UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 4/5/2019

 

 

 

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.  

 

 

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.

 

The requirement(s) apply to all of the goods and/or services listed in the application, unless otherwise stated.

 

 

 

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).

 

 

 

SUMMARY OF ISSUES:

 

• Information.
• Conditional Sections 1 and 45 unlawful use refusal.

 

 

 

INFORMATION ABOUT GOODS/SERVICES REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  The information requested below is reasonably necessary to the examination of the application because it will provide a more in-depth understanding of the mark, goods and/or services, and/or issue(s) at hand.  TMEP §814.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.  Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. 

 

Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

 

The applicant must directly answer the following question(s) and/or provide the information requested:

 

1.  Does ULTRA, CLEAR, ULTRA CLEAR, or ULTRACLEAR have any significance as applied to the goods and/or services other than trademark and/or service mark significance? 

 

2.  Does ULTRA, CLEAR, ULTRA CLEAR, or ULTRACLEAR have any significance in the relevant trade or industry other than trademark and/or service mark significance? 

 

3.  If available, the applicant will provide a website address at which the goods and/or services are offered and/or the mark is used.  If no website is available, then the applicant will state this fact for the record.

 

4.  Do/Will any of applicant's identified goods include or contain marijuana, cannabis, hemp, industrial hemp, marijuana-based preparations, cannabis-based preparations, hemp-based preparations, extracts or derivatives from marijuana, cannabis or hemp, including tetrahydrocannabinol (THC) or cannabidiol (CBD), synthetic marijuana, or any other controlled substance under the CSA?

 

5.         Do/Will any of applicant's identified goods include or contain CBD?

 

6.         Do/Will any of applicant's identified goods include or contain hemp or hemp oil?

 

7.         Do/Will any of applicant's identified goods contain more than a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis?

 

8.         If applicant's goods do or will contain oils, extracts, ingredients or derivatives from the plant Cannabis sativa L which has more than 0.3 percent delta-9 tetrahydrocannabinol on a dry weight basis, identify the part or parts of the plant used in obtaining the oils, extracts, ingredients or derivatives.

 

9.         If the “hemp” is grown in the United States of America, was the hemp used in the goods obtained from an authorized grower or supplier of industrial hemp from a hemp growing pilot program set up under the 2014 Farm Bill?

 

10.       Do or will applicant's identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L?

 

11.       Upon information and belief, do applicant's identified goods and services comply with the Controlled Substances Act?

 

12.  Applicant must submit a written statement indicating whether the goods identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971. See 37 C.F.R. §2.69; TMEP §907.

13.  To permit proper examination of the application, applicant must submit additional product information about applicant’s goods because the nature of such goods is not clear from the present record.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and/or a photograph of the identified goods.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

14.  Will some or all of the goods be clear?

 

 

 

CONDITIONAL UNLAWFUL USE REFUSAL – MARIJUANA RELATED GOODS

 

The Controlled Substances Act, 21 U.S.C. §§801-971 (“CSA”) prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”).  The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.

 

However, a recent change to federal law in the Agricultural Improvement Act of 2018 (2018 Farm Bill) has changed the definition of marijuana under the CSA to exclude industrial hemp which has a delta-9 tetrahydrocannabinol content of no more than 0.3 percent on a dry weight basis.  If the “hemp” has more than 0.3 percent on a dry weight basis, then it is still marijuana under the CSA and goods comprised of ingredients from any part of the plant other than the mature stalks and sterilized seeds of the Cannabis sativa L plant would also be prohibited marijuana.

 

Applicant has indicated that its goods will be compliant with the Controlled Substances Act, 21 U.S.C. §§801-971 (“CSA”).  However, what appears to be the applicant’s website clearly indicates that the applicant has a connection to the marijuana and cannabis industry, and all of its goods may not be compliant with the CSA.  The website indicates that “at Canndescent, we marry the mastery of cannabis cultivation with the canvas of your life....” The website goes on to say that “Canndescent demystifies cannabis flower for new and experienced consumers, naming its strains by effect – Calm, Cruise, Create, Connect and Charge ... you can control your cannabis experience with Canndescent.” See http://www.canndescent.com/.  Furthermore, under its “About Us” page, the website indicates that “Canndescent cultivates cannabis products and develops premium brands that empower adults to maximize each moment and transform their lives.” See http://www.canndescent.com/our-process.  Lastly, under the website product pages, it makes clear that the website is selling marijuana related products. See http://www.canndescent.com/products.  Thus, in the present application, it appears that the applicant has a connection to the marijuana or the cannabis industry.

 

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc. , 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith , 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, the goods and/or services to which the mark is applied must comply with all applicable federal laws. See In re Brown , 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co. , 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.

 

Therefore, if the identified goods, in whole or in part, are not compliant with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971, then registration is refused.[1]  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.

 

 

 

QUESTIONS ABOUT THIS ACTION

 

If the applicant has technical questions about the TEAS response to Office action form, the applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail.  Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving.  You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours. 

 

 

For status inquiries or copies of documents, an applicant may check the status of or view documents filed in the trademark and/or service mark application or registration twenty-four (24) hours a day, seven (7) days a week, using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/.  To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.”  Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated.

 

 

For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC).  TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199.  For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays.  A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.

 

 

If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.

 

 

/Brian Pino/

Examining Attorney

Law Office 114

571.272.9209 Telephone

571.273.9209 Facsimile

Brian.Pino2@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.