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:  September 10, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

IDENTIFICATION OF GOODS AND SERVICES

 

The wording “consulting services in the field of cannabis and related products and services” in the identification of goods is indefinite and must be clarified because it could include services in multiple classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Consulting services are classified in the same general class as the subject matter of the consulting, e.g., consulting about business, consumer products, advertising and marketing in Class 35; consulting about medical and health benefits and risks of using cannabis and agricultural production and harvesting of cannabis in Class 44, consulting about scientific and medical research in Class 42.  Applicant must further specify the precise subject matter of the consulting and classify it in the proper classes.

 

Applicant has also classified a wide variety of goods and services in a single class.  For example downloadable podcasts are in Class 9 but non-downloadable videos and podcasts are in Class 41.  Applicant’s trade shows and product review website are classified in Class 35 while applicant’s educational seminars are in Class 41.  Applicant must separate these services into the proper classes and comply with the requirements for a multi-class application.  See the information below.

 

Applicant may substitute the following wording, if accurate:  “(Note that proposed changes have been placed in bold type.  Some items require applicant to include more complete information.  These have been designated with brackets {  } and bold italics.  The information in the brackets is suggested as an example for applicant to follow and should not be merely “cut and pasted.”):  

 

CLASS 9 – Downloadable podcasts for businesses covering issues in the cannabis industry;

 

CLASS 35 –  Providing a website containing product reviews of the goods and services of others in the cannabis industry; arranging and conducting trade shows and industry business conferences in the field of cannabis goods and services; consulting services in the field of business management issues related to the cannabis industry; providing consulting in the field of {specify e.g., advertising, marketing, promoting} cannabis related products and services;

 

CLASS 41 – Educational services, namely, conducting seminars and conferences on the cannabis industry; providing a website featuring online, non-downloadable publications in the nature of periodicals and newsletters featuring cannabis goods and services; providing a website featuring non-downloadable videos in the field of information about cannabis industry goods and services and non-downloadable podcasts for businesses covering issues in the cannabis industry;

 

CLASS 42 – Providing consulting in the field of {specify e.g., medical, scientific, agricultural} research related to cannabis and cannabis products; consulting in the field of product design and development related to cannabis and cannabis products;

 

CLASS 44 – Consulting services in the field of the medical and health risks and benefits of using cannabis and cannabis products; consulting services in the field of agricultural and horticultural issues concerning the planting, harvesting and cultivating of cannabis.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(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 and/or services 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).  The application identifies goods and/or services that are classified in at least FIVE classes; however, applicant submitted a fee(s) sufficient for only ONE 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).

 

See 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.

Requirement for Additional Information – CANNABIS-Related services

To permit proper examination of the application, applicant must submit additional information about the goods and/or services.  See 37 C.F.R. §§2.61(b), 2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-52 (TTAB 1968); 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 all the goods and/or services identified in the application will comply with relevant federal law, including the federal Controlled Substances Act (CSA), 21 USC Sections 801-971.  See 37 CFR Section 2.69; TMEP Section 907.  The CSA prohibits, among other things, manufacturing, distributing, dispensing or possessing certain controlled substances, including marijuana and marijuana based preparations.  21 USC Sections 812(a)(1), 844(a); see also 21 USC Section 802(16) defining marijuana.  The CSA also makes it unlawful to sell, offer for sale or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  21 USC Section 863.

 

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

 

1.      Do or will applicant’s identified services identified above in Classes 35, 41, 42 or 44 include the distribution, dissemination or physical possession/handling of marijuana, cannabis, marijuana-based, cannabis-based extracts, oils or derivatives or any other illegal controlled substances?

2.      Do or will applicant’s identified services identified above in Classes 35, 41, 42 or 44 include the distribution or dissemination or any products, devices or equipment designed for use or primarily intended for use in connection with smoking, vaping, ingesting, inhaling, producing, preparing, processing, manufacturing or concealing marijuana, cannabis, marijuana-based, cannabis-based extracts, oils or derivatives or any other illegal controlled substances?

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004). 

 

Applicant is advised that, if applicant’s response to this request for information indicates that the services identified in the application do not or will not comply with federal Controlled Substances Act, registration may be refused on the ground that the applied-for mark is not in lawful use in commerce if filed under Section 1(a) of the Trademark Act or that applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce if filed under Sections 1(b), 44 and 66(a) of the Trademark Act.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.  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.

 

ATTORNEY BAR INFORMATION REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

Attorney statement required.  Applicant’s attorney must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

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

 

 

/Jeffrey J Look/

Jeffrey J Look

Trademark Examining Attorney

Law Office 108

Phone:  571-272-1652

Email:  jeffrey.look@uspto.gov

 

 

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 September 10, 2019 for

U.S. Trademark Application Serial No. 88294794

 

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. 

 

 

/Jeffrey J Look/

Jeffrey J Look

Trademark Examining Attorney

Law Office 108

Phone:  571-272-1652

Email:  jeffrey.look@uspto.gov

 

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 September 10, 2019, 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.”