To: | SWEETWATER BREWING COMPANY, LLC (docketing@mcciplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88379946 - EETWATE - 10229-846US2 |
Sent: | April 13, 2020 11:18:14 AM |
Sent As: | ecom130@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88379946
Mark: EETWATE
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Correspondence Address: |
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Applicant: SWEETWATER BREWING COMPANY, LLC
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Reference/Docket No. 10229-846US2
Correspondence Email Address: |
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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: April 13, 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.
SEARCH OF USPTO DATABASE OF MARKS
Registration is refused because the applied-for mark is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.
To qualify for federal trademark/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.
The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and any material or preparation containing marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]” as “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)).
Here, the evidence of record indicates that at least some of the items or activities to which the proposed mark will be applied are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. Specifically, the drawing of the mark illustrates two cannabis/marijuana leaves thus indicating that applicant’s identified goods include items and/or activities that are prohibited by the CSA, namely, the goods will contain a controlled substance.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) The claimed use of the applied-for mark in connection with goods and/or services featuring products that meet the definition of marijuana was not lawful commerce as of the filing date. See In re Brown, 119 USPQ2d, 1351-1352.
On December 20, 2018, the CSA was amended to remove “hemp” from the definition of marijuana and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). Because the identified goods and/or services consist of or include items or activities that are still prohibited under the Controlled Substances Act, the applicant did not have a valid filing basis for any such items or activities. To the extent the applicant’s goods are derived solely from cannabis plants that meet the current statutory definition of hemp, such goods may be lawful.
Therefore, in order to overcome this refusal, applicant must amend the identification of goods to specify that all 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.”
REQUEST FOR INFORMATION
To permit proper examination of the application, applicant must submit additional information about the goods and/or services. 37 C.F.R. §§2.61(b), 2.69; Cf. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing Patent Rule 1.105(a)(1), which is the equivalent of Trademark Rule 2.61(b)); TMEP §§814, 907. The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods and/or services. If such materials are not available, applicant must provide a detailed factual description of the goods. Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application.
In addition, applicant must submit a written statement indicating whether the goods identified in the application comply with the Food, Drug and Cosmetic Act (FDCA). 21 U.S.C. §331(ll). See 37 C.F.R. §2.69; TMEP §907.
Finally, applicant must provide written responses to the following questions:
Failure to satisfactorily respond to a requirement for information is a ground for refusing registration. See In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (affirming refusal of registration because applicant’s appeal brief failed to address the relevant refusals, including a refusal based on noncompliance with a requirement for information); In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (“Failure to comply with a request for information is grounds for refusal,” where applicant provided equivocal responses to examining attorney’s questions and did not address this issue in its brief). Applicant’s failure to respond to an information requirement may result in an adverse evidentiary inference being drawn regarding applicant’s goods. Id. at 1651; In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); TMEP §814.
Please note that merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to the above requirement and is insufficient to make the relevant information properly of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant is advised that, upon consideration of the information provided by applicant in response to the above requirement, registration of the applied-for mark may be refused on the ground that the mark, as used/intended to be used in connection with the identified goods, is not lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127. Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987); see 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69; In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993); In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); TMEP §907.
MARK DESCRIPTION AMENDMENT REQUIREMENT
Applicant must depict the mark in the drawing to include broken or dotted lines to show the position of the mark on the goods or container. 37 C.F.R. §2.52(b)(4); TMEP §§807.08, 1202.02(c)(i). Applicant must show the mark itself using solid lines. See 37 C.F.R. §§2.52(c), 2.54(e); TMEP §§807.05(c), 807.06(a).
In addition to these drawing requirements, applicant must also submit a clear and concise description of the mark that does the following:
(1) Indicates the mark is a three-dimensional configuration of the goods or packaging or of a specific design feature of the goods or packaging.
(2) Specifies all the elements in the drawing that constitute the mark and are claimed as part of the mark.
(3) Specifies any elements that are not part of the mark and indicates that the matter shown in broken or dotted lines is not part of the mark and serves only to show the position or placement of the mark.
See 37 C.F.R. §§2.37, 2.52(b)(2), (b)(4); In re Famous Foods, Inc., 217 USPQ 177, 177 (TTAB 1983); TMEP §§807.08, 807.10, 1202.02(c)(ii).
The following description is suggested, if accurate:
The mark consists of the three-dimensional configuration of a tap handle for dispensing beer and ale in the shape of a fish with bones rising out of cannabis leaves at the base of the handle. The word “EETWATE” also appears at the base of the handle, all extending upward from the beer faucet. The elements shown in dotted lines are functional and not part of the mark.
ASSISTANCE
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.
How to respond. Click to file a response to this nonfinal Office action.
/Heather A. Sales/
Examining Attorney
Law Office 130
(571) 272-7835
Heather.Sales@uspto.gov
RESPONSE GUIDANCE