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 21, 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.

 

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).

 

 

Summary of Issues:

• Sections 1 and 45 Refusal – No Bona Fide Intent for Lawful Use in Commerce as of Filing Date – CSA Refusal
• Request For Information
• Identification of Goods
• Multiple-Class Application Requirements 

 

Sections 1 and 45 Refusal – No Bona Fide Intent for Lawful Use in Commerce as of Filing Date – CSA Refusal

 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 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 with which the proposed mark will be used were unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971, as of December 4, 2018, the date on which the application was filed.   The application identifies the following cannabis goods:  “personal care products, namely, shampoos and conditioners, facial cleansers, facial moisturizers, facial skin toner, body conditioning and skin treatment lotions, body conditioning and skin treatment creams, anti-aging and stretch mark creams, lotion and cream for hands, nails, skin, face, hair, varicose veins, foot and leg muscles, and joints, depilatory lotions and creams, shaving lotions and creams, skin treatments, namely, lotions and creams for treating dry and damaged skin, anti-aging, firming, anti-wrinkle, stretch marks, under eye and eyelid firming; gels, namely, depilatory gels, shaving gels, shower gels, moisturizing and anti-aging gels, stretch mark gels, oils, body serums, petroleum jelly, sun protection creams, soaps, bar soaps, anti-bacterial bar soaps, body sprays, refresher sprays, body washes, shower gels, bubble bath, scrubs, masks, peels, skin treatments; deodorant and antiperspirant; hair care products, namely, hair spray, styling cream and mousse, and anti-frizz cream and mousse; cologne, cosmetics with cannabinoid content; cannabis preparations and derivative products in the form of personal care preparations for the body, namely, creams, oils, emollients, ointments, rubs, lotions, and salves.”  Such 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). 

 

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 or activities that are or were prohibited by the CSA, namely, “personal care products, namely, shampoos and conditioners, facial cleansers, facial moisturizers, facial skin toner, body conditioning and skin treatment lotions, body conditioning and skin treatment creams, anti-aging and stretch mark creams, lotion and cream for hands, nails, skin, face, hair, varicose veins, foot and leg muscles, and joints, depilatory lotions and creams, shaving lotions and creams, skin treatments, namely, lotions and creams for treating dry and damaged skin, anti-aging, firming, anti-wrinkle, stretch marks, under eye and eyelid firming; gels, namely, depilatory gels, shaving gels, shower gels, moisturizing and anti-aging gels, stretch mark gels, oils, body serums, petroleum jelly, sun protection creams, soaps, bar soaps, anti-bacterial bar soaps, body sprays, refresher sprays, body washes, shower gels, bubble bath, scrubs, masks, peels, skin treatments; deodorant and antiperspirant; hair care products, namely, hair spray, styling cream and mousse, and anti-frizz cream and mousse; cologne, cosmetics with cannabinoid content; cannabis preparations and derivative products in the form of personal care preparations for the body, namely, creams, oils, emollients, ointments, rubs, lotions, and salves.”   Applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with the goods and/or services.  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 or activities that are 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 will be 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. 

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

Request for Information

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. 

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. Do or will the goods include cannabidiol (CBD)?
6. If so, 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. Are or will applicant’s identified goods be marketed as having therapeutic or medicinal properties, e.g., helping to relieve pain, etc.?
9. Are or will any of applicant’s identified goods be taken orally or sublingually?

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).

 

Applicant is advised that, upon consideration of the information provided by applicant in response to the above requirement, registration of the applied-for mark may be refused on the ground that the mark, as used/intended to be used in connection with the identified goods, is not lawful use in commerce because the services are not in compliance with the Food, Drug and Cosmetic Act (FDCA). Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.  Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.   Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987); see 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69; In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993); In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); TMEP §907.

Identification of Goods

 

The identification of goods is indefinite and must be clarified because applicant lists a number of goods that could be medicated or unmedicated.  Applicant also leaves out the purpose or type of several goods such as “oils” “petroleum jelly,” “scrubs” and more.  See below for where the goods are not specified enough and suggestions of how to fix the issue.   See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant has classified “anti-bacterial bar soap” in International Class 3; however, the proper classification is International Class 5.  Therefore, applicant may respond by (1) adding International Class 5 to the application and reclassifying these goods in the proper international class, (2) deleting “anti-bacterial bar soap” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

 

 

If applicant elects to amend the filing date as discussed above, applicant may adopt the following identification, if accurate:  

 

 

Class 3:  Personal care products, namely, shampoos and conditioners, facial cleansers, facial moisturizers, facial skin toner, non-medicated body conditioning and skin treatment lotions, non-medicated body conditioning and skin treatment creams, non-medicated anti-aging and stretch mark creams, non-medicated lotion and cream for hands, nails, skin, face, hair, varicose veins, foot and leg muscles, and joints, depilatory lotions and creams, shaving lotions and creams, non-medicated skin treatments, namely, lotions and creams for treating dry and damaged skin, anti-aging, firming, anti-wrinkle, stretch marks, under eye and eyelid firming; gels, namely, depilatory gels, shaving gels, shower gels, moisturizing and anti-aging gels, stretch mark gels, essential oils, non-medicated body serums, petroleum jelly for cosmetic purposes, sun protection creams, non-medicated soaps, bar soaps, anti-bacterial bar soaps, body sprays, refresher body sprays, body washes, shower gels, bubble bath, body scrubs, skin masks, skin peels, non-medicated skin treatments, namely, {applicant must specify goods, e.g., skin softeners}; deodorant and antiperspirant; hair care products, namely, hair spray, styling cream and mousse, and anti-frizz cream and mousse; cologne, cosmetics with cannabinoid content derived from industrial hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; cannabis derived from industrial hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis preparations and derivative products in the form of personal care preparations for the body, namely, creams, oils, skin emollients, ointments not for medical use, rubs, lotions, and non-medicated salves

 

Class 5: medicated body conditioning and skin treatment lotions, medicated body conditioning and skin treatment creams, medicated anti-aging and stretch mark creams, medicated lotion and cream for hands, nails, skin, face, hair, varicose veins, foot and leg muscles, and joints, medicated skin treatments, namely, lotions and creams for treating dry and damaged skin, anti-aging, firming, anti-wrinkle, stretch marks, under eye and eyelid firming; medicinal oils, medicated body serums for treating {applicant must specify intended body element, e.g., skin}, petroleum jelly for medical purposes, medicated soaps, anti-bacterial bar soaps, medicated skin treatments, namely, {applicant must specify goods, e.g., balms}; cannabis derived from industrial hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis preparations and derivative products in the form of personal care preparations for the body, namely, rubs in the nature of therapeutic muscle rubs and anti-inflammatory salves

 

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.

Multiple-Class Application Requirements

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

Responding to this Action

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. 

 

 

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Leslee Friedman/

Leslee Friedman

Examining Attorney

Law Office 120

leslee.friedman@uspto.gov

571-272-5278

 

 

 

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 21, 2019 for

U.S. Trademark Application Serial No. 88216269

 

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. 

 

 

/Leslee Friedman/

Leslee Friedman

Examining Attorney

Law Office 120

leslee.friedman@uspto.gov

571-272-5278

 

 

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 21, 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.”