United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88410458
Mark: AURORA
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Correspondence Address: CHRISTENSEN O'CONNOR JOHNSON KINDNESS
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Applicant: 1769474 ALBERTA LTD.
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Reference/Docket No. ACI-2-59056
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: May 18, 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.
SUMMARY OF ISSUES:
I. Partial Trademark Act Section 2(d) Refusal
II. Prior-Filed Pending Applications
III. Partial FDCA Refusal
IV. Identification Amendment Required
V. Multi-Class Application Requirements – Advisory
VI. Information About Goods Required
VII. Entity Clarification Required
I. PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Class 003 Refusals:
· U.S. Registration No. 5502881, AURORA, for “Mouthwashes, not for medical purposes.”
· U.S. Registration No. 3966597, AURORA, for “Non-medicated personal care products, namely, shampoos and hair conditioners, skin moisturizers, human body conditioning and skin treatment lotions, human body conditioning and skin treatment creams, anti-aging and stretch mark creams, non-medicated lotions and creams for hands, nails, skin, face, hair, varicose veins, foot and leg muscles and joints all with cosmetic effect only, depilatory lotions and creams, shaving lotions and creams, non-medicated skin care preparations, namely, lotions and creams for treating dry and damaged skin, anti-aging, firming, anti-wrinkle, stretch marks, under eye and eyelid firming; gels, namely, depilatory gels, shaving gels, shower gels, moisturizing and anti-aging gels, stretch mark gels, oils, namely, bath oils, body oils, cosmetic oils, and nutritional oils for cosmetic purposes, non-medicated human body serums, petroleum jelly for cosmetic purposes, soaps, liquid soaps, bar soaps, anti-bacterial liquid soaps, anti-bacterial bar soaps, hand sanitizers, human body sprays, refresher body sprays, body washing soaps, bubble bath, body and facial scrubs, masks, namely, beauty masks, facial masks, body masks, gel eye masks, skin masks, and skin moisturizer masks, face peels, non-medicated skin care preparations, and wrinkle removing skin care preparations, cosmetic sun protection creams and lotions, sun creams and lotions with or without SPF, sun block, sunless tanning creams and lotions, talcum powders; personal deodorants; all purpose cleaners; floor cleaning preparation; glass cleaners; laundry bleach; fabric softener; laundry detergents and soaps; dish detergents and soaps; pre-moistened sheets, sponges and towelettes impregnated with dishwashing detergent; cleaning solvents.”
· U.S. Registration No. 0251731, BELLA AURORA, for “toilet preparations-namely, face powder and face cream.”
Class 005 Refusals (based on currently misclassified Class 032 goods “Protein supplement shakes; dietary supplement drinks”):
Class 034 Refusals:
Class 044 Refusals:
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
A. Comparison 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Class 003 Refusals
In the present case, applicant’s mark is AURORA and registrants’ marks are AURORA – all in standard characters. These marks are entirely identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id. Therefore, the marks are confusingly similar.
In addition, applicant’s mark AURORA is also similar to registrant’s mark BELLA AURORA because they are identical in part as to the term AURORA. Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part, and thus the marks are confusingly similar.
Class 005 Refusals (based on currently misclassified Class 032 goods “Protein supplement shakes; dietary supplement drinks”):
First, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the wording ALGAE in the registered marks AURORA ALGAE is merely descriptive of or generic for the registrant’s goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording AURORA the more dominant element of the mark.
As such, the dominant portion of the registered marks, AURORA, is virtually identical to applicant’s mark AURORA in terms of appearance and sound. Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar). This is similarly true for the mark AURORARED, AURORAGREEN, AURORABLUE, and NATURE AURORA. All of these marks are identical in part as to the term AURORA, and thus are similar in sound, appearance, and meaning. Applicant’s mark contains no other terms that might differentiate it from the registered marks.
Therefore, the marks are confusingly similar.
Class 034 Refusals:
First, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the wording BARREL AGED in the registered mark AURORA BARREL AGED and 1903 EDITION in the mark LA AURORA 1903 EDITION is merely descriptive of or generic for the registrant’s goods. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording AURORA the more dominant element of the marks.
Further, the term LA is translated to mean THE. Adding THE in front of a mark is not a sufficient distinction to obviate confusion. When comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).
Accordingly, applicant’s mark AURORA is virtually identical to the dominant portions of registrant’s marks, all AURORA in both appearance, sound, and overall meaning. The registered marks contain a translation statement noting that LA AURORA means daybreak. The attached dictionary evidence from the American Heritage Dictionary shows that AURORA means dawn, which is also the exact same definition of DAYBREAK. Therefore, these marks are confusingly similar.
Class 044 Refusals:
In the present case, applicant’s mark is AURORA and registrant’s mark is AURORA. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
In addition, applicant’s mark AURORA is also similar to registrant’s mark AURORA QUICKCARE because applicant’s mark is identical in part as to AURORA, and thus is similar in sound, appearance, and overall commercial impression. Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Therefore, these marks are confusingly similar.
B. Comparison of the Goods and Services
Class 003 Refusals:
In this case, the goods in the application and registration for AURORA (3966597) are virtually identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Although applicant’s goods contain the limitation that they contain ingredients derived from hemp, registrant’s identification does not contain any limitations, and therefore it is presumed that registrant’s goods encompass all types of the goods listed, including those containing hemp. Thus, applicant’s and registrant’s goods and/or services are legally identical and related. 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)). Further, for those goods not identical, they often found made by the same manufacturer under the same mark and/or in the same channels of trades as they are all cosmetic products.
This is similarly true with respect to registrant’s mark BELLA AURORA for face cream. In this case, the application uses the broad wording “skin creams,” which presumably encompasses all goods of the type described, including registrant’s more narrow face cream. 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). Again, although applicant’s identification notes that applicant’s goods contain hemp, registrant’s identification does not contain any restrictions, and therefore it is presumed that registrant’s face creams include all types of face creams, including those containing hemp. Thus, applicant’s and registrant’s goods are legally identical.
Finally, applicant’s goods are also related to mouthwashes, not for medical purposes in the registration for the mark AURORA. In particular, Tom’s of Maine, Humankind, and Aesop all make personal care products including mouthwash, deodorant for personal use, and various other personal care products such as soaps, cleansers, and balms.
Therefore, these applicant’s goods and registrants’ goods are related.
Class 005 Refusals (based on currently misclassified Class 032 goods “Protein supplement shakes; dietary supplement drinks”):
In this case, the registrations use broad wording to describe their goods as nutritional/dietary supplements, which presumably encompasses all goods of the type described, including applicant’s more narrow type of nutritional supplement, which is in the form of a drink or shake. 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). Thus, applicant’s and registrants’ goods are legally identical. 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)).
Therefore, these goods are related.
Class 034 Refusals:
Here, applicant’s goods are highly related to registrant’s goods because they are commonly found in the same channels of trade, namely, smoke shops, and are sold to smokers. The attached evidence from Bnb Tobacco, Cigaret Shopper and CDO Tobacconist clearly illustrates this relatedness as it shows that companies who commonly cigars also sell pipes, electronic smoking pipes and smoking accessories such as grinders under the same mark. Accordingly, because consumers are accustomed to seeing these goods stem from a single source, these goods and services are considered related.
Class 044 Refusals:
In this case, the registrations use broad wording to describe their services, namely, “Providing health information,” which presumably encompasses all goods of the type described, including health information as it relates to cannabis. 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). Thus, applicant’s and registrants’ goods are legally identical. 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)).
Therefore, these services are related.
In sum, the evidence demonstrates that consumers are likely to encounter the parties’ goods and services in the same commercial contexts. Given the similarity of the marks overall and the related nature of the goods and services, consumers encountering the marks are likely to mistake the underlying sources of the goods and services.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
The applicant should note the following potential grounds for refusal.
II. PRIOR-FILED APPLICATION(S)
The filing dates of pending U.S. Application Serial Nos. 87886859 (AURORA), 88140199 (LA AURORA), 88317891 (AURORA KOMBUCHA) 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.
Even if applicant elects not to respond at this time, applicant must still note and respond to the following additional refusals.
III. PARTIAL FDCA REFUSAL
Please note that this refusal applies only to applicant’s Class 032 goods (including all currently misclassified goods).
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.
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 is to 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 items or activities listed in the application in connection with which the mark is intended to be used involve a per se violation of federal law. See In re Brown, 119 USPQ2d at 1352. The federal Food, Drug, and Cosmetic Act (FDCA) prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug approved under Section 355 of the Act or a biological product licensed under 42 U.S.C. §262. 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 FDCA and does not include an article that is approved as a new drug under 21 U.S.C. §355, certified as an antibiotic under 21 U.S.C. §357, or licensed as a biologic under 42 U.S.C. §262).
Cannabidiol (CBD) is a chemical constituent of the cannabis plant was the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements. On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved the first prescription pharmaceutical formulation of plant-derived CBD, Epidiolex®, for the treatment of two rare forms of epilepsy, Lennox-Gastaut syndrome and Dravet syndrome. 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 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 copy attached.
In the present case, the application identifies applicant’s goods and/or services as follows:
International Class 032: Hemp or hemp derivative infused carbonated beverages; hemp or hemp derivative infused non-carbonated beverages; non-alcoholic beverages infused with hemp or hemp derivatives, namely smoothies, fruit beverages and fruit juices, carbonated soft drinks, energy drinks and waters, protein supplement shakes, sports recovery drinks, isotonic drinks, dietary supplement drinks, meal replacement drinks, fruit-flavored beverages, honey-based beverages, non-alcoholic tea-based beverages, carbonated soft drinks, non-dairy soy beverages, energy drinks; cocoa-based beverages, coffee-based beverages, herbal tea beverages; performance beverages for athletes
These goods currently listed in Class 032 contain “hemp or hemp derivatives,” which is broad enough to encompass CBD. It is unlawful to introduce food to which CBD, an “article that is approved as a new drug,” has been added into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. 21 U.S.C. §§321(ff)(3)(B)(ii), 331(d), 355(a); see also 21 U.S.C. §352(f)(1) regarding mislabeled drugs. See also 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 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 use the applied-for mark in lawful 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.
IV. IDENTIFICATION AMENDMENT REQUIRED
Finally, in order to ensure compliance with the Controlled Substance Act, applicant must explicitly state that the hemp goods have a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis. Failure to do so may result in applicant’s goods being refused under the Controlled Substance Act.
If accurate, applicant may adopt the following identification in their appropriate international classes:
International Class 003: Skin, hair, body and personal preparations containing hemp and derivatives thereof, namely, cosmetics, makeup, makeup removers, eye creams, hand
creams, skin creams, non-medicated skin serums, skin topical oils for cosmetic use, skin emollients, skin lotions, non-medicated skin
care treatment {“treatment” is a Class 005 wording} preparations, facial and body skin masks, face and body milk, skin soap, body powders for
personal use, bath and shower beauty {shower soap is indefinite} soaps, non-medicated liquid soap, non-medicated moisturizing
{indefinite –specify, e.g., body} balms, and moisturizing body sprays, bath and shower {specify, shower soap is indefinite, e.g.,
bar} soaps, bath gels, bath lotions, non-medicated bath salts, bath body scrubs, bath oils, bubble bath, bath herbs, bath bombs, exfoliant
{indefinite and broad as it could include cosmetic utensils in Class 021, a Class 003 example would be: non-medicated exfoliating preparations for skin}, nail enamel and nail
care preparations, nail polish remover, non-medicated lip care preparations, {indefinite, generally clarify, e.g., non-medicated lip care preparations in the
nature of} lip conditioners, lip glosses, lipstick, non-medicated sun skin care preparations, sun block, sun screen, self-tanning preparations, after-sun skin soothing and
moisturizing preparations in the nature of {indefinite, clarify, e.g., gels, lotions}, pre-shave and after shave lotions, pre-shave and after shave creams, pre-shave and after
shave balms, pre-shave and after shave splashes in the nature of {indefinite – further clarify using common commercial name, e.g., body splash}, pre-shave and after shave gels,
personal use {amended for clarification} deodorants and antiperspirants, hair care preparations, hair oils, hair masks, non-medicated scalp treatment
cream {indefinite – needed further clarification}, hair sunscreen preparations {further clarify, e.g., in the nature of sun screen for the scalp, in the nature
of sun screen for the hair}, non-medicated preparations for the care of the scalp, essential oils for aromatherapy, essential oils for perfumery and personal use, scented oils for personal use,
massage creams, massage cream, massage oil, skin toners; all of the foregoing containing hemp or hemp derivatives having a delta-9 tetrahydrocannabinol concentration of not more
than 0.3 percent on a dry weight basis
International Class 005[if adopted]: Protein supplement shakes; dietary supplement drinks; all of the foregoing containing hemp or hemp derivatives having a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis
International Class 009: Downloadable electronic publications, namely, newsletters, brochures, reports and guides in the field of cannabis
International Class 016: Printed publications, namely, newsletters, brochures, reports and guides in the field of cannabis
International Class 030[if adopted]: Non-alcoholic tea-based beverages; cocoa-based beverages; coffee-based beverages; herbal tea beverages; all of the foregoing containing hemp or hemp derivatives having a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis
International Class 032: Hemp or hemp derivative infused {indefinite and broad – further clarify, e.g., non-alcoholic} carbonated beverages; hemp or
hemp derivative infused non-carbonated beverages, namely, {further clarify, e.g., non-alcoholic frozen flavored beverages, fruit drinks, etc.}; non-alcoholic beverages infused
with hemp or hemp derivatives, namely, smoothies, fruit beverages and fruit juices, carbonated soft drinks, energy drinks and {indefinite – further clarify, e.g., still, drinking,
etc.} waters, protein supplement shakes {misclassified – Class 005 good}, sports recovery drinks, isotonic drinks, dietary
supplement drinks {misclassified – Class 005 good}, meal replacement drinks {broad and indefinite – further clarify the nature/purpose of the drink and
classify accordingly, e.g., if a nutritional supplement, then it should be in Class 005, but if primarily a Class 032 drink that also contains nutritional value, e.g., fruit juices containing
nutritional supplements, it is in Class 032}, fruit-flavored beverages, non-alcoholic honey-based beverages, non-alcoholic tea-based beverages
{misclassified – Class 030 good}, carbonated soft drinks {duplicate good – delete}, non-dairy soy-based
beverages not being milk substitutes {indefinite and broad – if this is a milk-substitute then it’s a Class 029 good}, energy drinks; cocoa-based
beverages {misclassified – Class 030 good}, coffee-based beverages {misclassified – Class 030 good}, herbal tea
beverages {misclassified – Class 030 good}; performance beverages for athletes, namely, {further clarify Class 032 good using common commercial name, e.g., sports drinks};
all of the foregoing containing hemp or hemp derivatives having a delta-9 tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis
International Class 034: Smokers' articles, namely, smoking pipes, electronic smoking pipes, tobacco grinders; none of the foregoing for use with hemp or hemp derivatives with delta-9 tetrahydrocannabinol (THC) concentration of greater than 0.3 percent on a dry weight basis
International Class 041: Providing a website featuring entertainment information in the field of cannabis culture; providing news via a website in the nature of current event reporting relating to cannabis and cannabis culture; non-downloadable electronic publications, namely, newsletters, brochures, reports and guides in the field of cannabis
International Class 042: Computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers and from virtual communities, and engage in social networking in the field of cannabis
International Class 044: Operation of a {broad and indefinite wording} Providing a website providing featuring medical and agricultural {agricultural information is too broad – must clarify to something
that has a Class 044 service subject matter, e.g., plant care, plant identification for horticultural purposes, etc.} information in the field of cannabis
An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
V. MULTIPLE-CLASS APPLICATION REQUIREMENTS – ADVISORY
The application identifies goods and/or services that are classified in at least 10 classes; however, applicant submitted a fee(s) sufficient for only 8 class(es). In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
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 10 classes; however, applicant submitted a fee(s) sufficient for only 8 class(es). 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.
The fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
VI. INFORMATION ABOUT GOOD REQUIRED
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.
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.
VII. ENTITY CLARIFICATION REQUIRED
Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “Corporation” in this instance than to the legal entities listed in TMEP Appendix D. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
How to respond. Click to file a response to this nonfinal Office action.
/Elle Marino/
Trademark Examining Attorney
Law Office 121
Phone: (571) 270-3699
E-mail: elle.marino@uspto.gov
RESPONSE GUIDANCE
