Offc Action Outgoing

FLYTE

Jetstream Brands Nevada Inc.

U.S. Trademark Application Serial No. 88348514 - FLYTE - N/A

To:	Jetstream Brands Nevada Inc. (sean@emergelawgroup.com)
Subject:	U.S. Trademark Application Serial No. 88348514 - FLYTE - N/A
Sent:	January 10, 2020 03:46:07 PM
Sent As:	ecom108@uspto.gov
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United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

U.S. Application Serial No. 88348514

Mark: FLYTE

Correspondence Address:

SEAN CLANCY

Emerge Law Group

621 SW Morrison St., Suite 900

Portland OR 97205

Applicant: Jetstream Brands Nevada Inc.

Reference/Docket No. N/A

Correspondence Email Address:

sean@emergelawgroup.com

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: January 10, 2020

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.

SECTION 2(D) – LIKELIHOOD OF CONFUSION REFUSAL

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in the following U.S. Registrations:

- 3815864 (FLITE) for International Class 5

- 4102624 (FLYTE) and 4748550 (FLYTE FITNESS) for International Class 16

- 5870035 (FLYTE) for International Class 18

- 5091445 (FLYTE FITNESS), 2385023 (FLYTE TYME), and 5065985 (FLYTEFOAM) for International Class 25

- 4896075 (FLYTE) for International Class 32

- 5054161 (FLYT), 5715608 (FLYT SILK), 4993519 (FLYTLAB), and 4763775 (FLYTLAB) for International Class 34, all owned by the same Registrant

- 5421137 (FLYT) for International Class 35

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

The applicant’s mark is “FLYTE” and covers the following relevant goods and services:

International Class 5: Pharmaceutical, medicinal, herbal, botanical and nutritional preparations and supplements in the form of concentrates and extracts; pharmaceutical, medicinal, herbal, botanical and nutritional preparations and supplements in the form of capsules, pills, liquids, tablets, powders, pastes, tinctures, sublingual unit dosages, all for the treatment of stress, loss of appetite, anxiety, stress, fatigue, pain, nausea, vomiting, muscle tension, muscle spasms, tension, epilepsy, glaucoma, multiple sclerosis, arthritis, Parkinson's disease, cancer, gastrointestinal illness, spinal cord injury, anxiety, bi-polar disorder, depression, and insomnia, and to provide mood enhancement and an improved sense of well-being; medical marijuana, medical cannabis; marijuana and cannabis products and their derivatives, namely, tinctures, tissue cultures, powders, juice, pills, tablets, capsules; cannabidiol oil; medicated massage oils

International Class 16: Promotional items, namely, stickers, decorative pins, fridge magnets, pens, pencils, highlighters, buttons, key chains, key fobs, balls, golf balls, flying discs, plush toys, playing cards, mouse pads, alarm clocks, and fridge magnets; printed material, namely, magazines, books, newsletters, writing pads, note paper, binders, self-stick notes, calendars, notebooks, greeting cards, postcards, posters, decals, temporary tattoos, and bumper stickers

International Class 18: Multi-purpose carrying bags, sport bags and back packs

International Class 25: Apparel and clothing, namely, t-shirts, jackets, sweatshirts; headwear, namely, hats and caps; clothing, namely, sweatpants, and sunglasses; headwear, namely, sun visors

International Class 32: Non-alcoholic beverages and drinks, namely, infusions, teas, tisanes, soft drinks and tonics

International Class 34: Equipment and accessories for the preparation, use and storage of marijuana, medical marijuana, cannabis, medical cannabis, their products and derivatives, namely, vaporizers, and electronic cigarettes; paraphernalia, equipment and accessories for the preparation, use and storage of marijuana, medical marijuana, cannabis, medical cannabis, their products and derivatives, namely, pipes, bongs, water pipes, rolling papers, cigarette papers, grinders, weighing scales, and lighters; marijuana and cannabis; cannabis; marijuana and cannabis products and their derivatives, namely, oils; cannabis oil filled disposable vaporizers, cannabis oil filled disposable vaporizer cartridges, cannabis oil applicators; marijuana and cannabis products and their derivatives, namely, concentrates, extracts, hashish, resins, tetrahydrocannabinol (THC), and cannabinoids; cannabidiol oil; electronic vaporizer batteries; smokeless cigarette vaporizer pipes

International Class 35: Providing an online directory information service featuring information regarding medical marijuana, medical marijuana laws, legal medical marijuana pharmacies and stores, and health care providers and equipment for administering medical marijuana, all on behalf of third parties; licensing of intellectual property; consulting services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; organizing community events to promote public awareness and provide educational services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; volunteer and community service initiatives to provide public education in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; production, distribution, wholesale, retail, online sales and delivery of medical marijuana; production, retail and wholesale sale and distribution of dried medical marijuana and dried medical cannabis to patients and to licensed medical marijuana producers; export of medical marijuana, medical cannabis, and their related products to government approved sources in other countries; import of medical marijuana, medical cannabis, and their related products to government approved sources in other countries; operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the processing of medical marijuana, medical cannabis, marijuana, cannabis and their related products; operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the breeding, cultivation, harvesting, packaging, marketing, delivery, transport, distribution and destruction of medical marijuana, medical cannabis, marijuana, cannabis and their related products; medical marijuana, medical cannabis, marijuana and cannabis dispensary services; production, sale and distribution of marijuana and cannabis; operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the processing of medical marijuana, medical cannabis, marijuana, and cannabis derivatives; operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the breeding, cultivation, harvesting, packaging, marketing, delivery, transport, distribution and destruction of medical marijuana, medical cannabis, marijuana, and cannabis derivatives; export of marijuana, cannabis, and their derivatives to government approved sources in other countries; import of marijuana, cannabis, and their derivatives to government approved sources in other countries; production, sale and distribution of marijuana and cannabis derivative- based or infused edible and beverage products

Similarity of the Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

Here, the Applicant’s mark “FLYTE” is identical to all of the marks in their entirety (same spelling and only the word “FLYTE”) or is identical in sound alone (“FLYTE” v. “FLITE” and “FLYT”) or is identical in spelling and/or sound and is the first part of the registered marks (“FLYTE” v. “FLYTE FITNESS,” “FLYTE TYME,” “FLYTEFOAM,” “FLYT SILK,” “FLYTLAB”).

Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

Additionally, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.

Furthermore, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

Finally, where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” as discussed below, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

Similarity of the Goods and/or Services

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

Here, applicant’s relevant goods and/or services, namely:

International Class 18: Multi-purpose carrying bags, sport bags and back packs

International Class 25: Apparel and clothing, namely, t-shirts, jackets, sweatshirts; headwear, namely, hats and caps; clothing, namely, sweatpants, and sunglasses; headwear, namely, sun visors

International Class 32: Non-alcoholic beverages and drinks, namely, infusions, teas, tisanes, soft drinks and tonics

are related to the registrant’s goods and services, as follows:

International Class 5 – U.S. Registration No. 3815864 (FLYTE) for “dietary supplements in liquid and non-liquid form”

- The Applicant’s goods in Class 5 include nutritional supplements and medicinal products that are often sold alongside dietary supplements, like the registrant’s

International Class 16 – U.S. Registration Nos. 4102624 (FLYTE) for “Printed materials, namely, printed religious books, educational, teaching, training, and instructional materials in the field of religion” and 4748550 (FLYTE FITNESS) for “Manuals and printed guides in the field of fitness and nutrition”

- The Applicant’s goods in Class 16 include printed materials with no specification as to the subject matter, and thus are presumed to encompass printed materials of all subject matter, such as those in the registrations. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

International Class 18 – U.S. Registration No. 5870035 (FLYTE) for “All-purpose athletic bags; All purpose sport bags; Athletic bags; Bags for sports; Crossbody bags; Duffel bags for travel; Duffle bags; Gym bags; Roll bags; Shoulder bags; Sports bags; Suitcases; Suitcases with wheels; Tote bags; Traveling bags; Wheeled bags”

- The Applicant’s goods in Class 18 include bags like those in the registration, and thus confusion as to source is likely.

International Class 25 – U.S. Registration Nos. 5091445 (FLYTE FITNESS) for “Clothing, namely, shirts, pants, socks, hats,” 2385023 (FLYTE TYME) for “Clothing, namely hats, caps, shirts, T-shirts, sweatshirts, jackets and polo shirts,” and 5065985 (FLYTEFOAM) for “footwear”

- The Applicant’s Class 25 goods feature clothing like those in the registrations. Neither the application nor the registrations contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores. Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

International Class 32 – U.S. Registration No. 4896075 (FLYTE) for “Concentrates or syrups used in the preparation of sports and energy drinks; Syrups for making beverages; Syrup pods, namely, disposable capsules containing syrups for making beverages”

- The Applicant’s Class 32 beverage goods are often sold in conjunction with concentrates and syrups for use in making those beverages, under a single trademark, such that confusion as to source is likely.

International Class 34 – U.S. Registration Nos. 5054161 (FLYT) for “Electronic hookahs; Oral vaporizers for smoking purposes; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe; Smokers' oral vaporizer refill cartridges sold empty; Tobacco grinders,” 5715608 (FLYT SILK) for “Oral vaporizers for smokers; Oral vaporizers for smoking purposes; Smokeless cigarette vaporizer pipe; Smokers' oral vaporizer refill cartridges sold empty,” 4993519 (FLYTLAB) for “Oral vaporizers for smokers; Oral vaporizers for smoking purposes; Smokeless cigar vaporizer pipes; Smokeless cigarette vaporizer pipe; Smokers' oral vaporizer refill cartridges sold empty; Tobacco grinders,” and 4763775 (FLYTLAB) for “Electronic hookahs,” all owned by the same Registrant

- The Applicant’s Class 34 goods include smokers articles like those in the registrations, such that they all travel in the same channels of trade to the same consumers, making confusion as to source likely.

International Class 35 – U.S. Registration No. 5421137 (FLYT) for “On-line ordering services in the fields of general merchandise and restaurant take-out and delivery”

- The Applicant’s Class 35 services include retail services featuring goods that could be considered “general merchandise,” such that the services of both parties travel in the same channels of trade to the same consumers, making confusion as to source likely.

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

For the aforementioned reasons, registration is refused pursuant to Trademark Act Section 2(d).

Applicant should note the following potential additional grounds for refusal.

Prior Pending Applications

The filing dates of the following pending U.S. Applications precede applicant’s filing date:

- 88285863 (FLYTE.70) for International Classes 3, 18, and 35

- 88169899 (FLYTSTYLE) for International Class 16

- 88212938 (FLYTECO BREWING) for International Class 32

See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

Applicant should note the following additional ground for refusal.

Cannabis-specified Goods/Services Refusal –– Based on Identification – No Bona Fide Intent to Lawfully Use in Commerce – international classes 3, 5, 30, 31, 32, 34, 35, 41, AND 42

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce with respect to goods and/or services that are not lawful under federal law. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. APPLICANT SHOULD NOTE THAT THIS PARTICULAR REFUSAL DOES NOT APPLY TO THE GOODS AND SERVICES IN INTERNATIONAL CLASSES 16, 18, 21, 25, OR 44.

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 relevant cannabis goods and/or services:

International Class 3: Mascara, eye shadow, lip balm, massage oil, skin cream, skin lotion

International Class 30: Marijuana, cannabis, and marijuana and cannabis derivative- based or infused food products, namely, candies, jellies, jellied candies, and pastries

International Class 31: Marijuana plant clones; cannabis plant clones

International Class 32: Non-alcoholic beverages and drinks, namely, infusions, teas, tisanes, soft drinks and tonics

International Class 41: Educational services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives, namely, providing information relating to strains, patient information and case studies; educational services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives, namely, production and distribution of audio, visual and print materials, seminars, workshops, classes and training sessions

International Class 42: Scientific research and development in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; scientific research and development in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives for the development of therapeutics, and to identify and target specific symptoms, diseases, illnesses and disorders; scientific research and development in engineering, breeding and genetically modifying medical marijuana, medical cannabis, marijuana, cannabis, and their strains and derivatives; scientific research and development of delivery and absorption methods for medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; scientific research and development services for the identification of cannabis-specific diseases; scientific research and development in the field of plant tissue cultivation and propagation; pharmaceutical research and development of extraction methods for the purpose of isolating cannabis seeds, clones, tissue cultures and marijuana derivatives from dried plant and whole plant materials; scientific research and development of product packaging for medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; product development services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; export of dried medical marijuana and dried medical cannabis; import of dried medical marijuana and dried medical cannabis

Such goods and/or services are broad enough to include products produced from, or intended for use with, “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) Applicant’s goods and/or services consist of, or include, items or activities that are or were prohibited by the CSA, namely, goods that contain, or are intended for use with, cannabis and marijuana. 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.”); 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 identified did not potentially comply with applicable federal laws until that date. Because the identified goods and/or services consist of or include items or activities that are prohibited under the Controlled Substances Act, the applicant did not have a valid basis for filing the application. Nevertheless, to the extent the applicant’s goods will be derived from, or exclusively intended for use with, cannabis plants that meet the current statutory definition of hemp, the goods and services may presently be lawful.

Therefore, in order to overcome this refusal, applicant must amend the identification of goods and services to specify that all cannabis-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” or are “exclusively for use with 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.

APPLICANT SHOULD NOTE THAT THE WORDING “MARIJUANA,” BY DEFINITION, HAS MORE THAN 0.3% THC ON A DRY WEIGHT BASIS AND THUS THE SUGGESTED AMENDMENT BELOW IS NOT APPLICABLE TO ANY INSTANCE OF “MARIJUANA” IN THE CURRENT IDENTIFICATION OF GOODS AND SERVICES.

APPLICANT SHOULD ALSO NOTE THAT AN AMENDMENT TO THE IDENTIFICATION OF GOODS AND SERVICES WILL NOT OVERCOME THE FDCA REFUSAL BELOW.

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

Applicant should note the following additional ground for refusal.

FDCA Refusal – Based on ID – No Bona Fide Intent to Lawfully Use in Commerce as of Filing Date – INTERNATIONAL CLASSES 5, 30, 32, and 35

Registration is refused for the goods and services in International Classes 5, 30, 32, and 35 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. APPLICANT SHOULD NOTE THAT THIS PARTICULAR REFUSAL DOES NOT APPLY TO THE GOODS AND SERVICES IN INTERNAITONAL CLASSES 3, 16, 18, 21, 25, 31, 34, 41, 42, OR 44.

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.

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 to which the mark will be 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.

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 relevant goods and/or services for which applicant has alleged a bona fide intent to use in commerce:

International Class 30: Marijuana, cannabis, and marijuana and cannabis derivative- based or infused food products, namely, candies, jellies, jellied candies, and pastries

International Class 32: Non-alcoholic beverages and drinks, namely, infusions, teas, tisanes, soft drinks and tonics

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.

If applicant responds to the refusals and potential refusals, applicant must also respond to the requirements set forth below.

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

Identification of Goods and Services

International Class 5

The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Pharmaceutical, medicinal, herbal, botanical and nutritional preparations and supplements in the form of concentrates and extractsàapplicant must specify what the “pharmaceutical, medicinal” goods are intended to treat and that the “herbal, botanical” preparations are “medical” to be in Class 5

- medical marijuana, medical cannabisàapplicant must clarify the form of the goods, e.g., “medicinal herbs” in Class 5

- marijuana and cannabis products and their derivatives, namely, tinctures, tissue cultures, powders, juice, pills, tablets, capsulesàapplicant must specify that the “tissue cultures” are “biological tissue cultures for medical purposes” in Class 5, that the “powders, juice” are “medicated” to be in Class 5, and specify what the “tablets and capsules” are intended to treat

- cannabidiol oilàapplicant must specify that this is “medicinal oil” to be in Class 5

International Class 16

The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- decorative pinsà“ornamental novelty pins” belong in Class 26

- fridge magnetsà“refrigerator magnets” belong in Class 9

- highlightersàapplicant must specify if these are “pens” or “markers” in Class 16

- buttonsà“buttons” belong in Class 26

- key chainsàthese goods belong in Class 14

- key fobsà“decorative key fobs” belong in Class 14

- ballsàapplicant must specify the type of “balls,” e.g., “balls for games” are in Class 28

- golf balls, flying discs, plush toys, playing cardsàthese goods belong in Class 28

- mouse padsàthese goods belong in Class 9

- alarm clocksàthese goods belong in Class 14

- printed material, namely, magazines, books, newslettersàapplicant must specify the subject matter

- temporary tattoosàapplicant must specify that these are “temporary tattoo transfers” to be in Class 16

International Class 21

The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Bottle holdersàapplicant must better specify these goods, e.g., “insulating sleeve holder for bottles”

- steinsàapplicant must specify that these are “drinking steins” in Class 21

- insulated beverages holdersàapplicant must better specify these goods, e.g., “insulating sleeve holder for beverage cans”

International Class 30

The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Jelliesàthese goods belong in Class 29

International Class 32

The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Non-alcoholic beverages and drinks, namely, infusionsàapplicant must specify the type of “infusions,” e.g., “herbal infusions” in Class 30

- teas, tisanesàthese goods belong in Class 30

- tonicsàapplicant must specify the type of “tonics,” e.g., “tonic water” in Class 32

International Class 34

The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Equipment and accessories for the preparation, use and storage of marijuana, medical marijuana, cannabis, medical cannabis, their products and derivatives, namely, vaporizers, and electronic cigarettesàapplicant must specify the type of “vaporizers,” e.g., “electronic oral vaporizers for smoking” in Class 34

- paraphernalia, equipment and accessories for the preparation, use and storage of marijuana, medical marijuana, cannabis, medical cannabis, their products and derivatives, namely, pipes, bongs, water pipes, rolling papers, cigarette papers, grinders, weighing scales, and lightersàapplicant must specify that these are all articles for smoking, and specify that the “rolling papers” are “cigarette rolling papers,” the “grinders” are “grinders for herbs for smoking,” and the “weighing scales” belong in Class 9

- marijuana and cannabis; cannabisàapplicant must specify the goods in Class 34, e.g., “herbs for smoking”

- marijuana and cannabis products and their derivatives, namely, oilsàapplicant must specify that these are “for use in oral vaporizers for smoking” or “electronic cigarettes” to be in Class 34

- cannabis oil filled disposable vaporizers, cannabis oil filled disposable vaporizer cartridges, cannabis oil applicatorsàapplicant must specify that these are all for use with “electronic oral vaporizers for smoking”

- marijuana and cannabis products and their derivatives, namely, concentrates, extracts, hashish, resins, tetrahydrocannabinol (THC), and cannabinoids; cannabidiol oilàapplicant must specify that these are all for use in smoking to be in Class 34

- electronic vaporizer batteriesàthese goods belong in Class 9

International Class 35

The identification of services is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Providing an online directory information service featuring information regarding medical marijuana, medical marijuana laws, legal medical marijuana pharmacies and stores, and health care providers and equipment for administering medical marijuana, all on behalf of third parties;

- licensing of intellectual propertyàthese services belong in International Class 45

- consulting services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivativesàapplicant must better specify the type of “consulting” services, e.g., “business consulting” belongs in Class 35 while “health consulting” belongs in Class 44

- organizing community events to promote public awareness and provide educational services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivativesàpromoting public awareness” is a Class 35 service while “educational services” belong in Class 41

- volunteer and community service initiatives to provide public education in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivativesàapplicant must better clarify these services, e.g., “Charitable services, namely, organizing and conducting volunteer programs and community service projects” is acceptable in Class 35

- production, distribution, wholesale, retail, online sales and delivery of medical marijuana; production, retail and wholesale sale and distribution of dried medical marijuana and dried medical cannabis to patients and to licensed medical marijuana producersàapplicant must specify the nature of the “distribution, wholesale, retail, online sales,” e.g., “distributorships, wholesale stores, retail stores, and online retail stores” in Class 35; “delivery services” are in Class 39, and “production services” for others are in Class 40

- export of medical marijuana, medical cannabis, and their related products to government approved sources in other countries; import of medical marijuana, medical cannabis, and their related products to government approved sources in other countriesàapplicant must clarify that the “export” and “import” services are done for the benefit of others, e.g., “import-export agency services” in Class 35

- operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the processing of medical marijuana, medical cannabis, marijuana, cannabis and their related products; operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the breeding, cultivation, harvesting, packaging, marketing, delivery, transport, distribution and destruction of medical marijuana, medical cannabis, marijuana, cannabis and their related productsàapplicant must clarify the “operation” services, e.g., “operation of a business for others” is acceptable in Class 35

- medical marijuana, medical cannabis, marijuana and cannabis dispensary servicesàapplicant must clarify the nature of the “dispensary services” e.g., “retail dispensary store” in Class 35

- production, sale and distribution of marijuana and cannabisàapplicant must specify the nature of the “production, sale, and distribution” e.g., “distributorships, retail stores” are in Class 35 and “production services” for others are in Class 40

- operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the processing of medical marijuana, medical cannabis, marijuana, and cannabis derivatives; operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the breeding, cultivation, harvesting, packaging, marketing, delivery, transport, distribution and destruction of medical marijuana, medical cannabis, marijuana, and cannabis derivativesàapplicant must clarify the “operation” services, e.g., “operation of a business for others” is acceptable in Class 35

- export of marijuana, cannabis, and their derivatives to government approved sources in other countries; import of marijuana, cannabis, and their derivatives to government approved sources in other countriesàapplicant must clarify that the “export” and “import” services are done for the benefit of others, e.g., “import-export agency services” in Class 35

- production, sale and distribution of marijuana and cannabis derivative- based or infused edible and beverage productsàapplicant must specify the nature of the “production, sale, and distribution” e.g., “distributorships, retail stores” are in Class 35 and “production services” for others are in Class 40

International Class 41

The identification of services is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Educational services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives, namely, providing information relating to strains, patient information and case studiesàapplicant must specify the type of information being provided, e.g., “medical information” in Class 44

- educational services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives, namely, production and distribution of audio, visual and print materials, seminars, workshops, classes and training sessionsàapplicant must clarify that the “audio, visual, and print materials” are distributed in connection with the educational seminars, workshops, etc.

International Class 42

The identification of services is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Scientific research and development in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; scientific research and development in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives for the development of therapeutics, and to identify and target specific symptoms, diseases, illnesses and disorders; scientific research and development in engineering, breeding and genetically modifying medical marijuana, medical cannabis, marijuana, cannabis, and their strains and derivatives; scientific research and development of delivery and absorption methods for medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; scientific research and development services for the identification of cannabis-specific diseases; scientific research and development in the field of plant tissue cultivation and propagation; pharmaceutical research and development of extraction methods for the purpose of isolating cannabis seeds, clones, tissue cultures and marijuana derivatives from dried plant and whole plant materials; scientific research and development of product packaging for medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; product development services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives;

- export of dried medical marijuana and dried medical cannabis; import of dried medical marijuana and dried medical cannabisàapplicant must clarify that the “export” and “import” services are done for the benefit of others, e.g., “import-export agency services” in Class 35

International Class 44

The identification of services is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:

- Operation of a website providing information on medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivativesàapplicant must specify the type of information being provided, e.g., “consumer information” is in Class 35 while “medical and health information” is in Class 44

- operation of a website featuring the ability for users to rate, review, and make recommendations on medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives, and to interact with other usersàapplicant must specify the purpose of this website, e.g., “for commercial purposes”

- operation of an interactive online bulletin board, discussion forum and social networking platform all in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivativesà“online bulletin boards” are in Class 38, “discussion forums” are in Class 38, and “social networking” is in Class 45

- medical information printed and electronic educational materials in the field of medical marijuanaàapplicant must specify the type of “printed medical information,” e.g., “printed educational materials” in Class 16 and the type of “electronic educational materials,” e.g., “online non-downloadable electronic books” in Class 41

- production and distribution of instructional videos and proprietary software applications in the field of medical marijuana for patients and health care professionalsà“production and distribution of videos” belongs in Class 41, “production and distribution of proprietary software applications” belongs in Class 42

Additionally, the suggested amendments to the goods and services made in the Controlled Substances Act Refusal above are incorporated below.

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 3: Mascara, eye shadow, lip balm, massage oil, skin cream, skin lotion; all of the aforementioned goods containing hemp ingredients solely with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis

International Class 5: Pharmaceutical, medicinal, medicated herbal, medicated botanical and nutritional preparations and supplements in the form of concentrates and extracts for treating {specify condition or disease to be treated}, and containing hemp ingredients solely with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; pharmaceutical, medicinal, herbal, botanical and nutritional preparations and supplements in the form of capsules, pills, liquids, tablets, powders, pastes, tinctures, sublingual unit dosages containing hemp ingredients solely with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis, all for the treatment of stress, loss of appetite, anxiety, stress, fatigue, pain, nausea, vomiting, muscle tension, muscle spasms, tension, epilepsy, glaucoma, multiple sclerosis, arthritis, Parkinson's disease, cancer, gastrointestinal illness, spinal cord injury, anxiety, bi-polar disorder, depression, and insomnia, and to provide mood enhancement and an improved sense of well-being; medicinal herbs, namely, medical marijuana; medicinal herbs, namely, medical cannabis derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; marijuana and cannabis products derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; and their derivatives, namely, tinctures, biological tissue cultures for medical purposes, medicated powders, medicated juice, pills, tablets, capsules for treating {specify condition or disease to be treated}; medicinal cannabidiol oil and medicated massage oils containing hemp ingredients solely with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis

International Class 9: Fridge magnets; mouse pads; paraphernalia, equipment and accessories for the preparation, use and storage of marijuana, medical marijuana, cannabis, medical cannabis, their products and derivatives, namely, weighing scales; electronic vaporizer batteries

International Class 14: Key chains; decorative key fobs; alarm clocks

International Class 16: Promotional items, namely, stickers, pens, pencils, highlighter markers, writing pads, note paper, binders, self-stick notes, calendars, notebooks, greeting cards, postcards, posters, decals, temporary tattoo transfers, bumper stickers; printed material, namely, magazines, books, and newsletters in the field of {specify subject matter or field of interest}; printed educational materials in the field of medical marijuana

International Class 18: Multi-purpose carrying bags, sport bags and back packs

International Class 21: Bottle holders, namely, {insulating sleeve holder for bottles}; mugs, beverage glassware, plastic bottles for drinking water, plastic drinking cups, plastic juice box holders, cups, drinking steins, plastic insulated mugs, insulated beverages holders, namely, {insulating sleeve holder for beverage cans}; vacuum bottles

International Class 25: Apparel and clothing, namely, t-shirts, jackets, sweatshirts; headwear, namely, hats and caps; clothing, namely, sweatpants, and sunglasses; headwear, namely, sun visors

International Class 26: Ornamental novelty pins, namely, decorative pins; buttons

International Class 28: Balls for games, golf balls, flying discs, plush toys, playing cards

International Class 29: Marijuana marijuana derivative- based or infused food products, namely, jellies; cannabis and cannabis derivative-based or infused food products, namely, jellies containing hemp ingredients solely with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis

International Class 30: Marijuana and marijuana derivative- based or infused food products, namely, candies, jellied candies, and pastries; Cannabis and cannabis derivative- based or infused food products, namely, candies, jellied candies, and pastries containing hemp ingredients solely with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; Non-alcoholic beverages and drinks, namely, herbal infusions, teas, and tisanes containing hemp ingredients solely with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis

International Class 31: Marijuana plant clones; cannabis plant clones with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis

International Class 32: Soft drinks and tonic water containing hemp ingredients solely with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis

International Class 34: Equipment and accessories for the preparation, use and storage of marijuana, medical marijuana, their products and derivatives, namely, electronic oral vaporizers for smoking and electronic cigarettes; Equipment and accessories for the preparation, use and storage of cannabis, medical cannabis, their products and derivatives, namely, electronic oral vaporizers for smoking and electronic cigarettes exclusively for use with hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; paraphernalia, equipment and accessories for the preparation, use and storage of marijuana, medical marijuana, their products and derivatives, namely, pipes for smoking, bongs for smoking, water pipes for smoking, cigarettes rolling papers, cigarette papers, grinders for herbs for smoking, and lighters for smoking; paraphernalia, equipment and accessories for the preparation, use and storage of cannabis, medical cannabis, their products and derivatives, namely, pipes for smoking, bongs for smoking, water pipes for smoking, cigarettes rolling papers, cigarette papers, grinders for herbs for smoking, and lighters for smoking, all exclusively for use with hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; herbs for smoking namely, marijuana; herbs for smoking, namely, cannabis with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; marijuana products and their derivatives, namely, oils for use in oral vaporizers for smoking; cannabis products and their derivatives, namely, oils with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis for use in oral vaporizers for smoking; cannabis oil filled disposable oral vaporizers for smokers, cannabis oil filled disposable vaporizer cartridges for use with oral vaporizers for smokers, cannabis oil applicators for use with oral vaporizers for smokers, all containing less than 0.3 percent tetrahydrocannabinol [THC] on a dry weight basis; marijuana products and their derivatives for use in smoking, namely, concentrates, extracts, hashish, resins, tetrahydrocannabinol (THC), and cannabinoids; cannabis products and their derivatives for use in smoking, namely, concentrates, extracts, hashish, resins, and cannabinoids all containing less than 0.3 percent tetrahydrocannabinol [THC] on a dry weight basis; cannabidiol oil derived from hemp with less than 0.3 percent tetrahydrocannabinol [THC] on a dry weight basis; smokeless cigarette vaporizer pipes exclusively for use with hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis

International Class 35: Providing an online directory information service featuring information regarding medical marijuana, medical marijuana laws, legal medical marijuana pharmacies and stores, and health care providers and equipment for administering medical marijuana, all on behalf of third parties; business consulting services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; organizing community events to promote public awareness in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; Charitable services, namely, organizing and conducting volunteer programs and community service projects to provide public education in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; distributorships, wholesale stores, retail stores, and online retail stores featuring medical marijuana; distributorships, wholesale stores, retail stores, and online retail stores featuring dried medical marijuana and dried medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis; import-export agency services of medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] on a dry weight basis, and their related products to government approved sources in other countries; operation of a business for others, namely, operation of medical marijuana, medical cannabis, marijuana and cannabis production facilities and dispensaries for the processing of medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, marijuana, cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis and their related products; operation of a business for others, namely, operation of medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, marijuana and cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis production facilities and dispensaries for the breeding, cultivation, harvesting, packaging, marketing, delivery, transport, distribution and destruction of medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, marijuana, cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis and their related products; retail dispensary store featuring medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, marijuana and cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis; distributorships and retail stores featuring marijuana and cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis; operation of a business for others, namely, operation of medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, marijuana and cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis production facilities and dispensaries for the processing of medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, marijuana, and cannabis derivatives with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis; operation of a business for others, namely, operation of medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, marijuana and cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis production facilities and dispensaries for the breeding, cultivation, harvesting, packaging, marketing, delivery, transport, distribution and destruction of medical marijuana, medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, marijuana, and cannabis derivatives with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis; distributorship and retail store services featuring marijuana and cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis derivatives-based or infused edible and beverage products; import-export agencies of dried medical marijuana and dried medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis; operation of a website providing consumer information on medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; operation of a website for commercial purposes featuring the ability for users to rate, review, and make recommendations on medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives, and to interact with other users; operation of an interactive online bulletin board and discussion forum in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives

International Class 39: Delivery of medical marijuana; delivery of dried medical marijuana to patients and to licensed medical marijuana producers; delivery of dried medical cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis to patients and to licensed medical marijuana providers; import-export agency services for marijuana, cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis, and their derivatives to government approved sources in other countries

International Class 40: Production of medical marijuana for others; production of dried medical marijuana for others; production of dried medical cannabis for others; production for others of marijuana and cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis; production for others of marijuana and cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis derivatives-based or infused edible and beverage products

International Class 41: Organizing community events to provide educational services in the nature of {specify how the educational services are offered, e.g., classes, seminars, workshops} in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; educational services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives, namely, seminars, workshops, classes and training sessions, and production distribution of audio, visual and print materials in connection therewith; online non-downloadable electronic books in the field of medical marijuana; production and distribution of instructional videos in the field of medical marijuana for patients and health care professionals

International Class 42: Scientific research and development in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; scientific research and development in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives for the development of therapeutics, and to identify and target specific symptoms, diseases, illnesses and disorders; scientific research and development in engineering, breeding and genetically modifying medical marijuana, medical cannabis, marijuana, cannabis, and their strains and derivatives; scientific research and development of delivery and absorption methods for medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; scientific research and development services for the identification of cannabis-specific diseases; scientific research and development in the field of plant tissue cultivation and propagation; pharmaceutical research and development of extraction methods for the purpose of isolating cannabis seeds, clones, tissue cultures and marijuana derivatives from dried plant and whole plant materials; scientific research and development of product packaging for medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; product development services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; all of the aforementioned services involving the possession or use of cannabis with less than 0.3% tetrahydrocannabinol [THC] concentration on a dry weight basis; production and distribution of proprietary software applications in the field of medical marijuana for patients and health care professionals

International Class 44: Health consulting services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives; Educational services in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives, namely, providing medical information relating to strains, patient information and case studies; Operation of a website providing medical and health information on medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives;

International Class 45: Licensing of intellectual property; operation of a social networking platform in the field of medical marijuana, medical cannabis, marijuana, cannabis, and their related products and derivatives

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.

Classification of Services

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 3, 5, 9, 14, 16, 28, 21, 25, 26, 28, 29, 30, 31, 32, 34, 35, 39, 40, 41, 42, 44, and/or 45. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

Additional Filing Fee(s) Required if Adopting Additional International Class(es)

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

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.

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.

/Lindsey H. Ben/

Lindsey H. Ben

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4239

Lindsey.Ben@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.

Offc Action Outgoing [image/jpeg]

U.S. Trademark Application Serial No. 88348514 - FLYTE - N/A

To:	Jetstream Brands Nevada Inc. (sean@emergelawgroup.com)
Subject:	U.S. Trademark Application Serial No. 88348514 - FLYTE - N/A
Sent:	January 10, 2020 03:46:08 PM
Sent As:	ecom108@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on January 10, 2020 for

U.S. Trademark Application Serial No. 88348514

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.

/Lindsey H. Ben/

Lindsey H. Ben

Trademark Examining Attorney

Law Office 108

Phone: (571) 272-4239

Lindsey.Ben@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 January 10, 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.”