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:  August 04, 2020

 

This Office action is supplemental to and supersedes the previous Office action issued on September 20, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted the dates of use in commerce requirement as well as suggested an incomplete amendment to the recitation of services for International Class 35.  See TMEP §§706, 711.02.  Specifically, the Use in Commerce date must be changed to December 20, 2018 in order for the hemp goods to be lawful.  Additionally, the goods in International Class 35 inadvertently omitted the .3% language with respect to its goods.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated September 20, 2019.  The issue(s) raised in the previous September 20, 2019 Office action is/are as follow and is/are maintained:  The CBD and FDCA Refusals.

 

Further, the following refusals and/or requirements have been satisfied/obviated/withdrawn:  Drug Paraphernalia Refusal, the Requirement for Additional Information and the Identification of Goods Requirement for International Classes 1 and 5.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUE:  Date of First Use In Commerce.

            •  NEW ISSUE:  Recitation of Services Requirement.

            •  CBD Refusal is Continued.

            •  FDCA Refusal is Continued.

 

Applicant must respond to all issues raised in this Office action and the previous September 20, 2019 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

DATE OF FIRST USE IN COMMERCE

 

The date of first use in commerce does not support lawful use in commerce.  The current date of first use in commerce is November 28, 2018, while the earliest the mark could have had lawful use in commerce is December 20, 2018.  An application based on use in commerce under Trademark Act Section 1(a) must include both (1) the date of first use of the mark anywhere and (2) a date of first use of the mark in commerce that supports lawful use.  15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii)-(iii); TMEP §§903, 903.03.

 

Therefore, applicant must amend the date of first use of the mark in commerce to December 20, 2018, verified with an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.34(a)(1)(iii), 2.193(e)(1); TMEP §§903, 903.04.

 

For an overview of the requirement for providing a verified date of first use of the mark in commerce and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademark/laws-regulations/dates-use.

 

IDENTIFICATION OF SERVICES

 

The recitation of services is unacceptable as indefinite because as worded, the exact nature of the services is unclear.  Specifically, the goods sold by the applicant must indicate that it is solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.  Where indicated, the applicant must specify the exact nature of the services by its common commercial name.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The suggested changes are in bold.

 

Applicant may adopt the following identification, if accurate: 

 

“On-line retail store services featuring phytocannabinoid infused lotions, balms, oils, topicals; all solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis and none of the foregoing services include or involve the sale, manufacture, distribution, delivery, dispensing, possession, or provision of goods primarily intended or designed for use with marijuana, marijuana-based preparations, extracts or derivatives from marijuana, synthetic marijuana, or any other controlled substance under the CSA,” in International Class 35. 

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

CBD RELATED GOODS REFUSAL – NOT IN LAWFUL USE IN COMMERCE AS OF FILING DATE

 

This refusal is Maintained and Continued until the applicant amends the dates of first use in commerce to December 20, 2018 in order to support lawful use.

 

FDCA REFUSAL – NOT IN LAWFUL USE IN COMMERCE AS OF FILING DATE

 

This refusal is Maintained and Continued.  In its Response, the applicant indicates that its goods feature less than 50 ppm of CBD, however, in its evidence provided in its Response, the applicant’s evidence shows that the goods feature a significant amount of CBD.  For example, the applicant’s Muscle and Joint Balm shows that the product contains 28 grams with 250mg of CBD, which equates to approximately 8928 ppm of CBD.  This amount is well beyond what the office considers is a “trace amount.” 

 

Registration is further refused because the applied-for mark is not in lawful use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.  The goods 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. 

 

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.

 

The Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food 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 previously 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 previously 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).

 

Applicant’s goods and services are broad enough to encompass products that consist of, or include, items or activities that are prohibited by the FDCA, namely, medicinal and pharmaceutical preparations and the sale of same.  Specifically, the specimen of record and the previously attached excerpts from applicant’s website plainly indicates that applicant’s medicinal and pharmaceutical preparations and the sale of same contain CBD and that such goods are currently being marketed, promoted or offered for sale to consumers.

 

It is unlawful to introduce food 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 previously 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 previously attached.  The attached excerpt from applicant’s website plainly indicates that applicant’s pharmaceuticals, topical analgesics, medicated balms, lotions, creams, tinctures, etc. are comprised of cannabidiol and are promoted to have therapeutic or medical benefits that affect the structure or function of the body.

 

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)  Accordingly, because applicant’s goods and services consist of or include items or activities that violate federal law, the applied-for mark as used in connection with such goods and services is not in lawful use in commerce.

 

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 and services, 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.

 

RESPONSE GUIDELINES AND ABANDONMENT ADVISORY

 

For this application to proceed further, 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.  In addition, because applicant filed a TEAS Plus application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.22(b)(1), (c).  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

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

 

 

 

 

 

 

 

 

 

/Howard Smiga/

Examining Attorney

Law Office 102

571-272-9220

Howard.Smiga@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 August 04, 2020 for

U.S. Trademark Application Serial No. 88299064

 

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. 

 

 

/Howard Smiga/

Examining Attorney

Law Office 102

571-272-9220

Howard.Smiga@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 August 04, 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.”