| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88278563 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88278563/mark.png |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| OWNER SECTION (current) | |
| NAME | Chooze, Corp. |
| OWNER SECTION (proposed) | |
| NAME | Chooze, Corp. |
| XXXX | |
| ARGUMENT(S) | |
|
Applicant hereby responds to the Examining Attorney's September 12, 2019 office action refusing registration of the subject application based on alleged lack of bona fide intent to use the mark. Applicant respectfully disagrees and requests that the Examining Attorney withdraw the refusal. First, none of the evidence submitted by the Examining Attorney discusses or involves any of the specific goods covered by the current application, let alone potential unlawful use of the specific goods. The only evidence provided by the Examining Attorney is from an old, non-public-facing portion of the website www.choozecorp.com. This page is not accessible from the homepage of the website (www.choozecorp.com), which makes no reference to cannabis. Applicant intends to use the mark with lawful goods, and any prior use of its mark is not dispositive with respect to its current intent for the current goods. Second, the Examining Attorney contends that because the goods are broad enough to cover illegal products, "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." In support of this position, the Examining Attorney relies on the case In re JJ206, LLC for the proposition that "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." 120 U.S.P.Q.2d 1568, 1569 (T.T.A.B. 2016). This case is not apposite. There, the identified services were "retail store services featuring marijuana" in Class 35 and "dispensing of pharmaceuticals featuring medical marijuana" in Class 44. Id. at 1568. Those goods are, on their face, illegal under federal law and, thus, incapable of lawful use. In this case, Applicant's applied-for goods ("Candy; mint-based sweets; mixes for candy making; mixes for making mint-based sweets") are completely legal and are approved in the PTO’s ID Manual. Unlike the applications at issue in In re JJ206, LLC, there is no reference to marijuana or other illegal products. Concluding that standard, approved goods are broad enough to cover illegal products is not supported by In re JJ206, LLC or any other law. The PTO has approved of these descriptions and registered countless other applications for identical goods. Contending that standard goods are somehow broad enough to cover illegal products is contrary to the PTO’s practice and logic. Otherwise, every single registration granted by the PTO for identical goods would also cover arguably illegal products. To treat Applicant different than these prior applicants for identical goods is arbitrary and capricious, and constitutes a violation of the Administrative Procedure Act and the Constitution, especially where Applicant has not submitted a statement of use and the Examining Attorney provided no evidence that Applicant is using the applied-for goods illegally. Thus, Applicant respectfully requests that the refusal be withdrawn and its application approved for publication. |
|
| ATTORNEY INFORMATION (current) | |
| NAME | Evan P. Everist |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | DORSEY & WHITNEY LLP |
| INTERNAL ADDRESS | SUITE 1500 |
| STREET | 50 SOUTH 6TH STREET |
| CITY | MINNEAPOLIS |
| STATE | Minnesota |
| POSTAL CODE | 55402-1498 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 612-492-6819 |
| FAX | 6123408827 |
| DOCKET/REFERENCE NUMBER | T280474.US.1 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | Evan P. Everist |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | DORSEY & WHITNEY LLP |
| INTERNAL ADDRESS | SUITE 1500 |
| STREET | 50 SOUTH 6TH STREET |
| CITY | MINNEAPOLIS |
| STATE | Minnesota |
| POSTAL CODE | 55402-1498 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 612-492-6819 |
| FAX | 6123408827 |
| ip.docket@dorsey.com | |
| DOCKET/REFERENCE NUMBER | T280474.US.1 |
| OTHER APPOINTED ATTORNEY | Stuart R. Hemphill, Elizabeth C. Buckingham, Jamie N. Nafziger, Jeffrey R. Cadwell, Cathleen F. Dahl, and Alison W. Jarzyna |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | EVAN P. EVERIST |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ip.docket@dorsey.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | ip.docket@dorsey.com; cadwell.jeffrey@dorsey.com; everist.evan@dorsey.com; snyderdenham.margaux@dorsey.com |
| DOCKET/REFERENCE NUMBER | T280474.US.1 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Evan P. Everist |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ip.docket@dorsey.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | ip.docket@dorsey.com; cadwell.jeffrey@dorsey.com; everist.evan@dorsey.com; snyderdenham.margaux@dorsey.com |
| DOCKET/REFERENCE NUMBER | T280474.US.1 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Evan Everist/ |
| SIGNATORY'S NAME | Evan Everist |
| SIGNATORY'S POSITION | Attorney of Record, Minnesota Bar Member |
| SIGNATORY'S PHONE NUMBER | 612-492-6819 |
| DATE SIGNED | 03/06/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Mar 06 15:48:54 ET 2020 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.X.XXX-2 0200306154854522401-88278 563-710f6e0ed80dce6b34d4f e03b22ac1ff2b36b377b35c1b f271d6fd518a12bcb14-N/A-N /A-20200306154431675912 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Applicant hereby responds to the Examining Attorney's September 12, 2019 office action refusing registration of the subject application based on alleged lack of bona fide intent to use the mark. Applicant respectfully disagrees and requests that the Examining Attorney withdraw the refusal.
First, none of the evidence submitted by the Examining Attorney discusses or involves any of the specific goods covered by the current application, let alone potential unlawful use of the specific goods. The only evidence provided by the Examining Attorney is from an old, non-public-facing portion of the website www.choozecorp.com. This page is not accessible from the homepage of the website (www.choozecorp.com), which makes no reference to cannabis. Applicant intends to use the mark with lawful goods, and any prior use of its mark is not dispositive with respect to its current intent for the current goods.
Second, the Examining Attorney contends that because the goods are broad enough to cover illegal products, "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." In support of this position, the Examining Attorney relies on the case In re JJ206, LLC for the proposition that "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." 120 U.S.P.Q.2d 1568, 1569 (T.T.A.B. 2016). This case is not apposite. There, the identified services were "retail store services featuring marijuana" in Class 35 and "dispensing of pharmaceuticals featuring medical marijuana" in Class 44. Id. at 1568. Those goods are, on their face, illegal under federal law and, thus, incapable of lawful use. In this case, Applicant's applied-for goods ("Candy; mint-based sweets; mixes for candy making; mixes for making mint-based sweets") are completely legal and are approved in the PTO’s ID Manual. Unlike the applications at issue in In re JJ206, LLC, there is no reference to marijuana or other illegal products.
Concluding that standard, approved goods are broad enough to cover illegal products is not supported by In re JJ206, LLC or any other law. The PTO has approved of these descriptions and registered countless other applications for identical goods. Contending that standard goods are somehow broad enough to cover illegal products is contrary to the PTO’s practice and logic. Otherwise, every single registration granted by the PTO for identical goods would also cover arguably illegal products. To treat Applicant different than these prior applicants for identical goods is arbitrary and capricious, and constitutes a violation of the Administrative Procedure Act and the Constitution, especially where Applicant has not submitted a statement of use and the Examining Attorney provided no evidence that Applicant is using the applied-for goods illegally.
Thus, Applicant respectfully requests that the refusal be withdrawn and its application approved for publication.