To: | Alkaline 88, LLC (ptodocket@bgdlegal.com) |
Subject: | U.S. Trademark Application Serial No. 88229868 - SOOTHE - 130502000011 |
Sent: | August 16, 2019 03:49:34 PM |
Sent As: | ecom109@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
U.S. Application Serial No. 88229868
Mark: SOOTHE
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Correspondence Address: |
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Applicant: Alkaline 88, LLC
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Reference/Docket No. 130502000011
Correspondence Email Address: |
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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 16, 2019
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.
INTRODUCTION
Summary of Issues:
* Notice of Prior-Filed Pending Application (1)
* Section 1 & 45 Refusal – No Bona Fide Intent to Lawfully Use as of Filing Date – CSA
* Request for Information
* Identification of Goods
NOTICE OF PRIOR-FILED PENDING APPLICATION
The filing date of pending Application Serial No. 88226702 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.
SECTION 1 & 45 REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE AS OF FILING DATE – CANNABIS-SPECIFIED GOODS – BASED ON ID
Registration is refused because applicant does 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/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 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 14, 2018, the date on which the application was filed. The application identifies the following cannabis goods and/or services: Water beverages; drinking water; bottled water; bottled drinking water; purified bottled drinking water; drinking water with vitamins; mineral water; table water; hemp water; fruit flavored hemp water. Applicant’s identification indicates that applicant’s goods contain hemp. Such goods and/or 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). Applicant’s goods and/or services consist of, or include, items or activities that are or were prohibited by the CSA, namely, water/beverages containing hemp. 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 and/or services identified did not potentially comply with applicable federal laws until that date. Because the identified goods and/or services 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.
Applicant is advised that if the filing date is amended as suggested above, applicant will also need to amend the identification of goods consistent with the legal definition of “hemp” under the Agriculture Improvement Act of 2018.
In lieu of amending the filing date, applicant 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.
REQUEST FOR ADDITIONAL INFORMATION
To permit proper examination of the application, applicant must submit additional information about applicant’s goods and/or services. See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e). Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
In addition, applicant must respond to the following:
1. Do or will any of the goods identified in the application include or contain any preparations, oils, extracts, ingredients, derivatives or compounds from cannabis, marijuana, or hemp?
2. Do or will any of the goods identified in the application include or contain cannabidiol (CBD)?
3. If the goods contain CBD, is the CBD added to goods in the form of a purified extract or isolate?
4. If the goods contain CBD, indicate the source of the CBD, e.g., industrial hemp, marijuana, etc.
5. Do or will any of the goods identified in the application include or contain tetrahydrocannabinol (THC)? If yes, indicate the amount of THC in the goods.
6. Do or will any of the goods identified in the application have a delta-9 tetrahydrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis?
7. If applicant has any documentation relative to the THC and CBD content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.
8. Upon information and belief, do applicant’s goods/services comply with the Controlled Substances Act (CSA)?
9. Has applicant received FDA approval for any of its identified goods? If yes, list those goods for which applicant has received FDA approval.
10. If available, please submit a copy of applicant’s FDA-approved new drug application (NDA) or FDA-approved abbreviated new drug application (ANDA) for the identified goods.
11. Upon information and belief, do applicant’s goods comply with the Federal Food, Drug and Cosmetic Act (FDCA)?
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
IDENTIFICATION OF GOODS
The identification as presently worded is too broad, indefinite, and/or requires clarification for proper understanding and classification of the goods. See TMEP §§1402.01, 1402.03.
Whenever possible, applicant must use the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
In this case, the identification requires clarification as specified below. Additional comments and guidance for amending the identification are
provided in bold and/or strikethrough below.
International Class 32
Water beverages; drinking water; bottled water; bottled drinking water; purified bottled drinking water; drinking water with vitamins; mineral water; table water; hemp water {clarify the nature of these goods, e.g., “bottled water containing hemp” or “drinking water containing hemp” etc.}; fruit flavored hemp water {clarify, e.g., “fruit flavored water containing hemp” or “fruit flavored bottled water containing hemp” etc.}
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.
ASSISTANCE
An applicant may check the status of or view documents filed in an application or registration using the Trademark Status and Document Retrieval (TSDR) system. Enter the application serial number or registration number and click on “Status” or “Documents.”
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
How to respond. Click to file a response to this nonfinal Office action
/Deborah Lobo/
Trademark Examining Attorney
Law Office 109
(571) 272-3263
deborah.lobo@uspto.gov
RESPONSE GUIDANCE