medical purposes; Acne medications; Animal feed additive for use as a nutritional supplement for medical purposes; Anti-cancer preparations; Anti-inflammatory salves; Anti-sarcoma preparations; Appetite suppressant pills; Balms for medical purposes; Bath preparations for medical purposes; Bath salts and bath preparations for medical purposes; Bath salts for medical purposes; Candy, medicated; Chewing gum for medical purposes; Dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes; Dietary food supplements; Dietary pet supplements in the form of pet treats; Dietary supplements for animals; Feed supplements for pets; Headache treatment preparations; Herb teas for medicinal purposes; Herbal teas for medicinal purposes; Herbs for medicinal purposes; Medical preparations for the treatment of cancer treatment; Medicated balms for treatment of skin; Medicated balms for treatment of lip; Medicated bath preparations; Medicated candies; Medicated candy; Medicated chewing gum; Medicated confectionery; Medicated cosmetics; Medicated serums for treatment of skin; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Medicinal creams for skin care; Medicinal drinks; Medicinal herb extracts; Medicinal herbal extracts for medical purposes; Medicinal herbs; Medicinal mud; Medicinal tea; Medicines for the treatment of gastrointestinal diseases; Mineral food supplements; Mineral, vitamin, or nutritionally enhanced water for medical purposes; Natural herbal supplements; Natural supplements for treating depression and anxiety; Non-medicated additives for animal feed for use as nutritional supplements; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Pharmaceutical preparations and substances for the treatment of infectious diseases, blood disorders, pain, inflammation, sepsis, alopecia, obesity and cognitive disorders; Pharmaceutical preparations for treating skin disorders; Pharmaceutical preparations, namely, antidepressants; Pharmaceutical products for skin care for animals; Pharmaceutical products for the prevention and treatment of cancer; Pharmaceutical skin lotions; Smoking cessation preparations; Sweets for medicinal purposes; Syringes sold filled with CBD extract; Therapeutic pharmaceutical for the treatment of anxiety; Therapeutic pharmaceutical for the treatment of sports cream; Vitamin supplements; Vitamins and dietary food supplements for animals

 

The wording “Medical preparations for the treatment of cancer treatment” in the identification of goods is indefinite and must be clarified because of the duplicated word “treatment.’  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant should simply amend to the following wording, if accurate:  “Medical preparations for the treatment of cancer.”

 

The wording “Therapeutic pharmaceutical for the treatment of sports cream” in the identification of goods is indefinite; this appears to conflate two separate concepts together: “Therapeutic pharmaceutical for the treatment of pain” and “sports cream for relief of pain.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may keep these concepts together and clarify the wording as, if accurate:  “Therapeutic pharmaceutical in the nature of sports cream for the treatment of pain.”

 

If accurate, applicant may adopt the suggestion below, which reflects all of the necessary changes discussed above and shows added or amended language underlined for clarity:

 

Class 5: Herbal tinctures for medical purposes; Acne medications; Animal feed additive for use as a nutritional supplement for medical purposes; Anti-cancer preparations; Anti-inflammatory salves; Anti-sarcoma preparations; Appetite suppressant pills; Balms for medical purposes; Bath preparations for medical purposes; Bath salts and bath preparations for medical purposes; Bath salts for medical purposes; Candy, medicated; Chewing gum for medical purposes; Dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes; Dietary food supplements; Dietary pet supplements in the form of pet treats; Dietary supplements for animals; Feed supplements for pets; Headache treatment preparations; Herb teas for medicinal purposes; Herbal teas for medicinal purposes; Herbs for medicinal purposes; Medical preparations for the treatment of cancer; Medicated balms for treatment of skin; Medicated balms for treatment of lip; Medicated bath preparations; Medicated candies; Medicated candy; Medicated chewing gum; Medicated confectionery; Medicated cosmetics; Medicated serums for treatment of skin; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Medicinal creams for skin care; Medicinal drinks; Medicinal herb extracts; Medicinal herbal extracts for medical purposes; Medicinal herbs; Medicinal mud; Medicinal tea; Medicines for the treatment of gastrointestinal diseases; Mineral food supplements; Mineral, vitamin, or nutritionally enhanced water for medical purposes; Natural herbal supplements; Natural supplements for treating depression and anxiety; Non-medicated additives for animal feed for use as nutritional supplements; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Pharmaceutical preparations and substances for the treatment of infectious diseases, blood disorders, pain, inflammation, sepsis, alopecia, obesity and cognitive disorders; Pharmaceutical preparations for treating skin disorders; Pharmaceutical preparations, namely, antidepressants; Pharmaceutical products for skin care for animals; Pharmaceutical products for the prevention and treatment of cancer; Pharmaceutical skin lotions; Smoking cessation preparations; Sweets for medicinal purposes; Syringes sold filled with CBD extract; Therapeutic pharmaceutical for the treatment of anxiety; Therapeutic pharmaceutical in the nature of sports cream for the treatment of pain; Vitamin supplements; Vitamins and dietary food supplements for animals

 

In addition to the identification requirement discussed above, if applicant elects to amend its filing date to December 20, 2918 as discussed above, applicant will also need to amend the identification of goods to comply with the new legal definition of “hemp” under the Agricultural Improvement Act of 2018. The following is suggested, if accurate: “… [relevant goods] containing only CBD derived from industrial hemp with a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis.” Applicant should note that amending the identification as suggested above will not overcome the FDCA refusal. See 21 U.S.C. §§801-971.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

REQUEST-FOR-INFORMATION REQUIREMENT: CANNABIS OF HEMP RELATED GOODS 

 

To permit proper examination of the application, applicant must submit additional information about the goods.  See 37 C.F.R. §§2.61(b), 2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-52 (TTAB 1968); TMEP §§814, 907.  The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods.  If such materials are not available, applicant must provide a detailed factual description of the goods.  Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application. 

 

However, a recent change to federal law in the Agricultural Improvement Act of 2018 (2018 Farm Bill) has changed the definition of marijuana under the CSA to exclude industrial hemp which has a delta-9 tetrahydrocannabinol content of no more than 0.3 percent on a dry weight basis.  If the “hemp” has more than 0.3 percent on a dry weight basis, then it is still marijuana under the CSA and goods comprised of ingredients from any part of the plant other than the mature stalks and sterilized seeds of the Cannabis sativa L plant would also be prohibited marijuana.

 

In addition, applicant must submit a written statement indicating whether the goods  identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971. See 37 C.F.R. §2.69; TMEP §907. The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”).

 

Finally, applicant must provide written responses to the following questions:

 

1. Do or will applicant’s identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)?
2. If the answer to Question 1 is “yes,” does the hemp used or to be used in applicant’s goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?
3. If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.
4. If applicant’s goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives.
5. Does applicant sell goods under the applied-for mark that do not include cannabidiol (CBD)?
6. Of applicant’s goods that do contain CBD, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
7. Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L?
8. Please provide the URL for the screenshot shown in the specimen, as well as any other webpages where applicant is selling its goods.

 

Failure to satisfactorily respond to a requirement for information is a ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Garden of Eatin’ Inc., 216 USPQ 355, 357 (TTAB 1982); TMEP §814. 

 

Please note that merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to the above requirement and is insufficient to make the relevant information properly of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

ADDITIONAL REPRESENTATIVE SPECIMENS REQUIREMENT

 

Applicant has applied for a multitude of goods in International Class 5.  Note that if an identification is so broad that it encompasses a wide range of products and services, the applicant must submit evidence that it actually uses the mark on a wide range of products and services to obtain registration. See In re Air Products & Chemicals, Inc., 192 USPQ 84, recon. denied 192 USPQ 157 (TTAB 1976); 37 CFR 2.61(b); TMEP §§904.01(a) and 1402.03.

 

Applicant must submit a proper specimen for each of the following groups of goods:

 

(1)    anti-cancer preparations

(2)    bath preparations for medical purposes

(3)    medicated candy

(4)    dietary supplements for animals

(5)    medicinal herbs

(6)    medicinal mud

(7)    pharmaceutic product, particularly anti-depressants, for the treatment of anxiety, sports creams, infectious diseases, blood disorders, obesity and cognitive disorders

 

These specimens need not be supported by a declaration.

 

If applicant is unable to provide specimens to support use of these items, applicant must delete these entries, or amend the filing basis for those goods/services that were not in proper use as of the application filing date to an intent to use basis under Section 1(b).  This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods/services at a subsequent date. For an overview of this response option and instructions on how to satisfy this option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.

 

Per Policy, please note that you are not limited to requesting only six items from an ID – because this is a type of RFI you can technically request every single item within an ID if you wish. Policy has also indicated that if you do use this FP in any capacity, you should update your template to reflect the one copied into this email for accuracy and consistency purposes.  

 

RESPONSE & ASSISTANCE: 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.  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  

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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 August 07, 2019 for

U.S. Trademark Application Serial No. 88202196

 

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. 

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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 August 07, 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.”