United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88248999
Mark: CHERRY JANE
|
|
|
Correspondence Address: |
|
|
Applicant: FRESH BAKED CO.
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
FINAL OFFICE ACTION
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: April 16, 2020
This Office action is in response to applicant’s communication filed on March 2, 2020. Applicant’s amendment to the identification of goods in both classes has been accepted into the record.
PROSECUTION SUMMARY
Applicant was previously required to provide more information about the goods pursuant to 37 CFR Section 2.61(b) and, in particular, respond to questions regarding whether or not the goods in Class 29 would be comprised of cannabidiol (CBD). Applicant has satisfied the inquiry at this time. Applicant is advised, however, that upon the filing of an allegation of use for the goods in Class 29, the issue of whether the goods are registrable under Sections 1 and 45 of the Trademark Act, 15 USC Section 1051, 1127, will be reconsidered and re-evaluated based on the specimens and available evidence and that a refusal based on the goods not being in compliance with the Food, Drug and Cosmetic Act (FDCA) may be made at that time.
Registration was previously refused under Sections 2(a) of the Trademark Act and 2(e)(1) of the Trademark Act, 15 USC Sections 1052(a), 1052(e)(1), based on the mark being deceptive, or deceptively misdescriptive, of a feature, characteristic or ingredient in the goods. The examining attorney has considered applicant’s argument but finds it unpersuasive. Therefore, a final Office Action is being issued.
REGISTRATION REFUSED – SECTION 2(E)(1) – MADE FINAL
Registration is refused and MADE FINAL because the applied-for mark is deceptively misdescriptive of applicant’s goods in both classes. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see In re Hinton, 116 USPQ2d 1051, 1051-52 (TTAB 2015) (holding THCTea deceptively misdescriptive of tea-based beverages not containing THC); In re Schniberg, 79 USPQ2d 1309, 1312 (TTAB 2006) (holding SEPTEMBER 11, 2001 deceptively misdescriptive of history books and entertainment services not pertaining to the events of September 11, 2001); TMEP §1209.04.
Regarding the first part of the test, a mark is misdescriptive when the mark merely describes a significant aspect of the goods that the goods 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).
Evidence was attached to the August 29, 2019 Office Action from GREENRUSH.COM, STICKYGUIDE.COM, SEEDSHERENOW.COM, and EASTBAYTHERAPEUTICS.COM, showing that “Cherry Jane” is a specific strain of Cannabis sativa L which has a generally high delta-9 tetrahydrocannabinol (THC) content and, in any event, well more than the 0.3 percent identified in the application. This evidence shows conclusively that the applied-for mark identifies a specific strain of Cannabis sativa L which is the source plant for both hemp and marijuana.
Varietal or cultivar names for plants are designations used to identify cultivated varieties or subspecies of live plants or agricultural seeds. TMEP §1202.12. They are generic for such plants 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 cherry 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).
In this case, the applicant’s identified goods are manufactured products such as infused edible oils and smoking buds and pre-rolled cigarettes which are goods which often contain ingredients or components derived from specific strains of plant matter such as cannabis in this case. See the evidence from BUD.COM, PURECBDEXCHANGE.COM, TWEEDLEFARMS.COM, SECRETNATURE.COM, JUJUROYAL.COM and PIXELSANDCRUMBS.COM showing edible oils, pre-rolled cigarettes and crushed flower buds for smoking purposes which are derived from marijuana and hemp attached to the August 29, 2019 Office Action. Additional evidence is attached hereto from MEGAMARIJUANASTORE.COM, SHOWGROW.COM, MARCHANDASH.COM and BUDMANOC.COM showing goods such as edible oils, pre-rolls and crushed smoking buds derived from hemp and marijuana being sold in the same facilities. Furthermore, goods such as the smoking materials and oils are often sold to consumer featuring the particular strain name of the smoking material or cannabis used in the extracted oil.
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)).
In this case, the previously attached evidence from GREENRUSH.COM, STICKYGUIDE.COM, SEEDSHERENOW.COM, and EASTBAYTHERAPEUTICS.COM shows that the reasonably prudent consumer is likely to believe the representation because “Cherry Jane” is a particular strain of cannabis which is often used in connection with goods of the type identified herein. In response to the request for information, applicant stated an unequivocal “no” to the question about whether the goods would be comprised of ingredients from “Cherry Jane” strain cannabis. Therefore, based on the evidence discussed above, consumers would find it plausible that oils and smoking products of the typed identified by applicant include “Cherry Jane” strain cannabis.
Applicant has argued that its identified goods are all for legal “hemp” products, that is, Cannabis sativa L which has a THC content of not more than 0.3 percent on a dry weight basis. Applicant argues that because hemp is legal under federal law, it is less regulated than marijuana products which are often sold in licensed or heavily regulated dispensaries under the laws of the particular state. Applicant further argues that consumers are sophisticated enough to know that hemp products are not marijuana products especially when sold in an unregulated or loosely regulated environment. However, applicant’s argument is not persuasive for the fact that applicant has not identified a specific trade channel for these goods. The appropriate trade channels in this case not only include the roadside convenience store in Alabama or Kentucky, but also the marijuana dispensaries and shops, in Denver, Seattle or San Diego. Indeed, licensed and regulated marijuana dispensaries are just as likely, and in fact do, sell lawful hemp related goods and marijuana goods in the same facility. See the attachments SHOWGROW.COM, MARCHANDASH.COM, BUDMANOG.COM and MEGAMARIJUAUNASTORE.COM. This evidence shows that low THC or high CBD hemp goods may actually be sold in very close proximity to the same consumers in the same facilities. Therefore, consumers could easily believe that applicant’s pre-rolls, crushed smoking flowers and edible oils featured under the applied-for mark, “Cherry Jane,” actually contain ingredients and components from the “Cherry Jane” strain of Cannabis sativa L.
Furthermore, hemp buds (Cannabis no more than 0.3 percent THC) are very difficult to distinguish from high THC marijuana buds even in a side-by-side comparison. See e.g., the smoking hemp buds and materials shown in the attachment from PLAINJANE.COM with the marijuana buds shown in the attachments from SHOWGROW.COM, MARCHANDASH.COM, BUDMANOG.COM and MEGAMARIJUANASTORE.COM. Goods such as pre-rolled cigarettes and edible oils are impossible to distinguish as to the component materials as the oil and crushed smoking material from hemp and marijuana look virtually the same. Without sophisticated testing, even law enforcement officials and experts in the industry cannot tell the difference between low THC hemp and high THC marijuana. See the attachments from HEMPINDUSTRYDAILY.COM, NYTIMES.COM, SCIENCEDAILY.COM and GREENENTREPRENUER.COM. For these reasons, the elements of the test for deceptive misdescriptiveness as to a feature, characteristic or ingredient of the goods is met, namely, that pre-rolls, crushed buds and infused oils feature hemp and marijuana are identical in appearance, are often sold through the same retail channels, to consumers actively seeking “Cherry Jane” strain cannabis products. Furthermore, it is plausible that consumers would believe that applicant’s goods are comprised of “Cherry Jane” strain cannabis. Thus, the mark is not registrable on the Principal Register under Section 2(e)(1) of the Trademark Act, 15 USC Section 1052(e)(1).
MARK IS DECEPTIVE – SECTION 2(A) – MADE FINAL
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 []?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods []?
(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 evidence in the record shows that “Cherry Jane” describes a particular strain of high THC Cannabis which is or may be sold in the forms identified in both classes of the application. Consumers would also find it plausible that applicant’s pre-rolled cigarettes, edible oils and crushed flower for smoking would include “Cherry Jane” strain cannabis largely because it is virtually impossible for a consumer in a store or dispensary of such goods to tell what is actually in the pre-roll, oil or is crushed up in small particles for use in pipes, dry oral vaporizers or in packaging for the buds themselves.
The test for determining whether the mark is deceptive under Section 2(a) of the Trademark Act consists of the first two elements of the test for deceptive misdescriptiveness under Section 2(e)(1) of the Trademark Act. Section 2(a) includes a third step which is whether the 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 evidence from ALTERNET and BRIGHTFIELDGROUP attached to the August 29, 2019 Office Action shows that consumers of cannabis products have become more discerning as to the qualities and characteristics of particular strains and are willing to pay a premium for high quality strains of cannabis. For consumers interested in obtaining a high THC strain, whether for medicinal or recreational reasons, the use of the strain name “Cherry Jane” in connection with the identified goods is likely to influence the purchasing decision. Consumers wanting oils, pre-rolls or crushed buds from the “Cherry Jane” strain could be deceived into purchasing low THC hemp products under the false belief that they are purchasing a higher THC strain of cannabis. Thus, the misdescription is likely to affect a significant portion of the relevant consumers’ decision to purchase applicant’s goods.
Even if applicant were to place explanatory matter on applicant’s specimen, packaging or marketing materials that the goods are comprised of low THC hemp, this matter would not overcome deceptiveness. In re E5 LLC, 103 USPQ2d 1578, 1581 (TTAB 2012); see In re Budge Mfg. Co., 857 F.2d 773, 776, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988). The Trademark Act prohibits registration of a mark that comprises or includes deceptive matter regardless of how the mark is used in the marketplace. In re Budge Mfg. Co., 857 F.2d at 776, 8 USPQ2d at 1261; see In re E5 LLC, 103 USPQ2d at 1581.
For the above reasons, the refusal to register under Section 2(a) of the Trademark Act based on the mark being comprised of deceptive matter with respect to the material content of the goods is MADE FINAL.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Jeffrey J Look/
Jeffrey J Look
Trademark Examining Attorney
Law Office 108
Phone: 571-272-1652
Email: jeffrey.look@uspto.gov
RESPONSE GUIDANCE
