United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88248999
Mark: CHERRY JANE
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Correspondence Address: |
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Applicant: FRESH BAKED CO.
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Reference/Docket No. N/A
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 29, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) 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).
MARK IS DECEPTIVELY MISDESCRIPTIVE – SECTION 2(E)(1)
Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods and/or services that the goods and/or services could plausibly possess but in fact do not. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006); In re Phillips-Van Heusen, 63 USPQ2d 1047, 1048 (TTAB 2005); see TMEP §1209.04. To be merely descriptive, a mark must immediately convey knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
In this case the mark is CHERRY JANE which is a particular strain of marijuana. See the attachments from GREENRUSH.COM, STICKYGUIDE.COM, SEEDSHERENOW.COM, and EASTBAYTHERAPEUTICS.COM. Marijuana is often combined into pre-rolled cigars and cigarettes, sold as crushed flowers for smoking as well as infused into edible oils. See the attachments from LEAFLY.COM and WIKIPEDIA.ORG (articles about cannabis infused edible oils) and LEAFLY.COM and BUD.COM showing pre-rolled cannabis cigarettes and cigars.
Here the applied-for mark CHERRY JANE identifies a specific strain of Cannabis sativa L., the source plant for marijuana and hemp. It is, therefore, descriptive of a type or variety of cannabis. Varietal or cultivar names are designations used to identify cultivated varieties or subspecies of live plants or agricultural seeds. TMEP §1202.12. They are generic and cannot be registered as trademarks because they are the common descriptive names of plants or seeds by which such varieties are known to the U.S. consumer. Id. Moreover, a consumer “has to have some common descriptive name he can use to indicate that he wants one [particular] variety of apple tree, rose, or whatever, as opposed to another, and it is the varietal name of the strain which naturally and commonly serves this purpose.” In re Pennington Seed, Inc., 466 F.3d 1053, 1057, 80 USPQ2d 1758, 1761 (Fed. Cir. 2006) (quoting In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1036 (TTAB 1979)); see In re Delta & Pine Land Co., 26 USPQ2d 1157, 1159 n.4 (TTAB 1993).
Applicant’s goods include flower buds for smoking, pre-rolled joints or cigarettes as well as infused edible oils. A term that describes an ingredient of the goods is merely descriptive. TMEP §1209.01(b); see In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (holding NOPALEA merely descriptive of dietary and nutritional supplements containing nopal juice); In re Keebler Co., 479 F.2d 1405, 178 USPQ 155 (C.C.P.A. 1973) (holding RICH ‘N CHIPS merely descriptive of chocolate chip cookies); In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (C.C.P.A. 1973) (holding CREME DE MENTHE merely descriptive of candy); In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990) (holding OATNUT merely descriptive of bread containing oats and hazelnuts); Flowers Indus., Inc. v. Interstate Brands Corp., 5 USPQ 2d 1580 (TTAB 1987) (holding HONEY WHEAT merely descriptive of bread containing honey and wheat). Because CHERRY JANE identifies a strain of cannabis, it is merely descriptive of infused oils and smoking materials comprised of this variety of the plant.
Regarding the second part of the test, the Board has applied the reasonably prudent consumer test in assessing whether consumers are likely to believe the misrepresentation. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).
Applicant has identified goods in Class 29 and 34 as edible oils, pre-rolls and crushed flower derived from hemp, a member of the Cannabis sativa L family which applicant has indicated in the identification of goods as being compliant with the Agricultural Improvement Act of 2018 (also known as the 2018 Farm Bill). The AIA provided a statutory definition of “hemp” as being all parts of the Cannabis sativa L family which has a delta-9 tetrahydrocannabinol (THC) content of less than 0.3 percent on a dry weight basis. In short, in order to be lawful under federal law, the goods must have a low THC content.
However, the applied-for mark, CHERRY JANE, is a particular strain of Cannabis sativa L with a substantially higher THC content. As such, Cherry Jane strain cannabis does not fall within the AIA’s definition of industrial hemp but is marijuana instead.
In this case, the attached evidence from LEAFLY.CO, WIKIPEDIA.ORG and BUD.CO shows that the reasonably prudent consumer is likely to believe the representation because edible oils and pre-rolls and crushed flower for smoking are exactly the kinds of goods which can easily be made from marijuana or hemp. See the attachments from PURECBDEXCHANGE.COM, TWEEDLEFARMS.COM, SECRETNATURE.COM, JUJUROYAL.COM and PIXELSANDCRUMBS.COM. This evidence shows the goods identified by the applicant can easily be derived from either marijuana or hemp and that a consumer encountering such goods in the marketplace would not likely be able to distinguish a high THC product from a low THC product simply from looking at it. In short, because CHERRY JANE is a high THC strain of cannabis, the mark is deceptively misdescriptive of products derived from a low THC strain of cannabis. Therefore, the mark is deceptively misdescriptive of a feature, characteristic or ingredient of the goods.
MARK IS DECPTIVE – SECTION 2(A)
A term is deceptive when all three of the following criteria are met:
(1) Is the term misdescriptive of the character, quality, function, composition, or use of the goods [and/or services]?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods [and/or services]?
(3) If so, is the misdescription likely to affect the purchasing decision of a significant portion of relevant consumers?
In re Tapco Int’l Corp., 122 USPQ2d 1369, 1371 (TTAB 2017) (citing In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988)); TMEP §1203.02(b); see also In re Spirits Int’l, N.V., 563 F.3d 1347, 1353, 1356, 90 USPQ2d 1489, 1492-93, 1495 (Fed. Cir. 2009) (holding that the test for materiality incorporates a requirement that a “significant portion of the relevant consumers be deceived”).
As discussed above, the term CHERRY JANE identifies a specific strain of generally high THC cannabis which is a basic ingredient of infused edible oils and smoking materials such as crushed flower and pre-rolls. Applicant has identified its goods as being derived from low THC hemp (cannabis with a THC content of less than 0.3 percent). The evidence shows that high and low THC cannabis is often used in the type of goods identified by applicant and that consumers who are familiar with the CHERRY JANE strain of marijuana would find it plausible that applicant’s goods are derived from or contain this strain of cannabis in applicant’s goods.
A misdescriptive ingredient or component would be material to the purchasing decision of a significant portion of the relevant consumers when the evidence demonstrates that the misdescription would make the product or service more appealing or desirable to prospective purchasers. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013) (citing In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)); TMEP §1203.02(d).
In the present case, the attached evidence from ALTERNET and BRIGHTFIELDGROUP shows consumers of cannabis products have become more discerning and are often willing to pay more for high quality strains of cannabis. For consumers interested in obtaining high THC cannabis, whether for medicinal or recreational reasons, the use of the wording CHERRY JANE, a known high THC cannabis strain, to identified products comprised of low or no THC hemp oils and smoking products is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods on the false or mistaken belief that the goods contain high THC strain cannabis.
REQUEST FOR INFORMATION – HEMP RELATED GOODS
To permit proper examination of the application, applicant must submit additional information about the goods and/or services. 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 and/or services. If such materials are not available, applicant must provide a detailed factual description of the goods and/or services. Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods and/or services identified in the application.
In addition, applicant must submit a written statement indicating whether the goods/services identified in the application comply with the Food, Drug and Cosmetic Act (FDCA). 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the Federal Food, Drug and Cosmetic Act). See 37 C.F.R. §2.69; TMEP §907. Finally, applicant must provide written responses to the following questions:
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. 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 wording “derived directly from the Cannabis sativa L. also known as "Hemp" in compliance with the Agriculture Improvement Act of 2018 and relevant state and United States of America federal laws and regulations” in the identification of goods is indefinite and must be clarified because it is vague as to which specific laws and regulations may be applicable to the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Since applicant made reference to the Agricultural Improvement Act of 2018, applicant may change this wording to the statutory definition of hemp in the AIA, namely, “Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) concentration of no more than 0.3 percent on a dry weight basis.”
As for the term “pre-rolls” and “flower” in Class 34, these terms are indefinite and fail to identify specific goods. Applicant may change these terms to “pre-rolled cigarettes” or “flowers for smoking” if accurate.
Applicant may substitute the following wording, if accurate: (proposed changes in boldface.)”
CLASS 29 – Edible oil including cannabinoids derived directly from Cannabis sativa L. with a delta-9 tetrahydrocannabinol (THC) concentration of no more than 0.3 percent on a dry weight basis;
CLASS 34 – Pre-rolled cigarettes and cigars; crushed flower for smoking; all of the foregoing derived directly from Cannabis sativa L. with a delta-9 tetrahydrocannabinol (THC) concentration of no more than 0.3 percent on a dry weight basis;
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.
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.
How to respond. Click to file a response to this nonfinal Office action
/Jeffrey J Look/
Jeffrey J Look
Trademark Examining Attorney
Law Office 108
Phone: 571-272-1652
Email: jeffrey.look@uspto.gov
RESPONSE GUIDANCE
