Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88291938 420(Standard Characters, see http://uspto.report/TM/88291938/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examining Attorney refused registration on the grounds that Applicant's mark is descriptive. In particular, he argued that the mark 420 is descriptive of goods that include cannabis or marijuana. As described below, Applicant's goods do not include cannabis or marijuana. Applicant amends the identification of goods to clarify this point. Therefore, in view of the actual goods associated with the mark, as amended herein, there is no descriptive nature of the mark. Essentially, since there is no cannabis or marijuana in Applicant's goods, the term 420 cannot be held as descriptive of the goods. Therefore, Applicant respectfully requests that the Examining Attorney withdraw this rejection. The Examining Attorney further rejected the application as failing to comply with the CSA and/or the FDCA. However, Applicant states for the record that the goods associated with the mark are solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis. Therefore, the goods comply with the CSA and the FDCA and Applicant requests that the Examining Attorney withdraw this rejection as well. Applicant also provides the following answers to the Examining Attorney's questions: 1. Do or will applicant?s identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp)? Yes, hemp only, i.e., not cannabis or marijuana 2. If the answer to Question 1 is ?yes,? does the hemp used or to be used in applicant?s goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis? Less than 0.3% THC on a dry weight basis. 3. If applicant has any documentation relative to the THC content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response. None. 4. 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. Not applicable. 5. 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? Yes. 6. Do the applicant?s goods contain ?naturally occurring trace amounts? of CBD and/or hemp? No trace amounts. 7. Does the applicant?s goods feature hemp which is obtained from the mature stalks and sterilized seeds? The goods are derived from hemp stalks. 8. Do or will applicant?s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L? No CBD. 9. Upon information and belief, do applicant?s goods comply with the Controlled Substances Act? Yes. 10. Upon information and belief, do applicant?s goods comply with the Federal Food, Drug and Cosmetic Act? Yes. 11. Is the applicant seeking FDA approval for its goods? No. Finally, Applicant amends the identification of goods as follows: Liquid nutritional supplement; Nutritional supplements formed and packaged as bars; Nutritional supplements; Powdered nutritional supplement drink mix; Nutritional supplement energy bars; all of the foregoing solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis It is therefore respectfully submitted that the application is now in condition for allowance.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Liquid nutritional supplement; Nutritional supplements formed and packaged as bars; Nutritional supplements; Powdered nutritional supplement drink mix; Nutritional supplement energy bars
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Liquid nutritional supplement; Nutritional supplements formed and packaged as bars; Nutritional supplements; Powdered nutritional supplement drink mix; Nutritional supplement energy bars; all of the foregoing solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basisClass 005 for Liquid nutritional supplement; Nutritional supplements formed and packaged as bars; Nutritional supplements; Powdered nutritional supplement drink mix; Nutritional supplement energy bars; all of the foregoing solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.
Correspondence Information (current):
      Frank Massabki
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@vpxsports.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): gideon.eckhouse@vpxsports.com
Correspondence Information (proposed):
      Frank Massabki
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@vpxsports.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): gideon.eckhouse@vpxsports.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Gideon Eckhouse/     Date: 03/16/2020
Signatory's Name: Gideon Eckhouse
Signatory's Position: Chief IP Counsel

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Frank Massabki
   Vital Pharmaceuticals, Inc.
   
   1600 North Park Drive
   Weston, Florida 33326
Mailing Address:    Frank Massabki
   Vital Pharmaceuticals, Inc.
   1600 North Park Drive
   Weston, Florida 33326
        
Serial Number: 88291938
Internet Transmission Date: Mon Mar 16 16:03:14 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20200316160314827761-88291938-
710e35d0bd2b1b2f27aa6505f72cd973df9d439d
f44def6697983a644edd55ff3-N/A-N/A-202003
16154603937208