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 30, 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).

 

SUMMARY OF ISSUES:

• CBD-Specified Goods/Services Refusal – No Bona Fide Intent To Lawfully Use In Commerce
• FDCA Refusal – No Bona Fide Intent To Lawfully Use In Commerce
• Identification Of Goods And Services
• Multiple-Class Application Requirements
• Information About Goods And Services Required

 

CBD-SPECIFIED GOODS/SERVICES REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. 

 

To qualify for federal trademark/service mark 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 and/or services 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, the items or activities with which the proposed mark will be used include those that are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. The application identifies the following cannabidiol goods and/or services: “Blended oil for food; Edible oils and edible fats; Infused oils for cooking; Nut and seed-based snack bars; Candied fruit snacks; Snack mix consisting of processed seeds; Fruit-based organic food snacks also containing nuts, seeds, chocolate, cacao, and hemp seed; Hemp powder, namely, processed edible seeds not being seasonings or flavorings; Hemp seed protein powder, namely, formed textured vegetable protein for use as a meat substitute; Food products, namely, processed edible hemp seed; Snack mix consisting of processed seed; Trail mix consisting primarily of processed nuts, seeds, dried fruit and also including chocolate; Hemp milk; Hemp seed protein powder, namely, formed textured vegetable protein for use as a meat substitute; Prepared entrees consisting primarily of vegetables, soups, fruit salads and vegetable salads; Processed edible seeds, namely, seed preparations for food for human consumption; By-products of flaxseed and hemp seed, namely, ground and milled toppings for food for human consumption; By-products and extracts of plant material, seeds, grains, fruit and grasses, namely, ground and milled toppings for food for human consumption; Bread; Bakery goods; Bakery products, namely, sweet bakery goods; Bread mixes; Cake and pastry mixes; Chocolate bars; Chocolate candies; Chocolate confections; Chocolate-based ready-to-eat food bars; Chocolates and chocolate based ready to eat candies and snacks; Coffee-based beverages; Cookies; Flavorings other than essential oils for foods; Honey; Ice Cream; Muffins; Pasta; Pastries; Processed herbs and herbal preparations for food for human consumption, namely, herbal food beverages; Puddings; Snack foods, namely, chocolate-based snack foods; Spices and herbs, namely, processed herbs, dried herbs, preserved garden herbs being seasonings; Sugar confectionary and sweets; Tea-based beverages Providing online and retail store services in the field of hemp and Cannabidiol (CBD) based products, all of the foregoing derived solely from a plant's mature stalks, seed oil and other lawful sources; Providing online and retail store services in the field of body care products, cosmetics and cosmetic preparations, anti-aging products, dietary and nutritional supplements, food and nutritional goods, beverages, edible oils, candles, candies, chocolate, coffee, confectionery, and vaporizers; all of the foregoing derived solely from a plant's mature stalks, seed oil and other lawful sources.” 

 

Cannabidiol (CBD) is a nonpsychoactive constituent of the cannabis plant.  Applicant’s identified goods and/or services are broad enough to include products produced from “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16)(definition of “marihuana” – commonly referred to as “marijuana”).   

 

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)  Because use of the applied-for mark in connection with such goods and/or services was not lawful as of the filing date, 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.  See In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“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.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.   

 

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).  The goods and/or services that feature cannabidiol did not potentially comply with applicable federal laws until that date.  Because the identified goods and/or services that feature cannabidiol consist of or include items or activities that are still prohibited under the Controlled Substances Act, namely those containing cannabidiol derived from marijuana, the applicant did not have a valid basis for filing the application for such goods.  Nevertheless, to the extent the applicant’s goods will be derived solely from cannabis plants that meet the current statutory definition of hemp, the goods may presently be lawful.

 

Therefore, in order to overcome this refusal, applicant must amend the identification of goods and services to specify that all cannabidiol-containing items are “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 and/or services below.

 

The applicant may also present arguments and evidence against this refusal. 

 

Applicant should note the following additional ground for refusal.

 

FDCA REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see 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 application identifies items or activities that involve a per se violation of federal law.  See In re Brown, 119 USPQ2d at 1352. The Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food or beverage 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 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 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).

 

In the present case, the application identifies the following goods and/or services for which applicant has alleged a bona fide intent to use in commerce: “Blended oil for food; Edible oils and edible fats; Infused oils for cooking; Nut and seed-based snack bars; Candied fruit snacks; Snack mix consisting of processed seeds; Fruit-based organic food snacks also containing nuts, seeds, chocolate, cacao, and hemp seed; Hemp powder, namely, processed edible seeds not being seasonings or flavorings; Hemp seed protein powder, namely, formed textured vegetable protein for use as a meat substitute; Food products, namely, processed edible hemp seed; Snack mix consisting of processed seed; Trail mix consisting primarily of processed nuts, seeds, dried fruit and also including chocolate; Hemp milk; Hemp seed protein powder, namely, formed textured vegetable protein for use as a meat substitute; Prepared entrees consisting primarily of vegetables, soups, fruit salads and vegetable salads; Processed edible seeds, namely, seed preparations for food for human consumption; By-products of flaxseed and hemp seed, namely, ground and milled toppings for food for human consumption; By-products and extracts of plant material, seeds, grains, fruit and grasses, namely, ground and milled toppings for food for human consumption; Bread; Bakery goods; Bakery products, namely, sweet bakery goods; Bread mixes; Cake and pastry mixes; Chocolate bars; Chocolate candies; Chocolate confections; Chocolate-based ready-to-eat food bars; Chocolates and chocolate based ready to eat candies and snacks; Coffee-based beverages; Cookies; Flavorings other than essential oils for foods; Honey; Ice Cream; Muffins; Pasta; Pastries; Processed herbs and herbal preparations for food for human consumption, namely, herbal food beverages; Puddings; Snack foods, namely, chocolate-based snack foods; Spices and herbs, namely, processed herbs, dried herbs, preserved garden herbs being seasonings; Sugar confectionary and sweets; Tea-based beverages Providing online and retail store services in the field of hemp and Cannabidiol (CBD) based products, all of the foregoing derived solely from a plant's mature stalks, seed oil and other lawful sources; Providing online and retail store services in the field of dietary and nutritional supplements, food and nutritional goods, beverages, edible oils, candles, candies, chocolate, coffee, confectionery, and vaporizers; all of the foregoing derived solely from a plant's mature stalks, seed oil and other lawful sources.”

 

It is unlawful to introduce food or beverages 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 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 attached.

 

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)  Because introduction of such goods into commerce was not lawful as of the filing date, applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with such goods and/or the identified services.  See e.g. In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“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.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.   

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND SERVICES

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 29 for “Hemp seed protein powder, namely, formed textured vegetable protein for use as a meat substitute.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

The wording “Food products, namely, processed edible hemp seed; Processed edible seeds, namely, seed preparations for food for human consumption; By-products of flaxseed and hemp seed, namely, ground and milled toppings for food for human consumption; By-products and extracts of plant material, seeds, grains, fruit and grasses, namely, ground and milled toppings for food for human consumption” in the identification of goods is indefinite and must be clarified because it is unclear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “By-products of flaxseed and hemp seed, namely, ground and milled toppings for food for human consumption; By-products and extracts of plant material, seeds, grains, fruit and grasses, namely, ground and milled toppings for food for human consumption” in the identification of goods for International Class 29 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “Plant and herb extracts for use in the manufacture of cosmetics” in Class 1; “Plant extracts for pharmaceutical purposes” in Class 5; “Wheatgrass for use as a dietary supplement” in Class 5; “Fruit topping” in Class 29; “Processed grains” in Class 29; “Frozen, frosted, preserved, processed, dried, cooked or crystallized fruit and vegetables extracts for use in prepared meals or food” in Class 29; “Processed seeds used as a flavoring for foods and beverages” in Class 30; “Non-alcoholic fruit extracts used in the preparation of beverages” in Class 32.

 

Lastly, applicant’s mark includes the wording “HEMP”, which indicates that applicant’s goods and/or services have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic:  contain a high quantity of beneficial fats and other helpful compounds in the oil. 

 

This feature or characteristic is considered desirable for applicant’s goods and/or services because “the abundance of fatty acids may make the oil an excellent choice for nourishing the skin and protecting it from inflammation, oxidation, and other causes of aging.” See attached evidence from http://www.medicalnewstoday.com/articles/324450.php. However, if some or all of the goods and/or services do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods and/or services.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods and/or services possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Therefore, applicant may amend the identification to the following, if accurate:

 

International Class 29

“Blended oil for food; Edible oils and edible fats; Infused oils for cooking; Nut and seed-based snack bars; Candied fruit snacks; Snack mix consisting of processed seeds; Fruit-based organic food snacks also containing nuts, seeds, chocolate, cacao, and hemp seed; Hemp powder, namely, processed edible seeds not being seasonings or flavorings; Hemp seed protein powder, namely, formed textured vegetable protein for use as a meat substitute; Food products, namely, processed edible hemp seed, not being seasonings or flavorings; Snack mix consisting of processed seed; Trail mix consisting primarily of processed nuts, seeds, dried fruit and also including chocolate; Hemp milk; Prepared entrees consisting primarily of vegetables, soups, fruit salads and vegetable salads; Processed edible seeds, namely, seed preparations for food for human consumption not being seasonings or flavorings; By-products and extracts of plant material in the nature of fruit and grasses namely, ground and milled fruit or grasses toppings for food for human consumption; all of the foregoing derived from hemp containing CBD with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

International Class 30

“Bread; Bakery goods; Bakery products, namely, sweet bakery goods; Bread mixes; Cake and pastry mixes; Chocolate bars; Chocolate candies; Chocolate confections; Chocolate-based ready-to-eat food bars; Chocolates and chocolate based ready to eat candies and snacks; Coffee-based beverages; Cookies; Flavorings other than essential oils for foods; Honey; Ice Cream; Muffins; Pasta; Pastries; Processed herbs and herbal preparations for food for human consumption, namely, herbal food beverages; Puddings; Snack foods, namely, chocolate-based snack foods; Spices and herbs, namely, processed herbs, dried herbs, preserved garden herbs being seasonings; Sugar confectionary and sweets; Tea-based beverages; By-products of flaxseed and hemp seed, namely, ground and milled flaxseed and hemp seed toppings for food for human consumption; By-products and extracts of plant material in the nature of seeds and grains, namely, ground and milled seeds or grains toppings for food for human consumption; all of the foregoing derived from hemp containing CBD with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

International Class 35

“Providing online and retail store services in the field of hemp and Cannabidiol (CBD) based products, all of the foregoing derived solely from a plant's mature stalks, seed oil and other lawful sources; Providing online and retail store services in the field of body care products, cosmetics and cosmetic preparations, anti-aging products, dietary and nutritional supplements, food and nutritional goods, beverages, edible oils, candles, candies, chocolate, coffee, confectionery, and vaporizers; all of the foregoing derived solely from a plant's mature stalks, seed oil and other lawful sources; Promoting public awareness of the interests of health and wellness, natural skincare and cosmetics, cruelty-free industries, and hemp and cannabis benefits, laws and reform, support for local and small businesses; all of the foregoing services featuring products with hemp containing CBD with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

Applicant’s goods and/or services 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 and/or services or add goods and/or services 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 and/or services 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.

 

MULTIPLE-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 six (6) classes; however, applicant submitted a fee(s) sufficient for only three (3) classes. 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.

 

INFORMATION ABOUT GOODS AND SERVICES REQUIRED

 

To permit proper examination of the application, applicant must submit a written statement indicating whether all the goods and/or services identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971 (see questions below). See 37 C.F.R. §2.69; TMEP §907. The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §8 02(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 U.S.C. §863.

 

The requested information should include fact sheets, instruction manuals, brochures, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods and/or services of the same type, explaining how its own product or services will differ.  If the goods and/or services feature new technology and no information regarding competing goods and/or services is available, applicant must provide a detailed factual description of the goods and/or services.

 

Factual information about the goods and/or services must clearly indicate what the goods and/or services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.

 

In addition, applicant must answer the questions below:

 

1. Do or will the goods include cannabidiol (CBD)?

 

2. If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?

 

3. If applicant has any documentation relative to the CBD content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.

 

4. Do or will any of applicant’s identified goods include or contain hemp seed oil?

 

5. Which part or parts of the hemp plant are used in obtaining the oils, extracts, ingredients or derivatives?

 

6. Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L (also known as hemp, marijuana or cannabis)?

 

7. Is applicant currently seeking FDA approval of the marketing of its goods identified in the application?

 

8. If the answer to Question 7 is “yes,” please provide a copy of such application.

 

9. Do or will applicant’s identified services include use of products containing CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L (also known as hemp, marijuana or cannabis)?

 

10. Do applicant’s identified services involve the sale, provision, possession and/or otherwise introducing into commerce marijuana, marijuana-based preparations, or marijuana extracts or derivatives, synthetic marijuana, hemp or any other illegal controlled substances?

 

11. Do applicant’s identified services involve the sale, provision, possession and/or otherwise introducing into commerce Cannabidiol (CBD), CBD preparations, or CBD extracts or derivatives, or any other illegal controlled substances?

 

12. Upon information and belief, do applicant’s goods comply with the Controlled substances Act (CSA)?

 

13. Upon information and belief, do applicant’s goods and/or services comply with the federal Food, Drug and Cosmetic Act (FDCA)?

 

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).

 

RESPONSE GUIDELINES 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  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  

 

 

/L. Dantzler/

Lauren A. Dantzler

Examining Attorney

Law Office 122

(571) 272-7348

lauren.dantzler@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 30, 2019 for

U.S. Trademark Application Serial No. 88319074

 

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. 

 

 

/L. Dantzler/

Lauren A. Dantzler

Examining Attorney

Law Office 122

(571) 272-7348

lauren.dantzler@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 30, 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.”