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:  June 17, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on 6/5/2020.

 

In a previous Office Action dated 12/6/2019, the trademark examining attorney refused registration of the applied-for mark based on the following outstanding requirements: Disclaimer Requirement, Classification and Identification Requirements, Multiple-Class Application Requirements, and Request-For-Information Requirement.

 

Additionally, a prior-filed and pending application, Serial No. 88296822 was cited. This application has since abandoned so is no longer an issue.

 

Based on applicant’s response, the trademark examining attorney notes that the Classification and Identification Requirements, Multiple-Class Application Requirements, and Request-For-Information Requirement have been satisfied. See TMEP §§713.02, 714.04. 

 

However, the trademark examining attorney now issues an amended Disclaimer Requirement applying to Class 35. See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Disclaimer Requirement – Applies Only to Class 35

 

Disclaimer Requirement – Applies Only to Class 35

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “AMERICAN” because it is not inherently distinctive. This unregistrable term at best are merely descriptive or laudatory of a characteristic of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).  “Marks that are merely laudatory and descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); see In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59  (holding THE BEST BEER IN AMERICA so highly laudatory and descriptive of applicant’s beer and ale being of a superior quality that it is incapable of acquiring distinctiveness); In re Carvel Corp., 223 USPQ 65, 68-69 (TTAB 1984) (holding AMERICA’S FRESHEST ICE CREAM so highly laudatory and descriptive of applicant’s frozen desserts and ice cream being of a superior quality that it is incapable of registration on the Supplemental Register); In re Wileswood, Inc., 201 USPQ 400, 402-404 (TTAB 1978) (holding AMERICA’S BEST POPCORN! and AMERICA’S FAVORITE POPCORN! highly laudatory and descriptive of applicant’s unpopped popcorn being that of a superior quality and popularity); TMEP §1209.03(n).  In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759.

 

Additionally, applicant must disclaim the word “CANNABIS” because it describes the subject matter of the services. Attached evidence from American Heritage Dictionary shows that “AMERICAN” means “Of or relating to the United States of America or its people, language, or culture” and that “CANNABIS” means “Any of several mildly euphoriant, intoxicating hallucinogenic drugs, such as ganja, hashish, or marijuana, prepared from various parts of this plant.” The combination of “AMERICAN CANNBIS” merely describes the subject matter of applicant’s identified business services. Applicant is offering business consulting and information services. The attached evidence from Forbes, CNBC, and New Cannabis ventures all show use of the phrase “American Cannabis” to describe a section or type of business or industry. Therefore, the phrase in the mark merely describes the type of business that applicant is serving of a field or subject matter of the information that applicant is providing.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “AMERICAN CANNABIS” for International Class 35 apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

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

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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 June 17, 2020 for

U.S. Trademark Application Serial No. 88334113

 

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. 

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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 June 17, 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.”