Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  March 30, 2020

 

Introduction

 

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

 

In a previous Office action dated September 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on the followingTrademark Act Sections 1 and 45 for not having a bona fide intent for lawful use in commerce under the CSA.  In addition, applicant was advised of a prior-filed application which might raise a Section 2(d) refusal upon registration.

 

Based on applicant’s response, the trademark examining attorney continues and maintains the refusal and advisory and now makes the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.  All previous arguments and evidence, where applicable, are incorporated by reference herein.

 

Summary of Issues Applicant Must Address:

• Request for Information

 

Request for Information

 

To permit proper examination of the application, applicant must submit additional information about the goods.  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.  If such materials are not available, applicant must provide a detailed factual description of the goods.  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 Controlled Substances Act and the Food, Drug and Cosmetic Act (FDCA). 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff).   See 37 C.F.R. §2.69; TMEP §907. 

 

Finally, applicant must provide written responses to the following questions:

1. Do or will the goods include cannabidiol (CBD)?
2. Do or will the goods include derivatives from the Cannabis Sativa L., plant which contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis
3. If the answer to question 1 is yes, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
4. 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)?

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).

Applicant is advised that, upon consideration of the information provided by applicant in response to the above requirement, registration of the applied-for mark may be refused on the ground that the mark, as used/intended to be used in connection with the identified goods, is not lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.  Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.   Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987); see 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69; In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993); In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); TMEP §907.

 

 

Responding to this Action

 

Please call or email the assigned trademark examining attorney with questions about this Office action. 

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Leslee A. Friedman/

Leslee A. Friedman

Trademark Examining Attorney

Office 120

leslee.friedman@uspto.gov

(571) 272 - 5278

 

 

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 30, 2020 for

U.S. Trademark Application Serial No. 88278515

 

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. 

 

 

/Leslee A. Friedman/

Leslee A. Friedman

Trademark Examining Attorney

Office 120

leslee.friedman@uspto.gov

(571) 272 - 5278

 

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 30, 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.”