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 88 (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8822994 2/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant respectfully submits that the newly raised Section 2(d) objection based on the mark SOOTHING SODA in U.S. Registration No. 4832104 should be withdrawn. Section 2(d) requires a likelihood of confusion--not the mere possibility of confusion raised in the Office Action. Specifically, the Office Action cites well-worn case law for the proposition that consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark to conclude that the element SOOTHING is dominant in the mark SOOTHING SODA. However, whatever reality underlies the oft repeated (but perhaps not empirically tested) 'first word dominance' proposition, here, the first term SOOTHING is an adjective and modifier of the SODA. As a result, it is reasonable and perhaps even likely that consumers would view the element SODA--which is not shared between the marks--as the truly dominant term in the SOOTHING SODA mark. Moreover, the element SOOTHE in the Applicant's mark is an active verb connoting a general zeitgeist of calm and relief. In contrast, the element SOOTHING is merely communicating a feature or characteristic of the SODA element which it modifies. Further, the marks are not identical in appearance and sound. Rather, they have significant visual and auditory differences. Specifically, there is the clear visual and auditory difference between SOOTHE vs. SOOTHING SODA resulting from the fact that the cited mark contains the unshared SODA element. Moreover, the cited SOOTHING SODA mark enjoys a perhaps pleasing and certainly distinctive two word/two syllable cadence SOO- THING-SO-DA. In stark contrast, Applicant's SOOTHE mark is a single syllable cadence free element. Finally, Applicant's the two O letters in the SOOTHE mark are formed by a distinctive double eight (88) design feature that does not appear in the cited SOOTHING SODA mark. Whether a consumer views this difference as creating an impression of 88 SOOTHE or SOOTHE 88, the upshot is that yet another important point of distinction exists between the marks at issue. Applicant submits that these subtle and important differences in sight, sound and meaning between the marks at issue are such to support the reasonable conclusion that no likelihood of confusion exist. Accordingly, Applicant requests that the likelihood of confusion objection be withdrawn.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Alkaline 88, LLC, a limited liability company legally organized under the laws of Arizona, having an address of

            Suite 255      14646 N. Kierland Blvd.
      Scottsdale, Arizona 85254
      United States

Proposed: Alkaline 88, LLC, a limited liability company legally organized under the laws of Arizona, having an address of
      Suite 255
      14646 N. Kierland Blvd.
      Scottsdale, Arizona 85254
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
REQUEST FOR SUSPENSION - NO BODA FIDE INTENT TO USE IN LAWFUL COMMERCE The Office Action also identified a potential basis to refuse registration under the Food, Drug and Cosmetics Act ("FDCA") based on lack of a bona fide intent to lawfully use the applied for mark in commerce with the identified goods. Applicant respectfully submits that good and sufficient cause exists to suspend further action in this application pending promised regulatory action by the Food and Drug Administration ("FDA"). Specifically, since passage of the 2018 Farm Bill, the FDA has promised regulatory action with respect to application of the FDCA to cannabis-derived products in light of the removal of certain cannabis-derived products from the CSA. Some of the FDA's most recent statements and guidance confirm that the FDA remains committed to providing regulatory guidance. For example, on November 25, 2019, the FDA stated that it is evaluating the regulatory frameworks that apply to certain cannabis-derived products that are intended for non-drug uses, including whether and/or how the FDA might consider updating its regulations, as well as whether potential legislation might be appropriate. The information we have underscores the need for further study and high quality, scientific information about the safety and potential uses of CBD. FDA, "What You Need to Know (And What We're Working to Find Out) About Products Containing Cannabis or Cannabis-derived Compounds, Including CBD", http://protect-eu.mimecast.com/s/pXNaCYvpzFqPExNI2usU_, http://protect-eu.mimecast.com/s/uwdDCZVOAcLyrNDFJF0jt (last visited December 26, 2019). As recently as December 6, 2019, the FDA reconfirmed its commitment to take action and acknowledged "there is increasing interest in the potential utility of cannabis for a variety of medical conditions, as well as research on the potential adverse health effects from use of cannabis" and notably signaled the "FDA is committed to encouraging the development of cannabis-related drug products, including CBD". FDA, "FDA and Cannabis: Research and Drug Approval Process", http://protect-eu.mimecast.com/s/pXNaCYvpzFqPExNI2usU_, http://protect-eu.mimecast.com/s/ZwugC1r10soK2YkFWc_eu (last visited December 26, 2019). It is an understatement to say that there is a keen and growing public interest in cannabisderived products. And, there is no doubt that the FDA is sensitive and in the process of responding to that interest. At minimum, the FDA is and will be reviewing, and in at least some cases approving, a much broader spectrum of products containing cannabis or cannabis-derived compounds. The FDA, however, needs time in carrying out its Congressional mandate. As a result, entities like the Applicant-incentivized by Congress to pursue the protections provided under the Lanham Act-need time to allow the FDA to provide its promised guidance. Under 37 C.F.R. §2.67, an examining attorney has the discretion to suspend an application "for good and sufficient cause". See TMEP ¶716.02. Applicant respectfully submits that "good and sufficient cause" exists to suspend further action in the pending application to allow the FDA to review and revise its regulatory authority and guidance vis-à-vis products containing cannabis or cannabis-derived compounds. Refusing registration at this time, based on potentially premature or inaccurate conclusions as to the FDA's ultimate interpretation and application of the FDCA, creates a significant risk of inconsistent, erroneous and unjust outcomes. Refusing registration at this time also potentially creates the risk of inconsistent, discriminatory, and arbitrary treatment of products containing cannabis or cannabis-derived compounds vis-à-vis the treatment of trademark application for marks used with other unapproved products and services under the FDA's purview (ex. pharmaceuticals and medical devices). Happily, a solution exits- suspension for a reasonable period-to avoid potentially inefficient, inconsistent, erroneous and unjust results. For these reasons as well, Applicant requests that further action on this application be suspended for a "reasonable time" pursuant to 37 C.F.R. §2.67.


The owner's/holder's current attorney information: Brad R. Maurer. Brad R. Maurer of DENTONS BINGHAM GREENEBAUM LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2700 MARKET TOWER
      10 WEST MARKET STREET
      INDIANAPOLIS, Indiana 46204
      United States
The docket/reference number is 130502000012.
      The phone number is 317-635-8900.
      The fax number is 317-236-9907.
      The email address is ptodocket@bgdlegal.com

The owner's/holder's proposed attorney information: Brad R. Maurer. Brad R. Maurer of DENTONS BINGHAM GREENEBAUM LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2700 MARKET TOWER
      10 WEST MARKET STREET
      INDIANAPOLIS, Indiana 46204
      United States
The docket/reference number is 130502000012.
      The phone number is 317-635-8900.
      The fax number is 317-236-9907.
      The email address is ptodocket.us.dbg@dentons.com

Brad R. Maurer submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      Brad R. Maurer
      PRIMARY EMAIL FOR CORRESPONDENCE: ptodocket@bgdlegal.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): brad.maurer@dentons.com

The docket/reference number is 130502000012.
Correspondence Information (proposed):
      Brad R. Maurer
      PRIMARY EMAIL FOR CORRESPONDENCE: ptodocket.us.dbg@dentons.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): brad.maurer@dentons.com

The docket/reference number is 130502000012.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Brad R. Maurer/     Date: 09/23/2020
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 GREENEBAUM 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: 88229942
Internet Transmission Date: Wed Sep 23 08:28:56 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202009230828567700
12-88229942-7506ed413d739355970fa77a1697
b65e187a8c6d779cae9b18edcd030f8cb77322-N
/A-N/A-20200923082108449207