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:  May 08, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF USPTO DATABASE OF MARKS - DEFERRED

 

Applicant has listed a wide variety of indefinitely described goods and services and paid a single class filing fee.  Therefore, the trademark examining attorney will defer a search of the USPTO database of registered and pending marks for potentially conflicting marksuntil applicant responds to the issues raised in this Office action and especially the requirement for proper identification and classification of all goods and services and payment of all required filing fees.  TMEP §704.02.

 

CBD-RELATED GOODS – BASED ON EVIDENCE - NO BONA FIDE

INTENT TO LAWFULLY USE IN COMMERCE AS OF FILING DATE

 

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.  This refusal applies to all of the following goods and services as currently identified in the application:  Oils; essential oils; oils for food; oils for beverages; oils for gummies; oils for electronic cigarettes; oils for electronic cigarette cartridges; oils for vape pens; oils for vape pen cartridges; oils for smoking substances; oils for tinctures; lotions; oils for applying to the skin and/or body; e-liquids; resins; tinctures; tobacco substitutes; smokers' articles; electronic cigarettes; vape pens; cartridges; electronic cigarette cartridges; vape pen cartridges; electronic cigarette chargers; vape pen chargers; gummies; foods; foods for animals; pet treats; beverages; medicinal products; medicinal services; dietary supplements; aromatherapy products; manufacturing services; oil services; wholesale services; distributorship services; retail services; providing a website to the extent that it features the above referenced goods for sale.

 

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 to which the proposed mark are applied were unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971.  The evidence of record indicates that at least some of the items or activities to which the proposed mark may be applied are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971.  

 

As evidenced by the applicant’s website, goods within the scope of the identification bearing the mark contain oils extracts and ingredients from the plant Cannabis sativa L which includes both delta-9 tetrahydrocannabinol (THC)) as well as cannabidiol (CBD.   Cannabidiol (CBD) is a nonpsychoactive constituent of the cannabis plant.  Applicant’s identified goods and/or services are broad enough to include products produced from “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16)(definition of “marihuana” – commonly referred to as “marijuana”).    In fact, as to the electronic cigarettes and the oils used therein, applicant placed a “government warning” on its website specifically stating that the goods are Schedule 1 controlled substances under federal law.

 

In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful.  See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976)  Because use of the applied-for mark in connection with such goods and/or services was not lawful as of the filing date, applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with such goods and/or services.  See In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.   

 

On December 20, 2018, the CSA was amended to remove “hemp” from the definition of marijuana and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17).  Because the identified goods and/or services that feature cannabidiol consist of or include items or activities that are still prohibited under the Controlled Substances Act, namely those containing cannabidiol derived from marijuana, the applicant did not have a valid 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 and services to specify that all cannabidiol-containing items are “solely derived from hemp with a delta-9 tetrahydrocannabinol (THC)] concentration of not more than 0.3 percent on a dry weight basis.”  Please see the complete requirement for an acceptable identification of goods and/or services below.

 

Applicant should note the following additional ground for refusal.

 

FDCA REFUSAL – BASED ON EVIDENCE – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE AS OF FILING DATE

 

Registration is also refused under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907, because some of the goods and services listed are not in compliance with the Food, Drug and Cosmetic Act (FDCA). Oils; oils for food; oils for beverages; oils for gummies; oils for tinctures; lotions; oils for applying to the skin and/or body; tinctures; gummies; foods; foods for animals; pet treats; beverages; medicinal products; dietary supplements; aromatherapy products; wholesale services; distributorship services; retail services; providing a website to the extent that it features the above referenced goods for sale.

 

This refusal issues when “(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-relevant activities involve a per se violation of a federal law.”  In re Brown, 119 USPQ2d at 1351 (citing Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988); Santinine Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981)); TMEP §907

The Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food 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. 

 

Furthermore, 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).  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

Applicant’s goods and/or services are broad enough to encompass products that consist of, or include, items or activities that are or were prohibited by the FDCA, namely, foods; beverages; pet treats and medicated tinctures, lotions, balms, skin care preparations, topical pain relief creams and ointments which have a therapeutic effect as well as retail, wholesale and distributorship services featuring such goods.

The attached excerpt from applicant’s website plainly indicates that applicant’s goods listed above will contain CBD and in some cases high levels of THC.

It is unlawful to introduce food 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.    

 

REQUEST FOR INFORMATION – CANNABIS RELATED GOODS/SERVICES

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 and/or services.  Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods and/or services identified in the application. 

Finally, applicant must provide written responses to the following questions:

1. Do or will the any of the goods or retail or wholesale services featuring such goods identified in the application be comprised of any ingredients, oils, extracts or derivatives from the plant Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC)) content of more than 0.3 percent on a dry weight basis?
2. Do or will the any of the goods or retail or wholesale services featuring such goods identified in the application include cannabidiol (CBD)?
3. If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
4. Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L?
5. Is applicant currently seeking FDA approval of the marketing of its any of the goods identified in the application?
6. If the answer to Question 5 is “yes,” please provide a copy of such application;
7. Do or will any of the goods identified in the application include any devices or equipment which is designed for use or primarily intended for use in connection with preparing, processing, smoking, inhaling or otherwise introducing into the body Cannabis sativa L, or any oils, extracts or derivatives thereof with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis?
8. Do or will any of applicants educational services or medical services as identified in the application involve the dissemination or physical handling of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC)) content of more than 0.3 percent on a dry weight basis?

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).

IDENTIFICATION OF GOODS/SERVICES

 

Much of the wording in the identification of goods and services is indefinite and must be clarified because the wording used fails to identify specific goods and services and could include goods and services in multiple classes.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  More specifically:

 

The wording “oils; oils for food; oils for beverages; oils for gummies; oils for electronic cigarettes; oils for electronic cigarette cartridges; oils for vape pens; oils for vape pen cartridges; oils for smoking substances; oils for tincture” is too broad to accept because with regard to oils, such goods are classified in several different classes.  Plant oils and extracts used in the manufacture of other goods, such as foods, beverages, cosmetics, drugs, dietary supplements are classified in Class 1; essential oils, including vape oils or e-cigarette liquids comprised of essential oils, are in Class 3; medicinal oils are in Class 5; edible oils or oils used in cooking are in Class 29.  Applicant must further specify the nature of these oils and classify them in the proper classes.

 

The term “resins” could include goods in multiple classes such as unprocessed raw natural resins in Class 2 or processed resins for smoking purposes in Class 34.  Applicant must clarify this wording and classify it accordingly. 

 

As for the wording “lotions; oils for applying to the skin and/or body,” this is too broad to accept because it could include non-medicated or cosmetic goods in Class 3 or medicinal or therapeutic goods in Class 5.  Applicant must further define the nature of these goods and classify them accordingly.

 

Applicant has identified a wide variety of smoking and vaping related products some of which would otherwise be acceptable in Class 34 and some of which require further definition for classification.  As already mentioned, vape liquids comprised of essential oils and e-cigarette cartridges sold prefilled with essential oils are in Class 3.  If the cartridges and oils do not contain essential oils, or are sold empty, then they are properly classified in Class 34.  Batteries and battery charges for electronic cigarettes are classified in Class 9.

 

Applicant has listed several edible items as well such as gummies, foods, beverages, foods and pet treats for animals.  Such goods could be in Class 5 if they are medicated or are for a medicinal use and in Classes 29, 30, 31, 32 or 33 if not for a medicinal.  Furthermore, such goods are also classified, in some cases, by the material composition or ingredients used in the goods.  See the examples listed in the suggested identification below.

 

The wording “medical products” and “aromatherapy products” fails to identify specific goods.  Applicant must list each and every single such product by its common name.

 

The word “clothing” in the identification of goods is indefinite and too broad and must be clarified because the word does not make clear the nature of the goods and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The following are examples of acceptable identifications:  “clothing for protection against accidents, irradiation and fire” in International Class 9; “surgical gowns” in International Class 10; “pet clothing” in International Class 18; and “shirts,” “shorts,” and “pants” in International Class 25.  Therefore, applicant must amend the identification to specify the type of clothing.

 

If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).  

 

The activities identified as “retail services” and “wholesale services” in International Class 35 are indefinite and must be clarified because retail services could include a wide array of retail support services – from accounting to advertising and marketing services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.11. 

 

If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify (1) the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets), and (2) the field or type of goods offered through those retail services, e.g., “retail online ordering services featuring clothing, foods, beverages, smoking articles, dietary supplements and medicinal oils, extracts, tinctures and pharmaceuticals,” “retail distributorships in the field of clothing, foods, beverages, smoking articles, dietary supplements and medicinal oils, extracts, tinctures and pharmaceuticals,” and “retail outlets featuring clothing, foods, beverages, smoking articles, dietary supplements and medicinal oils, extracts, tinctures and pharmaceuticals.”  See TMEP §§1301.01(a)(ii), 1402.11.  The same format is used for wholesale store services and distributorship services.

 

Applicant has listed broad terms such as oil services, medicinal services, consulting services, information providing services and website services.  Such wording is unacceptable because it could include services in multiple classes.  With regard to these services, they are classified by the general subject matter field of the service, e.g., consulting or providing information in the field of consumer products, business or economic information, retail or wholesale services would be in Class 35; financial and investment information in Class 36; manufacturing information in Class 40; entertainment and academic educational information in Class 41; medical, scientific or agricultural research information in Class 42; medical or agricultural information other than about research in Class 44.  Applicant must further define the subject matter of these services and classify them in the proper classes.  See the suggestions below.

 

Applicant has also included “stickers” and “written materials” are in Class 16 if such materials are printed.  If the written materials are in an electronic format that is downloadable, the proper class is Class 9 and if non-downloadable in Class 41.  Furthermore, applicant must specify the precise nature of the materials, e.g., newsletters, books, magazines, journals as well as the general subject matter of the materials.

 

The wording “educational services” and “entertainment services” fail to identify specific services.  Applicant must specify each and every single such service by its common name.  See the examples in the suggestions below.

 

As discussed above in connection with the unlawful use refusal under Sections 1 and 45 of the Trademark Act as it pertains to compliance with the Controlled Substances Act, applicant may amend the identification of goods and services to limit the goods so as to not include Cannabis sativa L with a (THC) content of more than 0.3 percent on a dry weight basis.  While this amendment will overcome the refusal based on non-compliance with the CSA, it will not overcome the refusal based on non-compliance with the FDCA unless applicant also excludes all goods containing cannabidiol (CBD).  Applicant may adopt the following form of identification, if accurate: (Note that proposed changes have been placed in bold type.  Some items require applicant to include more complete information.  These have been designated with brackets {  } and bold italics.  The information in the brackets is suggested as an example for applicant to follow and should not be merely “cut and pasted.”):  

 

CLASS 1 – Oils, namely, extracted plant oils for use in the manufacture of {specify the types of goods, e.g., foods, beverages, animal feeds and treats, dietary supplements, pharmaceuticals, cosmetics}; none of the foregoing plant oils comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis or comprised of cannabidiol (CBD);

 

CLASS 2 – Resins, namely, unprocessed natural resins with none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis;

 

CLASS 3 – Oils, namely, essential oils, flavored oils, comprised of essential oils for use in refilling electronic cigarettes, electronic cigarette cartridges sold pre-filled with essential oils; cosmetic oils for applying to the skin and body; lotions, namely, non-medicated lotions for the skin and body; aromatherapy products, namely, {specify the goods in this class e.g., non-medicated skin creams comprised of essential oils for use in aromatherapy, essential oils for use in aroma therapy}; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis;

 

CLASS 4 – Aroma therapy products, namely, aromatherapy fragrance candles; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis;

 

CLASS 5 – Oils, namely, {specify the goods in this class e.g., medicinal oils, extracted plant oils for pharmaceutical and medical use, medicated oils for the skin}; tinctures featuring oils for {specify e.g., use as a dietary and nutritional supplement, for medical use, for treatment of pain, seizures, insomnia, anxiety}; dietary supplements; medicated pet treats; medicated foods for animals; dietetic foods and beverages adapted for medical use; medicated gummies; gummies for use as a dietary supplement; medicinal products, namely, {specify each item by common name, e.g., medicated skin care creams, lotions, gels, balms, topical analgesic creams and lotions, medicated lip balm, medicated grooming preparations for pets, namely, oils, salves, gels, creams and lotions, herbal drinks used to aid in sleep and relaxation, medicinal herb extracts}; medicinal products, namely, pharmaceuticals for use in the treatment of {specify the conditions e.g., pain, PTSD, anxiety, insomnia, dietary disorders, seizures, cancer}; aromatherapy products, namely, {specify the goods in this class e.g., aromatherapy oils and lotions, other than essential oils,} for treating {specify the conditions e.g.,  headaches, anxiety, insomnia, stress}; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis or comprised of cannabidiol (CBD);

 

CLASS 9 – Batteries for electronic cigarettes and oral smokeless vape pens; battery chargers for electronic cigarettes and oral smokeless vape pens; written materials and articles, namely, downloadable electronic {specify the type of material, e.g., books, newsletters, magazines, journals} on the subject of {specify the subject matter e.g., cannabis, marijuana, hemp, products made from cannabis, marijuana and hemp, the medical and therapeutic uses of marijuana, cannabis or hemp}; downloadable electronic video recordings on the subject of {specify the subject matter e.g., cannabis, marijuana, hemp, products made from cannabis, marijuana and hemp, the medical and therapeutic uses of marijuana, cannabis or hemp};

 

CLASS 10 – Aromatherapy products, namely, aromatherapy inhalers sold empty;

 

CLASS 16 – Printed written materials, namely, {specify the type of material, e.g., books, newsletters, magazines, journals, articles} on the subject of {specify the subject matter e.g., cannabis, marijuana, hemp, products made from cannabis, marijuana and hemp, the medical and therapeutic uses of marijuana, cannabis or hemp}; Stickers;

 

CLASS 21 – Aroma therapy products, namely, electric aromatherapy diffusers, ultrasonic aromatherapy diffusers;

 

CLASS 25 – Clothing and apparel, namely, {specify each and every single item by common name e.g., hats, shirts, shorts, jackets, pants, caps, sweatshirts, tops, blouses, socks, gloves, underwear, swimwear, rainwear};

 

CLASS 29 – Foods, namely, {specify the goods in this class e.g., edible oils, edible butters, cheese, dairy based dips and spreads, dairy based food beverages, cream being a dairy product, nut-based snack foods, seed based snack foods, vegetable based snack foods, cheese based snack foods, fruit based snack foods}; Beverages, namely, {specify the goods in this class e.g., dairy based beverages, yogurt based beverages, vegetable based food beverages, soy milk beverages; fruit based food beverages}; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis or comprised of cannabidiol (CBD);

 

CLASS 30 – Foods, namely, {specify the goods in this class e.g., gummy candy, chocolates, candy, chocolate based snack foods, granola based snack foods, cereal based snack foods, grain based snack foods}; beverages, namely, {specify the goods in this class e.g., coffee and coffee based beverages, tea and tea based beverages, cocoa and cocoa based beverages, chocolate based beverages}; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis or comprised of cannabidiol (CBD);

 

CLASS 31 – Foods for animals, namely, non-medicated animal feed, pet foods, pet treats, pet beverages; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis or comprised of cannabidiol (CBD);

 

CLASS 32 – Beverages, namely, {specify the goods in this class e.g., water beverages, isotonic beverages, fruit beverages, syrups for beverages, non-alcoholic carbonated beverages, soft drinks, energy drinks, beer, fruit juices, vegetable juices, sports drinks}; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis or comprised of cannabidiol (CBD);

 

CLASS 33 – Beverages, namely, {specify the goods in this class e.g., alcoholic fruit beverages, distilled spirits, alcoholic beverages except beer; whiskey, rum, vodka, wine}; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis or comprised of cannabidiol (CBD);

 

CLASS 34 – Smokers articles, namely, {specify each and every item in this class e.g., pipes, cigarette rolling papers, cigarettes, cigars, cigarette rolling mats, tobacco grinders, lighters for smokers, flavored oils, not including essential oils, for use in refilling electronic cigarettes, vape pens and cartridges for electronic cigarettes and vape pens}; flavorings other than essential oils for use in connection with smoking substances, namely, tobacco and smoking herbs; tobacco substitutes; electronic cigarettes; oral smokeless vape pens; cartridges, sold empty, for electronic cigarettes and oral smokeless vape pens; electronic cigarette cartridges and oral smokeless vape pen cartridges sold prefilled with flavored oils, other than essential oils; resins in the nature of processed plant resins for use in smoking;  none of the foregoing comprised of Cannabis sativa L, or any oils, extracts or derivatives thereof, or for use in smoking, vaping, preparing or inhaling Cannabis sativa L, or any oils, extracts or derivatives thereof, with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis;

 

CLASS 35 – Retail and wholesale store services, featuring {specify the general items, e.g., clothing, foods, beverages, dietary supplements, medicated skin care products and lotions, tinctures, beverages, pet foods and treats, smoker’s articles}; none of the foregoing goods featured comprised of Cannabis sativa L, or any oils, extracts or derivatives thereof, or for use in smoking, vaping, preparing or inhaling Cannabis sativa L, or any oils, extracts or derivatives therefor, with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis; Online retail and wholesale store services featuring {specify the general items, e.g., clothing, foods, beverages, dietary supplements, medicated skin care products and lotions, tinctures, beverages, pet foods and treats, smoker’s articles}; none of the foregoing goods featured comprised of Cannabis sativa L, or any oils, extracts or derivatives thereof, or for use in smoking, vaping, preparing or inhaling Cannabis sativa L, or any oils, extracts or derivatives therefor, with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis; Distributorship services featuring {specify the general items, e.g., clothing, foods, beverages, dietary supplements, medicated skin care products and lotions, tinctures, beverages, pet foods and treats, smoker’s articles} none of the foregoing goods featured comprised of Cannabis sativa L, or any oils, extracts or derivatives thereof, or for use in smoking, vaping, preparing or inhaling Cannabis sativa L, or any oils, extracts or derivatives therefor, with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis; Providing a website featuring news and information in the field of {specify the subject matter in this class e.g., business, consumer product information, economic information} related to cannabis; Consulting services, namely, {specify the subject of the consulting, e.g., business and business management, marketing, advertising and promotions, retail and wholesale sales};

 

CLASS 36 – Providing a website featuring news and information in the field of {specify the subject matter in this class e.g., financial and investment information} related to the cannabis industry; Consulting services, namely, {specify the subject matter in this class e.g., financial and investment information} related to the Cannabis industry;

 

CLASS 40 – Manufacturing services, namely, {specify the type of services, e.g., custom manufacture of foods, beverages, medications, pet foods and treats, processing of herbs, processing of foods, processing of medicinal and aromatic plants}; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis;  Oil services, namely, processing of oils; none of the foregoing comprised of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis; Consulting services in the field of {specify the type of services, e.g., custom manufacture of foods, beverages, medications, pet foods and treats, processing of herbs, processing of foods, processing of medicinal and aromatic plants};

 

CLASS 41 – Education services, namely, {specify the form of the education e.g., classes, seminars, workshops, conferences, training} in the field of {specify the subject matter, e.g., cannabis products, processing oils, extracts and derivatives from cannabis, the medical risks and benefits of using cannabis}; Entertainment services, namely, {specify the exact services in this class e.g., providing online non-downloadable audio-video recordings, blogs, non-downloadable newsletters, journals, books, magazines} on the subject of {specify the subject matter e.g., cannabis products, processing oils, extracts and derivatives from cannabis, the medical risks and benefits of using cannabis, how to grow and harvest cannabis}; providing a website featuring news, information and commentary in the field of current events reporting related to {specify the subject matter e.g., cannabis products, processing oils, extracts and derivatives from cannabis, the medical risks and benefits of using cannabis, how to grow and harvest cannabis};

 

CLASS 42 – Providing a website featuring news and information on the subject of {specify e.g., medical, scientific, agricultural} research related to cannabis; consulting services in the field of

{Specify e.g., medical, scientific, agricultural} research related to cannabis;

 

CLASS 44 – Medical services none of the foregoing involving the dissemination of Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of more than 0.3 percent on a dry weight basis; providing a website featuring information on the subject of the medical and health risks and benefits of using cannabis; providing a website featuring information related to the agricultural production of, cultivation, farming and harvesting of cannabis; Consulting services, namely, providing medical and health consulting related to the medical and health risks and benefits of using cannabis; Consulting services in the field of farming, harvesting and cultivating cannabis;

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

 

 

 

 

MULTI-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 22 classes; however, applicant submitted a fee(s) sufficient for only ONE class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

Attorney statement required.  Applicant’s attorney must provide the following statement:  “I am an attorney who is an active member in good standing of the bar of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

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

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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.    

 

/Jeffrey J Look/

Jeffrey J Look

Trademark Examining Attorney

Law Office 108

Phone:  571-272-1652

Email:  jeffrey.look@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 May 08, 2020 for

U.S. Trademark Application Serial No. 88407258

 

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. 

 

 

/Jeffrey J Look/

Jeffrey J Look

Trademark Examining Attorney

Law Office 108

Phone:  571-272-1652

Email:  jeffrey.look@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 May 08, 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.”