United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88416539
Mark: CBD
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Correspondence Address:
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Applicant: Atif Ashraf
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: April 29, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH RESULTS
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, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.
SUMMARY OF ISSUES:
· Advisory: Prior-Filed Applications
· Section 2(e)(1) Refusal – Merely Descriptive
· Generic Advisory
· Identification of Goods Amendment Required
· Attorney Bar Information Required
ADVISORY: PRIOR-FILED APPLICATION
The filing date of pending U.S. Application Serial No. 88353600 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. 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 application.
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 mark in the referenced application. 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.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose, function or use of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
The attached evidence from merraim-webster.com shows that the term CBD means a non-intoxicating cannabinoid found in cannabis and hemp. Applicant’s goods are “tobacco and tobacco substitutes; Electronic cigarettes and oral vaporizers for smokers; Smokeless cigarette vaporizer pipe.” Thus, the term CBD merely describes a feature of applicant’s goods because CBD immediately conveys to consumers that applicant’s goods contain the non-intoxicating cannabinoid found in cannabis and hemp.
In accordance with the attached evidence, the mark CBD is descriptive of applicant’s goods because the mark immediately conveys to consumers that applicant’s goods contain the non-intoxicating cannabinoid found in cannabis and hemp. Therefore, applicant’s mark is merely descriptive and registration on the Principal Register is refused under Section 2(e)(1).
GENERIC ADVISORY
In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified goods. “A generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness” and thus is not entitled to registration on either the Principal or Supplemental Register under any circumstances. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1336, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986)); see TMEP §§1209.01(c) et seq., 1209.02(a). Therefore, the trademark examining attorney cannot recommend that applicant amend the application to proceed under Trademark Act Section 2(f) or on the Supplemental Register as possible response options to this refusal. See TMEP §1209.01(c).
IDENTIFICATION OF GOODS AMENDMENT REQUIRED
Applicant is advised that as the mark features the acronym “CBD,” it conveys to potential purchasers the impression that applicant’s goods do contain cannabidiol (“CBD”) in sufficient levels to have a therapeutic or medical effect. This feature or characteristic is considered desirable for applicant’s goods because CBD is touted as being beneficial for pain management, anxiety and sleep problems, depression treatments, muscle spasms, digestive issues and skin ailments, etc. However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
Please see the attached examples from the following sources emphasizing the desirability of CBD as an ingredient in smoking articles.
· http://thecbdbenefits.com/learn/5-benefits-of-smoking-cbd-hemp-flowers/
· http://www.healthline.com/health/cbd-vs-thc
· http://www.newsweek.com/2019/09/06/cbd-oil-miracle-drug-science-1456629.html
· http://time.com/5516745/cbd-oil-legal-healthy/
To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification to the following, if accurate:
IC 034: Tobacco and tobacco substitutes; Electronic cigarettes and oral vaporizers for smokers; Smokeless cigarette vaporizer pipe; all of the foregoing containing CBD solely derived from hemp containing no more than .3% THC on a dry weight basis.
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.
ATTORNEY BAR INFORMATION REQUIRED
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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Rebecca D. Coughlan/
Trademark Examining Attorney
Law Office 113
Phone: 571-272-4975
Email: rebecca.coughlan@uspto.gov
RESPONSE GUIDANCE