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 05, 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 – PRIOR PENDING APPLICATIONS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

The filing dates of pending U.S. Application Serial Nos. 87533696 and 88141979 precede applicant’s filing date.  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.

 

REQUEST FOR INFORMATION – RULE 2.61(B)

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. 

In addition, applicant must submit a written statement indicating whether the goods/services identified in the application comply with the Food, Drug and Cosmetic Act (FDCA). 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).   See 37 C.F.R. §2.69; TMEP §907.  Furthermore, under the 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);

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

1. Do or will the goods be comprised of any ingredients, oils, extracts or derivatives of 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 goods 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. If the goods in Class 5 are intended to affect the structure and function of the body and they contain CBD, is applicant currently seeking FDA approval of the marketing of its goods identified in the application?
6. If the answer to Question 5 is “yes,” please provide a copy of such application.

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.

ADVISORY – SOME GOODS COMPRISED OF CBD MAY VIOLATE THE FOOD, DRUG AND COSMETIC ACT

Applicant is advised that depending on its response to the above Request for Information, registration may be refused under Sections 1 and 45 of the Trademark Act, 15 USC Section 1051 and 1127, because the goods or services are not in compliance with the federal Food, Drug and Cosmetic Act (FDCA).

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.

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.  Furthermore, it is also unlawful to introduce into commerce 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.  21 U.S.C. § 321(g)(1) 

 

IDENTIFICATION OF GOODS

 

Some of the wording in the identification of goods in both classes is indefinite and must be clarified because the wording fails to identify specific goods and could include goods in more than one class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  More specifically, in Class 3, the wording “antibacterial skin soaps and gels” is misclassified.  Such goods are classified in Class 5.  Therefore, these goods must be move the appropriate class.

 

The term “face masks” is too broad to accept as it could include things such as paper face masks in Class 28, swimming face masks in Class 9, knit face masks in Class 25 or face masks for health care providers in Class 10.  If the goods are in the nature of a beauty mask for the face, then the proper class is Class 3.  Likewise, the term “eye patches” is unacceptable as it could include eye patches for medical purposes in Class 5 or gel eye patches for cosmetic purposes in Class 3.  Applicant must further identify these items and classify them accordingly.

 

The wording “face wipes,” “facial toner” and “hand soap” must be further specified.  Face wipes could include sanitizing, disinfecting or antiseptic wipes in Class 5 or pre-moistened cosmetic wipes or wipes impregnated with a skin cleanser in Class 3.  As for facial toners and hand soaps, applicant must specify whether they are medicated or not.  Medicated facial toners and soaps are in Class 5 while non-medicated toners and soaps are in Class 3.  Applicant must further define these items and classify them in the proper class.

 

The term “deodorant” must be further defined. Deodorants for personal use are in Class 3 while deodorants for the air, cars, rooms, households, pet litter boxes are in Class 5.  Applicant must further define these goods and classify them properly.

 

In Class 5, the goods identified as “pain patches” and “menstrual patches” must be further clarified to indicate that they are transdermal patches for use in the treatment of specific conditions, e.g., pain, menstruation.  The wording “neuromuscular bandages” is too broad as it could include bandages impregnated with pharmaceutical or therapeutic substances in Class 5 or supportive or orthopedic bandages in Class 10.  With regard to “nasal inhalers,” this is unacceptable as it could include inhalers sold prefilled with pharmaceutical preparations in Class 5, inhalers sold filled with essential oils for use in aromatherapy or for a non-medical use in Class 3, or inhalers for therapeutic or medical use which are sold empty in Class 10.  Applicant must further specify the nature of these goods and classify them accordingly.

 

The wording “nutraceuticals” is unclear.  If the goods are in the nature of dietary supplements, applicant should so indicate.  If the nutraceuticals are for the treatment of specific conditions, then applicant must indicate the nature of the condition, e.g., dietary disorders, pain, anxiety, insomnia.  Similarly, the wording “tinctures, tablets, capsules” in Class 5 is unclear as to whether these are the form of delivery for a nutritional supplement or if they are for some other medicinal use such as treating pain, allergies, colds, asthma, insomnia, nausea or anxiety.  Applicant must clarify this language. 

 

Applicant may substitute the following wording, 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 3 – Body and beauty personal care products, namely, facial cleanser, beauty face masks, gel eye patches for cosmetic use; face wipes, namely, {specify e.g., wipes impregnated with cleansers, pre-moistened cosmetic wipes}; cosmetic facial toner; bath gels, bath soaps in liquid, solid or gel form; body balm, body butters, body creams, body lotions, body powder, body scrub, body washes for humans; bubble bath, shower gel, bath oils, cream soaps for hands, exfoliate creams, foam bath; foot scrub; hand creams, hand lotions, non-medicated hand soaps; deodorant for personal use; massage oils; shaving preparations, namely, shaving creams, shaving foams, shaving gels, and shaving lotions; shampoo, conditioner; cologne, perfume, eau de toilette, after shave, body spray used as a personal deodorant and as fragrance; suntan lotion and oils, indoor tanning lotion, tanning accelerators, tanning sprays, tanning wipes, bronzers, after tan moisturizers and lotions; cosmetics, eye shadow, eye pencils, brow pencils, concealer, foundation, blush, lip balm, lip cream, lip gloss, lip gloss palette, make-up kits comprised of lip balms, lip creams, and lip glosses, lipsticks; mascara, face powder, moisturizers for the skin and body; nasal inhalers sold prefilled with essential oils for aromatherapy or non-medical use;

 

CLASS 5 – Antibacterial skin soaps and gels; face wipes, namely, {specify e.g., anti-bacterial, antiseptic, sanitizing and disinfecting wipes}; medicated facial toners; {specify e.g., medicated, disinfecting, antiseptic} hand soaps; Transdermal patches for the treatment of pain and menstruation; neuromuscular bandages, namely, bandages impregnated with pharmaceutical or therapeutic substances; nasal inhalers sold pre-filled with pharmaceutical preparations; nutraceuticals, namely, {specify either for use as a dietary supplement or the conditions treated, e.g., for the dietary disorders, pain, anxiety, insomnia}; nutritional supplements in tincture, tablet, and capsule form; powdered nutritional supplement drink mixes;

 

CLASS 10 – Neuromuscular bandages, namely, {specify the goods in this class e.g. supportive or orthopedic bandages}; nasal inhalers for medical or therapeutic use, sold empty;

 

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 THREE classes; however, applicant submitted a fee(s) sufficient for only TWO classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 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 05, 2020 for

U.S. Trademark Application Serial No. 88407890

 

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 05, 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.”