To: | Vuber Technologies, Inc. (walker@alloypatentlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88310689 - C1 - Vuber_C1TM |
Sent: | October 22, 2019 01:23:42 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88310689
Mark: C1
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Correspondence Address:
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Applicant: Vuber Technologies, Inc.
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Reference/Docket No. Vuber_C1TM
Correspondence Email Address: |
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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: October 22, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS
Drug Paraphernalia Refusal –– Per se unlawful – Not in Lawful Use in Commerce
Registration is 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.
To qualify for federal trademark registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, 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.
Here, certain items or activities to which the proposed mark are applied are broad enough to encompass goods that are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. Applicant’s goods consist of, or include, atomizers, oral vaporizers, and electronic cigarettes for use with cannabis. Please see the Specimens of record, where the battery is indicated as being for use with cannabis, and the attached excerpts from the Applicant’s Instagram and Twitter pages, which both discuss cannabis and use of the applied-for goods with cannabis.
The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport “drug paraphernalia,” which is defined as “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 in the human body a controlled substance.” 21 U.S.C. § 863. Under the CSA, marijuana is a controlled substance. 21 U.S.C. §§ 812(a), (c), 841, 844.
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) The claimed use of the applied-for mark in connection with such goods was not in lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.
On December 20, 2018, the CSA was amended to remove “hemp” from the definition of marijuana and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). Because the identified goods consist of or include items that are still prohibited under the Controlled Substances Act, namely, atomizers, oral vaporizers, and electronic cigarettes for use with cannabis without limitation to .3% THC, the applicant did not have a valid filing basis for any such items. To the extent the applicant’s goods are exclusively for use with products derived solely from cannabis plants that meet the current statutory definition of hemp, such goods may be lawful.
Therefore, in order to overcome this refusal, applicant must amend the identification of goods to specify that all items are “exclusively for use with cannabis/CBD products solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.” Please see the complete requirement for an acceptable identification of goods below.
The applicant may also present arguments and evidence against this refusal.
ADVISORY – AMENDMENT TO IDENTIFICATION OF GOODS
The identification of goods will need to be clarified, if accurate, to overcome the refusal above. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate. The wording that appears in bold and/or italics below represents the suggested changes. Any wording that is crossed out represents matter that must be deleted from the identification.
International Class 10: Atomizers sold empty for medical use; Vaporizers for medical purposes; all of the aforementioned exclusively for use with cannabis/CBD products solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis
International Class 34: Electronic cigarette atomizers sold empty; Oral vaporizers for smokers; Cartomizers, namely, combination electronic cigarette refill cartridges sold empty and atomizers, sold as a component of electronic cigarettes; all of the aforementioned exclusively for use with cannabis/CBD products solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ADVISORY – DATE OF FIRST USE IN COMMERCE
Applicant should also note that if it amends the Identification of Goods as explained above, the date of first use in commerce will also need to be amended for both classes to December 20, 2018, as the goods would not have been lawfully in use in commerce as of the current date of March 1, 2018. This will need to be 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.
Applicant is advised that any future specimen provided by applicant supporting use of the mark must not show unlawful use of cannabis/CBD in excess of the amount indicated above.
ENTITY UNCERTAIN
If applicant is a limited liability company, applicant must provide the correct name of the limited liability company and the U.S. state or foreign country of incorporation or organization. TMEP §803.03(h). Alternatively, if applicant is a corporation, applicant must amend the entity type to delete “Limited Liability Company” and instead set forth “corporation.” See TMEP §803.03(c).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
REQUIREMENT FOR ADDITIONAL INFORMATION
- What is the significance of the mark “C1”? Does it have any meaning in the particular industry?
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
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 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).
Response guidelines
For this application to proceed, 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. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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. 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
/Lindsey H. Ben/
Lindsey H. Ben
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4239
Lindsey.Ben@uspto.gov
RESPONSE GUIDANCE