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. 88277675
Mark: DOSE
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Correspondence Address: |
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Applicant: Rapid Dose Therapeutics Inc.
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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: September 12, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
U.S. LICENSED ATTORNEY REQUIREMENT
Applicant must be represented by a U.S.-licensed attorney. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019) An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
To appoint a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
FILING BASIS REQUIRED
Applicant has not specified a filing basis in the application. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §§2.32(a)(5), 2.34(a); TMEP §806. Accordingly, applicant must (1) amend the application to specify clearly at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted.
An applicant may add one or more of the following four bases to an application after filing:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A foreign registration of the same mark for the same goods and/or services in an applicant’s country of origin, under Section 44(e); and/or
(4) A claim of priority based on an earlier-filed foreign application of the same mark for the same goods and/or services, which is filed within six months after the filing date of the foreign application, under Section 44(d).
Although an applicant may assert more than one basis, an applicant may not assert both Section 1(a) for use and Section 1(b) for intent to use for identical goods and/or services. 37 C.F.R. §2.34(b); TMEP §806.02(b).
For more information about the different legal requirements for each basis, for submitting more than one basis, and for instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.
Applicant should note the grounds for refusal of registration below.
REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark, is refused because of a likelihood of confusion with the mark, in U.S. Registration Nos. 2628610; 4760615; 4191443; 4482740. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s applied for mark is DOSE. Registrants’ marks are as follows:
SMARTDOSE in Reg. no. 2628610
PHARMDOSE in Reg. no. 4760615
DOSE in Reg. no. 4191443
DOSE in Reg. no. 4482740
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods/services, and similarity of the trade channels of the goods/services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the present case, applicant's applied-for mark, DOSE is either identical in its entirty to the registrants’ marks or identical in part to SMARTDOSE and PHARMDOSE. Although applicant’s mark does not contain the entirety of those latter registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks, or identical, and does not add any wording that would distinguish it from that mark.
Consequently, the marks are confusingly similar and consumers will believe they identify the same source.
Relatedness of the Goods/Services
With respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Applicant’s identified goods and services are:
Equipment for the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Equipment for the development of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Equipment for research in the area of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Laboratory equipment related to pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Turnkey operations in the field of the manufacturing of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Slurry used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Constituents used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery platforms for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery technologies for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Pharmaceutical products, orally administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, wellness products, wafers, orally dissolvable strips, all for companion animals; Consulting in the field of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Carbon dioxide infusion systems; Oxygen infusion systems; Consulting services in the field of carbon dioxide infusion systems; Consulting services in the field of oxygen infusion systems
Registrants’ identified goods/services are as follows:
Reg. no. 2628610 - “component parts for machines for manufacturing semiconductors”
Reg. no. 4760615 – “Machines for packaging of patient-specific oral unit doses of pharmaceutical liquids into syringes, cups, and other containers” and “Machines for dispensing pre-determined patient-specific oral unit dosages of medications, namely, pharmaceutical liquids, into syringes”
Reg. no. 4191443 – “Pharmaceutical drug development services in the field of determining the solubility of drug formulations and components thereof”
Reg. no. 4482740 – “Non-alcoholic beverages containing vitamins, namely, energy drinks”
In this case, the application uses broad wording to describe all of its goods and services, which presumably encompasses all goods and/or services of the type described, including registrants’ more narrow goods/services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods/services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
Moreover, case law states that there must be a finding of likelihood of confusion when there is likelihood of confusion involving any item that comes within the identification of [services] in the application. In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Upon encountering DOSE and any of the registered marks, both used on the respective identified goods/services, consumers are likely to be confused and mistakenly believe that they emanate from a common source. Therefore, registration must be refused under Trademark Act Section 2(d).
Applicant should note the additional potential grounds for refusal below under Section 2(d).
ADVISORY: PRIOR-FILED APPLICATIONS
The filing date of pending U.S. Application Serial Nos. 88027710; 88186294; 88194439; 86661157; 79260399 precedes applicant’s filing date. See attached referenced applications. If the marks in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note the second grounds for refusal below.
REFUSAL UNDER SECTION 2(e)(1) – MARK IS MERELY DESCRIPTIVE
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods/services, not in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061, 1062-63 (TTAB 1999) (finding DOC in DOC-CONTROL would refer to the “documents” managed by applicant’s software rather than the term “doctor” shown in a dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242, 1243-44 (TTAB 1987) (finding CONCURRENT PC-DOS and CONCURRENT DOS merely descriptive of “computer programs recorded on disk” where the relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).
“Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Additionally, a mark does not need to be merely descriptive of all the goods/services specified in an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). "A descriptiveness refusal is proper 'if the mark is descriptive of any of the goods for which registration is sought.'" In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
In the present case, applicant has applied to register the mark DOSE for use in connection with “Equipment for the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Equipment for the development of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Equipment for research in the area of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Laboratory equipment related to pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Turnkey operations in the field of the manufacturing of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Slurry used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Constituents used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery platforms for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery technologies for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Pharmaceutical products, orally administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, wellness products, wafers, orally dissolvable strips, all for companion animals; Consulting in the field of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Carbon dioxide infusion systems; Oxygen infusion systems; Consulting services in the field of carbon dioxide infusion systems; Consulting services in the field of oxygen infusion systems”. The mark merely describes a feature/characteristic/purpose of the broadly stated identified the goods/services, namely, that the broadly stated goods/services relate to “[a] specific quantity of a therapeutic agent, such as medicine, prescribed to be taken at one time or at stated intervals could include a game or aspects of a game known as egg roulette” or an ingredient added to impart flavor or strength. See attached entry from The American Heritage Dictionary.
Accordingly, the proposed mark RISKMAP is merely descriptive, and registration is properly refused on the Principal Register under Section 2(e)(1). In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods and, therefore, incapable of functioning as a source-identifier for applicant’s goods. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017); see TMEP §§1209.01(c) et seq., 1209.02(a). Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended. See TMEP §1209.01(c).
Applicant should note the additional grounds for refusal below.
CSA REFUSAL
Due to the breadth and lack of clarity of the identification of goods and services, this refusal may be amended and/or obviated upon an identification amendment.
Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce with respect to goods and/or services that are not lawful under federal law. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.
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.
Here, the items or activities with which the proposed mark will be used include those that are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. The application identifies the following cannabis goods and/or services:
Equipment for the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Equipment for the development of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Equipment for research in the area of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Laboratory equipment related to pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Turnkey operations in the field of the manufacturing of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Slurry used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Constituents used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery platforms for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery technologies for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Pharmaceutical products, orally administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, wellness products, wafers, orally dissolvable strips, all for companion animals; Consulting in the field of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Carbon dioxide infusion systems; Oxygen infusion systems; Consulting services in the field of carbon dioxide infusion systems; Consulting services in the field of oxygen infusion systems
Such goods and/or services are broad enough to include products produced from “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16)(definition of “marihuana” – commonly referred to as “marijuana”). Moreover, applicant’s identification indicates “cannabis related products”.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976). Applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with such goods and/or services. See In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016)(“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); TMEP §907.
On December 20, 2018, the CSA was amended to remove hemp from the definition of marijuana and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). The goods and/or services identified did not potentially comply with applicable federal laws until that date. Because the identified goods and/or services consist of or include items or activities that are prohibited under the Controlled Substances Act, the applicant did not have a valid basis for filing the application. Nevertheless, to the extent the applicant’s goods will be derived from cannabis plants that meet the current statutory definition of hemp, the goods may presently be lawful.
Therefore, in order to overcome this refusal, applicant must amend the identification of goods and services to specify that all cannabis-containing items are “solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.” The applicant may also present arguments and evidence against this refusal.
However, applicant should note the amendment noted above will not obviate the FDCA Refusal below.
FDCA REFUSAL
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS/SERVICES SPECIFIED THEREIN
Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.
This refusal issues when “(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-relevant activities involve a per se violation of a federal law.” In re Brown, 119 USPQ2d at 1351 (citing Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988); Santinine Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981)); TMEP §907.
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 to which the mark will be 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.
The application identifies items or activities that involve a per se violation of federal law. See In re Brown, 119 USPQ2d at 1352. The Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food or beverage to which has been added a drug or a biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public. 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).
Cannabidiol (CBD) is an active ingredient in an FDA-approved drug, Epidiolex®, (see http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm611046.htm copy attached) and is the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements. See FDA Regulation of Cannabis and Cannabis-derived Products: Questions and Answers http://www.fda.gov/NewsEvents/PublicHealthFocus/ucm421168.htm copy attached. The Drug Enforcement Administration (DEA) placed Epidiolex® on schedule V of the CSA on September 27, 2018. Nevertheless, marijuana and CBD derived from marijuana remain unlawful. No other cannabis-derived drug products have been approved by the FDA. Under the Food, Drug and Cosmetics Act (FDCA), any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug. 21 U.S.C. § 321(g)(1).
In the present case, the application identifies the following goods and/or services for which applicant has alleged a bona fide intent to use in commerce:
Turnkey operations in the field of the manufacturing of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Slurry used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Constituents used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery platforms for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery technologies for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Pharmaceutical products, orally administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, wellness products, wafers, orally dissolvable strips, all for companion animals; Carbon dioxide infusion systems; Oxygen infusion systems
It is unlawful to introduce food or 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. In addition, an unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers http://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers copy attached.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) Because introduction of such goods into commerce was not lawful as of the filing date, applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with such goods and/or the identified services. See e.g. In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.
REQUEST FOR INFORMATION
To permit proper examination of the application, applicant must submit additional information about the goods and/or services. 37 C.F.R. §§2.61(b), 2.69; Cf. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing Patent Rule 1.105(a)(1), which is the equivalent of Trademark Rule 2.61(b)); 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. Furthermore, under the FDCA, any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug. 21 U.S.C. § 321(g)(1) An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j).
Finally, applicant must provide written responses to the following questions:
1. Do or will the goods include cannabidiol (CBD)?
2. If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
3. Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L (also known as hemp, marijuana or cannabis)?
4. Is applicant currently seeking FDA approval of the marketing of its goods identified in the application?
5. If the answer to Question 4 is “yes,” please provide a copy of such application.
Failure to satisfactorily respond to a requirement for information is a ground for refusing registration. See In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (affirming refusal of registration because applicant’s appeal brief failed to address the relevant refusals, including a refusal based on noncompliance with a requirement for information); In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (“Failure to comply with a request for information is grounds for refusal,” where applicant provided equivocal responses to examining attorney’s questions and did not address this issue in its brief). Applicant’s failure to respond to an information requirement may result in an adverse evidentiary inference being drawn regarding applicant’s goods. Id. at 1651; In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); 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).
REQUIREMENT FOR ACCEPTABLE IDENTIFICATION
As an initial matter, The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
In the present case, the wording in the identification of goods/services is either too broad or indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant should also note of the following:
The identification for “Carbon dioxide infusion systems; Oxygen infusion systems” must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d). For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5, and “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7. Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d).
“Consulting services” are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42. TMEP §1402.11(e). Thus, applicant must clarify and reclassify the accordingly.
Applicant should note that any wording in bold below offers guidance and/or shows changes being proposed for the identification of goods and/or
services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this:
strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined.
Class 001: Chemical slurries in the nature of {describe ingredients of slurry} used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Constituents in the nature of emollients used an ingredient used in the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery technologies in the nature of chemical additives for use in the manufacture pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions
Class 003: orally dissolvable strips in the nature of a breath freshening preparation
Class 007: Equipment, namely, {indicate the type of equipment in Class 007 e.g., vaccum distillation equipment for machinery, mechanical and hydraulic lifts, etc.} for the manufacture of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Equipment, namely, {indicate the type of equipment in Class 007 e.g., vaccum distillation equipment for machinery, mechanical and hydraulic lifts, etc.} for the development of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Delivery platforms, namely, {indicate the type of delivery platform in Class 007 e.g., power-operated hand-held dispenser for attachment to liquid containers for use in dispensing liquids} for pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions
Class 009: Laboratory equipment, namely, {indicate the type of laboratory equipment in Class 009 e.g., microscope slides and test tubes} for research in the area of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Laboratory equipment, namely, {indicate the type of laboratory equipment in Class 009 e.g., microscope slides and test tubes} for related to pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions;
Class 035: Turnkey operations in the nature of turnkey retail start-up services, namely, coordination and assumption of responsibility for all aspects of the store-opening process of others in the field of the manufacturing of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions;
Class 005: Pharmaceutical products, namely, {indicate type of products in Class 005}; cannabis related products, namely, {indicate type of products in Class
005}; orally administrable products, namely, {indicate type of products in Class 005}; dermatologically administrable products, namely, {indicate type of products in Class 005};
nutritional products, namely, {indicate type of products in Class 005 e.g., dietary supplements}; nutraceuticals for use as a dietary supplement for {specify purpose or the intended
benefit, e.g., promoting digestion, for liver support, etc.}; nutraceutical products, namely, {indicate type of products in Class 005}; biologically ingestible products for mammals,
namely, {indicate type of products in Class 005}; vitamin related products, namely, vitamins; orally administrable compositions, namely, {indicate type of products in Class 005};
rapid release carriers, namely, {indicate type of products in Class 005}; nanonized therapeutics, namely, {indicate type of products in Class 005}; caffeine based products, namely,
{indicate type of products in Class 005 e.g}; physical energy enhancing products, namely, {indicate type of products in Class 005}; mental energy enhancing products, namely, {indicate
type of products in Class 005}; wellness products, namely, {indicate type of products in Class 005}; sleep enhancing products, namely, {indicate type of products in Class 005}; dietary
supplements in the form of capsules; antibotic ointments; medicated lozenges, tablets, capsules, solutions [too broad as
to the nature of the goods; no suggestion can be made]; Pharmaceutical products, namely, {indicate type of products in Class 005}; orally administrable products, namely, {indicate type
of products in Class 005}; nutritional products, namely, {indicate type of products in Class 005 e.g., dietary supplements}; nutraceuticals for use as a dietary supplement for {specify
purpose or the intended benefit, e.g., promoting digestion, for liver support, etc.}; nutraceutical products, namely, {indicate type of products in Class 005}; biologically ingestible
products for mammals, namely, {indicate type of products in Class 005}; vitamin related products, namely, vitamins; orally administrable compositions, namely, {indicate type of
products in Class 005}; rapid release carriers, namely, {indicate type of products in Class 005}; nanonized therapeutics, namely, {indicate type of products in Class 005}; wellness
products, , namely, {indicate type of products in Class 005}; orally dissolvable strips [no suggestion can be made as to the nature of these goods for companion
animals], all for companion animals
Class 030: wafers; bubble gum
Class 031: wafers in the nature of pet treats for companion animals
Class 044: Consulting in the field of health and wellness related to the use of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Consulting in the field of health related to the use of pharmaceutical products, cannabis related products, orally administrable products, dermatologically administrable products, nutritional products, nutraceuticals, nutraceutical products, biologically ingestible products for mammals, vitamin related products, orally administrable compositions, rapid release carriers, nanonized therapeutics, caffeine based products, physical energy enhancing products, mental energy enhancing products, wellness products, sleep enhancing products, wafers, gum, lozenges, orally dissolvable strips, tablets, capsules, ointments, solutions; Consulting services in the field of health and wellness related of carbon dioxide infusion systems; Consulting services in the field of health related to oxygen infusion systems
Carbon dioxide infusion systems; Oxygen infusion systems [unclear as to the nature of the goods. Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services. In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any
alternative wording. See TMEP §1402.01(e)].
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.
MULTI-CLASS APPLICATION REQUIREMENTS
The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 9 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
GUIDANCE ON RESPONDING TO THIS LETTER
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Assistance
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the 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 the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
/Heather A. Sales/
Examining Attorney
Law Office 122
(571) 272-7835
Heather.Sales@uspto.gov
RESPONSE GUIDANCE
