Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88229868 |
LAW OFFICE ASSIGNED |
LAW OFFICE 109 |
MARK SECTION |
MARK |
http://uspto.report/TM/88229868/mark.png |
LITERAL ELEMENT |
SOOTHE |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
Please see the actual argument text attached within the Evidence section. |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_6413294221-20200211172352682679_._soothewordparent20839595_1.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\882\298\88229868\xml2\ROA0002.JPG |
DESCRIPTION OF EVIDENCE FILE |
1. Request for Suspension |
GOODS AND/OR SERVICES SECTION (current) |
INTERNATIONAL CLASS |
032 |
DESCRIPTION |
hemp water; fruit flavored hemp water |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (proposed) |
INTERNATIONAL CLASS |
032 |
TRACKED TEXT DESCRIPTION |
hemp water; bottled water containing hemp; fruit flavored hemp water; fruit flavored water containing hemp; fruit flavored bottled water containing
hemp |
FINAL DESCRIPTION |
bottled water containing hemp; fruit flavored water containing hemp; fruit flavored bottled water containing hemp |
FILING BASIS |
Section 1(b) |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
RESPONSE TO SECTION 1 AND 45 REFUSAL 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 hereby 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. Applicant hereby specifically states for the record that such a change to
the filing date is being authorized. Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date of
December 20, 2018. RESPONSE TO REQUEST FOR ADDITIONAL INFORMATION 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? -Yes, the goods will contain extracts from industrial hemp. 2. Do or will any of the goods identified in the application include or contain
cannabidiol (CBD)? -Yes, the goods will either contain (1) hemp seed oil, which contains only trace amounts of cannabinoids, or (2) hemp oil that contains CBD. 3. If the goods contain CBD, is the CBD
added to goods in the form of a purified extract or isolate? -No, the goods would either contain hemp seed oil or hemp oil, but not CBD isolate. 4. If the goods contain CBD, indicate the source of
the CBD, e.g., industrial hemp, marijuana, etc. -Industrial hemp. 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. -Any trace amounts of THC in the goods only exist at non-detectable levels. 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? -No. 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. -See attached "Certificate of Analysis". 8. Upon information and belief, do applicant's goods/services comply with
the Controlled Substances Act (CSA)? -Yes. 9. Has applicant received FDA approval for any of its identified goods? If yes, list those goods for which applicant has received FDA approval. -No. 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. -Not applicable. 11. Upon
information and belief, do applicant's goods comply with the Federal Food, Drug and Cosmetic Act (FDCA)? -Yes, with respect to hemp seed oil. With respect to hemp oil (containing CBD), Applicant's
supplier's regulatory counsel has provided Applicant's supplier with a legal opinion letter stating that the introduction of CBD into beverages and other edible products does not run afoul of the
FDCA; Applicant notes, however, this is or may be in opposition to the FDA's current position with respect to CBD. |
MISCELLANEOUS FILE NAME(S) |
ORIGINAL PDF FILE |
mis-6413294221-20200211160217371855_._sootheCOA190829.R-19239-2.CEN-HC_Pail1.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\882\298\88229868\xml2\ROA0003.JPG |
CORRESPONDENCE SECTION (current) |
NAME |
Brad R. Maurer |
FIRM NAME |
DENTONS BINGHAM DOLL LLP |
INTERNAL ADDRESS |
2700 MARKET TOWER |
STREET |
10 WEST MARKET STREET |
CITY |
INDIANAPOLIS |
STATE |
Indiana |
POSTAL CODE |
46204 |
COUNTRY |
US |
PHONE |
317-635-8900 |
FAX |
317-236-9907 |
EMAIL |
ptodocket@bgdlegal.com; brad.maurer@dentons.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
130502000011 |
CORRESPONDENCE SECTION (proposed) |
NAME |
Brad R. Maurer |
FIRM NAME |
DENTONS BINGHAM GREENEBAUM LLP |
INTERNAL ADDRESS |
2700 MARKET TOWER |
STREET |
10 WEST MARKET STREET |
CITY |
INDIANAPOLIS |
STATE |
Indiana |
POSTAL CODE |
46204 |
COUNTRY |
United States |
PHONE |
317-635-8900 |
FAX |
317-236-9907 |
EMAIL |
ptodocket@bgdlegal.com; brad.maurer@dentons.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
130502000011 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Brad R. Maurer/ |
SIGNATORY'S NAME |
Brad R. Maurer |
SIGNATORY'S POSITION |
Attorney of Record, Indiana bar member |
SIGNATORY'S PHONE NUMBER |
317-635-8900 |
DATE SIGNED |
02/14/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Feb 14 11:20:03 EST 2020 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XXX-2
0200214112003955698-88229
868-700f9ddecd5e54f8810e5
4b6d93ffc776393cf21f651ed
fac914a1da6604f962e-N/A-N
/A-20200211182209504233 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88229868 SOOTHE(Standard Characters, see http://uspto.report/TM/88229868/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Please see the actual argument text attached within the Evidence section.
EVIDENCE
Evidence in the nature of 1. Request for Suspension has been attached.
Original PDF file:
evi_6413294221-20200211172352682679_._soothewordparent20839595_1.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 032 for hemp water; fruit flavored hemp water
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
Proposed:
Tracked Text Description: hemp water;
bottled water containing hemp;
fruit flavored
hemp water;
fruit flavored water containing hemp;
fruit flavored bottled water containing hempClass 032 for bottled
water containing hemp; fruit flavored water containing hemp; fruit flavored bottled water containing hemp
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was
entitled, to use the mark in commerce on or in connection with the identified goods/services in the application.
For a collective trademark, collective service mark, or collective membership
mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members
on or in connection with the identified goods/services/collective membership organization.
For a certification mark application: As of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will
not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that
meet the certification standards of the applicant.
The applicant's current correspondence information: Brad R. Maurer. Brad R. Maurer of DENTONS BINGHAM DOLL LLP, is located at
2700 MARKET TOWER
10 WEST MARKET STREET
INDIANAPOLIS, Indiana 46204
US
The docket/reference number is 130502000011.
The phone number is 317-635-8900.
The fax number is 317-236-9907.
The email address is ptodocket@bgdlegal.com; brad.maurer@dentons.com
The applicants proposed correspondence information: Brad R. Maurer. Brad R. Maurer of DENTONS BINGHAM GREENEBAUM LLP, is located at
2700 MARKET TOWER
10 WEST MARKET STREET
INDIANAPOLIS, Indiana 46204
United States
The docket/reference number is 130502000011.
The phone number is 317-635-8900.
The fax number is 317-236-9907.
The email address is ptodocket@bgdlegal.com; brad.maurer@dentons.com
ADDITIONAL STATEMENTS
Miscellaneous Statement
RESPONSE TO SECTION 1 AND 45 REFUSAL 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 hereby 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. Applicant hereby specifically states for the record that such a change to the filing date is being authorized. Applicant has
a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date of December 20, 2018. RESPONSE TO REQUEST FOR ADDITIONAL
INFORMATION 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?
-Yes, the goods will contain extracts from industrial hemp. 2. Do or will any of the goods identified in the application include or contain cannabidiol (CBD)? -Yes, the goods will either contain (1)
hemp seed oil, which contains only trace amounts of cannabinoids, or (2) hemp oil that contains CBD. 3. If the goods contain CBD, is the CBD added to goods in the form of a purified extract or
isolate? -No, the goods would either contain hemp seed oil or hemp oil, but not CBD isolate. 4. If the goods contain CBD, indicate the source of the CBD, e.g., industrial hemp, marijuana, etc.
-Industrial hemp. 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. -Any trace amounts of
THC in the goods only exist at non-detectable levels. 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? -No. 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. -See attached "Certificate of Analysis". 8. Upon information and belief, do applicant's goods/services comply with the Controlled Substances Act (CSA)? -Yes. 9. Has applicant received FDA
approval for any of its identified goods? If yes, list those goods for which applicant has received FDA approval. -No. 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. -Not applicable. 11. Upon information and belief, do applicant's goods comply with the Federal
Food, Drug and Cosmetic Act (FDCA)? -Yes, with respect to hemp seed oil. With respect to hemp oil (containing CBD), Applicant's supplier's regulatory counsel has provided Applicant's supplier with a
legal opinion letter stating that the introduction of CBD into beverages and other edible products does not run afoul of the FDCA; Applicant notes, however, this is or may be in opposition to the
FDA's current position with respect to CBD.
Original PDF file:
mis-6413294221-20200211160217371855_._sootheCOA190829.R-19239-2.CEN-HC_Pail1.pdf
Converted PDF file(s) ( 1 page)
Miscellaneous File1
SIGNATURE(S)
Response Signature
Signature: /Brad R. Maurer/ Date: 02/14/2020
Signatory's Name: Brad R. Maurer
Signatory's Position: Attorney of Record, Indiana bar member
Signatory's Phone Number: 317-635-8900
The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and
any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed
revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter;
or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.
Mailing Address: Brad R. Maurer
DENTONS BINGHAM DOLL LLP
2700 MARKET TOWER
10 WEST MARKET STREET
INDIANAPOLIS, Indiana 46204
Mailing Address: Brad R. Maurer
DENTONS BINGHAM GREENEBAUM LLP
2700 MARKET TOWER
10 WEST MARKET STREET
INDIANAPOLIS, Indiana 46204
Serial Number: 88229868
Internet Transmission Date: Fri Feb 14 11:20:03 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020021411200395
5698-88229868-700f9ddecd5e54f8810e54b6d9
3ffc776393cf21f651edfac914a1da6604f962e-
N/A-N/A-20200211182209504233