Response to Office Action

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)

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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. 88229942 SOOTHE (Stylized and/or with Design, see http://uspto.report/TM/88229942/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_6413294221-20200211160217371855_._soothedesign20837915_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.

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.

        
Serial Number: 88229942
Internet Transmission Date: Fri Feb 14 11:25:55 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020021411255584
0295-88229942-70050149bef26cadbcb5038da5
2e694538c596bd54e7c5647bca22f1d6072b189-
N/A-N/A-20200211160217371855