Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  March 10, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on February 6, 2020.

 

In a previous Office action(s) dated September 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(e)(1) descriptiveness refusal;  CSA refusal because the mark is not in lawful use in commerce and a FDCA refusal because not in lawful use in commerce.  In addition, applicant was required to satisfy the following requirement(s):  amend the identification of goods and/or services, provide additional information.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided and additional information provided.  See TMEP §§713.02, 714.04. 

 

In addition, the following refusal(s) and/or requirement(s) have been withdrawn:  CSA refusal because the mark is not in lawful use in commerce is withdrawn based upon the amended identification of goods; the Descriptiveness Refusal is withdrawn as applicant has amended to the Supplemental Register.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• FDCA Refusal – Not in Lawful Use in Commerce  

 

FDCA Refusal – Not in Lawful Use - FINAL

Registration is still refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907, because the goods are not in compliance with the federal Food, Drug and Cosmetic Act (FDCA). 

As stated in the examiners previous action of September 3, 2019, the application identifies applicant’s goods and/or services as follows: Bottled drinking water containing water-soluble infused CBD.

It is unlawful to introduce food/beverages containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived.  See Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds.

 http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm copy attached herein and previously attached to the action of September 3, 2019. Further see attached: http://www.fda.gov/news-events/press-announcements/fda-warns-15-companies-illegally-selling-various-products-containing-cannabidiol-agency-details.

The enclosed evidence from applicant’s website clearly indicates applicant’s water base beverages contain CBD as an ingredient and therefore the refusal must be maintained and made FINAL. See attached: http://www.cannabiz.biz/p-39-cannawaterx-.html.

SUGGEST HIRING TRADEMARK COUNSEL

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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).

 

 

 

 

 

/Mark T. Mullen/

Trademark Attorney

U.S. Patent and Trademark Office

Law Office 111

(571) 272-9201

mark.mullen@uspto.gov (informal inquiries only)

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 10, 2020 for

U.S. Trademark Application Serial No. 88250842

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Mark T. Mullen/

Trademark Attorney

U.S. Patent and Trademark Office

Law Office 111

(571) 272-9201

mark.mullen@uspto.gov (informal inquirie

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 10, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”