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:  October 18, 2019

 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 OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

• Cannabis-Related Goods Refusal – No Bona Fide Intent to Lawfully Use in Commerce
• FDCA Refusal – No Bona Fide Intent To Lawfully Use In Commerce
• Drug Paraphernalia Refusal – No Bona Fide Intent To Lawfully Use In Commerce
• Identification Of Goods – Amendment Required
• Multiple-Class Application Requirements
• Disclaimer Required
• Information About Goods Required

 

CANNABIS-RELATED GOODS REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE

 

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce with respect to goods and/or services that are not lawful under federal law.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. 

 

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”).  Thus, the goods and/or services to which the mark is applied must comply with all applicable federal laws.  See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907. 

 

Here, the evidence of record indicates that the items or activities to which the proposed mark will be applied are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971.    See attached evidence from http://goodsupplycannabis.com/en/.

 

The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and any material or preparation containing marijuana.  21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]” as “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions)). 

In this case, the attached excerpt from applicant’s website plainly indicates that applicant’s identified goods include items and/or activities that are prohibited by the CSA, namely, Bath additives; bath herbs; bath oils; bath oils for cosmetic purposes; beauty care cosmetics; beauty creams for body care; beauty gels; beauty lotions; body and beauty care cosmetics; body creams; body oils; cosmetic creams; cosmetic oils; cosmetics and make-up; face and body lotions; face and body milk; face lotion; hair care preparations; hair styling preparations; hand cream; hand lotions; lip care preparations; lip conditioners; lip glosses; liquid soaps; massage creams; massage oils; non-medicated bubble bath preparations; non-medicated preparations for the care of hair; non-medicated preparations for the care of skin; non-medicated preparations for the care of the scalp; non-medicated skin care preparations; oils for toiletry purposes; skin care preparations; skin creams; skin emollients; skin lotions; skin soap; soaps for body care; soaps for personal use, each of the foregoing containing hemp, or cannabidiol, or derivative thereof; Hemp or cannabidiol related products, namely, oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabidiol or derivatives thereof; oils, salves, concentrated pastes, tinctures, tablets and capsules each containing resins and oils derived from hemp; nutraceuticals for medicinal purposes for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; nutraceuticals for medicinal purposes containing cannabidiol or derivatives thereof for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; nutraceuticals for medicinal purposes containing derivatives of hemp, namely, resins and oils for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; topical skin creams, bar and liquid soaps, bath additives, bath herbs, bath oils, body creams, body oils, face and body lotions, face and body milk, face lotion, and skin care preparations each containing derivatives of hemp for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid; personal sexual lubricants; transdermal patches containing cannabidiol or derivatives thereof for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; oral sprays containing cannabidiol for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; hemp, cannabidiol or derivatives thereof for medicinal use; hemp, cannabidiol related product, namely, oils for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; oils derived from hemp for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; Oils and resins derived from hemp for use as comestibles; hemp or cannabidiol related product, namely, oils for use as comestibles; oils derived from hemp or cannabidiol for use as comestibles; food products containing hemp, cannabidiol, resins and cannabidiol oils, namely, butter; Food products containing hemp, cannabidiol or derivatives thereof, namely, chocolates, cookies, brownies, candy and food energy bars; tea, namely, teas containing hemp, cannabidiol or derivatives thereof, and teas containing hemp, cannabidiol or derivatives thereof; Live hemp plants; hemp seeds; Smokers' articles, namely, grinders for use with hemp; dried hemp; derivatives of hemp, namely, resins and oils, not for medical use; cannabidiol and hemp for recreational use; smokers' articles, namely, smoking pipes, pouches for use with hemp, lighters for smokers, oral vaporizers for smokers, all of which contain or are for use with cannabis or hemp. 

 

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.”); 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 consist of or include items or activities that are still prohibited under the Controlled Substances Act, the applicant did not have a valid filing basis for any such items or activities.  To the extent the applicant’s goods are derived solely from cannabis plants that meet the current statutory definition of hemp, such goods may be lawful.

 

Therefore, in order to overcome this refusal, applicant must amend the identification of goods and services to specify that all cannabis-containing items are “solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.”  Please see the complete requirement for an acceptable identification of goods and/or services below.

 

The applicant may also present arguments and evidence against this refusal. 

 

Applicant should note the following additional ground for refusal.

 

FDCA REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

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 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 application identifies items or activities that involve a per se violation of federal law.  See In re Brown, 119 USPQ2d at 1352. The Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food or beverage 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.  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). 

 

In the present case, the application identifies the following goods and/or services for which applicant has alleged a bona fide intent to use in commerce: Hemp or cannabidiol related products, namely, oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabidiol or derivatives thereof; oils, salves, concentrated pastes, tinctures, tablets and capsules each containing resins and oils derived from hemp; nutraceuticals for medicinal purposes for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; nutraceuticals for medicinal purposes containing cannabidiol or derivatives thereof for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; nutraceuticals for medicinal purposes containing derivatives of hemp, namely, resins and oils for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; topical skin creams, bar and liquid soaps, bath additives, bath herbs, bath oils, body creams, body oils, face and body lotions, face and body milk, face lotion, and skin care preparations each containing derivatives of hemp for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid; personal sexual lubricants; transdermal patches containing cannabidiol or derivatives thereof for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; oral sprays containing cannabidiol for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; hemp, cannabidiol or derivatives thereof for medicinal use; hemp, cannabidiol related product, namely, oils for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; oils derived from hemp for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; hemp seeds; Oils and resins derived from hemp for use as comestibles; hemp or cannabidiol related product, namely, oils for use as comestibles; oils derived from hemp or cannabidiol for use as comestibles; food products containing hemp, cannabidiol, resins and cannabidiol oils, namely, butter; Food products containing hemp, cannabidiol or derivatives thereof, namely, chocolates, cookies, brownies, candy and food energy bars; tea, namely, teas containing hemp, cannabidiol or derivatives thereof, and teas containing hemp, cannabidiol or derivatives thereof; all of which contain or are for use with cannabis or hemp.

 

It is unlawful to introduce food or beverages 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.   

 

The applicant may also present arguments and evidence against this refusal. 

 

DRUG PARAPHERNALIA REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE

 

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

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. 

 

Here, the items or activities to which the proposed mark will be applied are broad enough to encompass products that are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport “drug paraphernalia,” which is defined as “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing in the human body a controlled substance.”  21 U.S.C. § 863.  Under the CSA, marijuana is a controlled substance.  21 U.S.C. §§ 812(a), (c), 841, 844.

 

The identification of goods/services includes equipment, product, or material for processing, inhaling, introducing to the body marijuana, namely, smokers' articles, namely, grinders for use with hemp; and smokers' articles, namely, smoking pipes, pouches for use with hemp, lighters for smokers, and oral vaporizers for smokers, all of which contain or are for use with cannabis or hemp. 

 

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).  Accordingly, 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. 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 consist of or include items or activities that are still prohibited under the Controlled Substances Act, namely smokers' articles, namely, grinders for use with hemp; and smokers' articles, namely, smoking pipes, pouches for use with hemp, lighters for smokers, oral vaporizers for smokers, all of which contain or are for use with cannabis or hemp. 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 items are “exclusively for use with hemp/CBD products 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.

 

The applicant may also present arguments and evidence against this refusal. 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS

 

Certain wording in the identification of goods is indefinite and must be clarified because it is unclear the nature and or use of the applicant’s goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Furthermore, the wording in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Further explanation is given below.

 

International Class 3

Original	Issue	Suggestion
Bath additives;	Indefinite, unclear the nature of the goods	Bath additives, namely, bath bombs, bath oils, bubble bath;
bath herbs;	Okay
bath oils;	Okay
bath oils for cosmetic purposes;	Okay
beauty care cosmetics;	Okay
beauty creams for body care;	Okay
beauty gels;	Okay
beauty lotions;	Okay
body and beauty care cosmetics;	Okay
body creams;	Okay
body oils;	Okay
cosmetic creams;	Okay
cosmetic oils;	Okay
cosmetics and make-up;	Okay
face and body lotions;	Okay
face and body milk;	Okay
face lotion;	Okay
hair care preparations;	Okay
hair styling preparations;	Okay
hand cream;	Okay
hand lotions;	Okay
lip care preparations;	Okay
lip conditioners;	Okay
lip glosses;	Okay
liquid soaps	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Non-medicated liquid soaps; in Class 3. Antibacterial liquid soaps; in Class 5.
massage creams;	Okay
massage oils;	Okay
non-medicated bubble bath preparations;	Okay
non-medicated preparations for the care of hair;	Okay
non-medicated preparations for the care of skin;	Okay
non-medicated preparations for the care of the scalp;	Okay
non-medicated skin care preparations;	Okay
oils for toiletry purposes;	Okay
skin care preparations;	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Non-medicated skin care preparations; in Class 3. Medicated skin care preparations; in Class 5.
skin creams;	Okay
skin emollients;	Okay
skin lotions;	Okay
skin soap;	Okay
soaps for body care;	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Soaps for body care, namely, skin soap; in Class 3. Soaps for body care, namely, medicated skin soap; in Class 5.
soaps for personal use, each of the foregoing containing hemp, or cannabidiol, or derivative thereof	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Soaps for personal use, namely, bath soaps; in Class 3. Soaps for personal use, namely, medicated bath soaps; in Class 5; each of the foregoing containing hemp, or cannabidiol, or derivative thereof.

 

Applicant may substitute the following wording, if accurate:

 

“Bath additives, namely, bath bombs, bath oils, bubble bath; bath herbs; bath oils; bath oils for cosmetic purposes; beauty care cosmetics; beauty creams for body care; beauty gels; beauty lotions; body and beauty care cosmetics; body creams; body oils; cosmetic creams; cosmetic oils; cosmetics and make-up; face and body lotions; face and body milk; face lotion; hair care preparations; hair styling preparations; hand cream; hand lotions; lip care preparations; lip conditioners; lip glosses; Non-medicated liquid soaps; massage creams; massage oils; non-medicated bubble bath preparations; non-medicated preparations for the care of hair; non-medicated preparations for the care of skin; non-medicated preparations for the care of the scalp; non-medicated skin care preparations; oils for toiletry purposes; Non-medicated skin care preparations; skin creams; skin emollients; skin lotions; skin soap; Soaps for body care, namely, skin soap; Soaps for personal use, namely, bath soaps; all of the foregoing containing hemp, or cannabidiol (CBD), or derivatives thereof derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

 

International Class 5

Original	Issue	Suggestion
Hemp or cannabidiol related products, namely, oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabidiol or derivatives thereof;	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Non-medicated hemp or cannabidiol related body care products, namely, oils and salves, each containing cannabidiol or derivatives thereof; in Class 3. Medicated hemp or cannabidiol related body care products, namely, oils and salves, each containing cannabidiol or derivatives thereof; Hemp or cannabidiol related products, namely, dietary and nutritional supplements in the form of concentrated pastes, tinctures, tablets and capsules, each containing cannabidiol or derivatives thereof; in Class 5.
oils, salves, concentrated pastes, tinctures, tablets and capsules each containing resins and oils derived from hemp;	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Non-medicated oils and salves, each containing resins and oils derived from hemp; in Class 3. Medicated oils and salves, each containing resins and oils derived from hemp; Dietary and nutritional supplements in the form of concentrated pastes, tinctures, tablets and capsules, each containing resins and oils derived from hemp; in Class 5.
nutraceuticals for medicinal purposes for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy;	Okay
nutraceuticals for medicinal purposes containing cannabidiol or derivatives thereof for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy;	Okay
nutraceuticals for medicinal purposes containing derivatives of hemp, namely, resins and oils for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy;	Okay
topical skin creams, bar and liquid soaps, bath additives, bath herbs, bath oils, body creams, body oils, face and body lotions, face and body milk, face lotion, and skin care preparations each containing derivatives of hemp for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid;	Indefinite, unclear the nature of the goods	Medicated body care products, namely, topical skin creams, bar and liquid soaps, bath additives, bath herbs, bath oils, body creams, body oils, face and body lotions, face and body milk, face lotion, and skin care preparations each containing derivatives of hemp for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid;
personal sexual lubricants;	Okay
transdermal patches containing cannabidiol or derivatives thereof for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy;	Okay
oral sprays containing cannabidiol for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy;	Okay
hemp, cannabidiol or derivatives thereof for medicinal use;	Indefinite, unclear the nature of the goods	{applicant must specify nature of the goods e.g. teas, oils, tinctures, etc.} containing hemp, cannabidiol or derivatives thereof for medicinal use;
hemp, cannabidiol related product, namely, oils for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy;	Okay
oils derived from hemp for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy	Okay

 

Applicant may substitute the following wording, if accurate:

 

“Medicated hemp or cannabidiol related body care products, namely, oils and salves; Hemp or cannabidiol related products, namely, dietary and nutritional supplements in the form of concentrated pastes, tinctures, tablets and capsules; Medicated oils and salves, each containing resins and oils derived from hemp; Dietary and nutritional supplements in the form of concentrated pastes, tinctures, tablets and capsules; nutraceuticals for medicinal purposes for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; nutraceuticals for medicinal purposes containing cannabidiol or derivatives thereof for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; nutraceuticals for medicinal purposes containing derivatives of hemp, namely, resins and oils for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; Medicated body care products, namely, topical skin creams, bar and liquid soaps, bath additives, bath herbs, bath oils, body creams, body oils, face and body lotions, face and body milk, face lotion, and skin care preparations each containing derivatives of hemp for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid; Personal sexual lubricants; Transdermal patches containing cannabidiol or derivatives thereof for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; Oral sprays containing cannabidiol for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; {applicant must specify nature of the goods e.g. teas, oils, tinctures, etc.} containing hemp, cannabidiol or derivatives thereof for medicinal use; Hemp, cannabidiol related product, namely, oils for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; Oils derived from hemp for medicinal use for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid and for management of opioid addiction and relief of epilepsy; all of the foregoing containing hemp, or cannabidiol (CBD), or derivatives thereof derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

 

International Class 29

Original	Issue	Suggestion
Oils and resins derived from hemp for use as comestibles;	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Oils and resins derived from hemp for use in the manufacture of comestibles food; in Class 1. Edible oils and resins derived from hemp for culinary purposes; in Class 29.
hemp or cannabidiol related product, namely, oils for use as comestibles;	Indefinite, unclear the nature of the goods	Hemp or cannabidiol related product, namely, edible oils for use as comestibles;
oils derived from hemp or cannabidiol for use as comestibles;	Indefinite, unclear the nature of the goods	Oils derived from hemp or cannabidiol for use as comestibles, namely, edible hemp oils;
food products containing hemp, cannabidiol, resins and cannabidiol oils, namely, butter	Okay

 

Applicant may substitute the following wording, if accurate:

 

“Edible oils and resins derived from hemp for culinary purposes; Hemp or cannabidiol related product, namely, edible oils for use as comestibles; Oils derived from hemp or cannabidiol for use as comestibles, namely, edible hemp oils; Food products containing hemp, cannabidiol, resins and cannabidiol oils, namely, butter; all of the foregoing containing hemp, or cannabidiol (CBD), or derivatives thereof derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

 

International Class 30

Original	Issue	Suggestion
Food products containing hemp, cannabidiol or derivatives thereof, namely, chocolates, cookies, brownies, candy and food energy bars;	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Food products containing hemp, cannabidiol or derivatives thereof, namely, chocolates, cookies, brownies, candy and cereal based food energy bars; in Class 30. Food products containing hemp, cannabidiol or derivatives thereof, namely, fruit-based raw food energy bars; in Class 29.
tea, namely, teas containing hemp, cannabidiol or derivatives thereof, and teas containing hemp, cannabidiol or derivatives thereof	Okay

 

Applicant may substitute the following wording, if accurate:

 

“Food products containing hemp, cannabidiol or derivatives thereof, namely, chocolates, cookies, brownies, candy and cereal based food energy bars; tea, namely, teas containing hemp, cannabidiol or derivatives thereof, and teas containing hemp, cannabidiol or derivatives thereof; all of the foregoing containing hemp, or cannabidiol (CBD), or derivatives thereof derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

International Class 31

Original	Issue	Suggestion
Live hemp plants;	Okay
hemp seeds	Indefinite, unclear the nature of the goods and overbroad, could fall into more than one class	Processed edible hemp seeds, not being seasonings or flavorings; in Class 29. Hemp seeds for use as seasonings; in Class 30. Agricultural seeds, namely, hemp seeds; in Class 31.

 

Applicant may substitute the following wording, if accurate:

 

“Live hemp plants; Agricultural seeds, namely, hemp seeds; all of the foregoing containing hemp, or cannabidiol (CBD), or derivatives thereof derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

International Class 32

 

“Smoothies, fruit beverages and fruit juices, carbonated soft drinks, and energy drinks each containing hemp, cannabidiol or derivatives thereof; all of the foregoing containing hemp, or cannabidiol (CBD), or derivatives thereof derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

International Class 34

Original	Issue	Suggestion
Smokers' articles, namely, grinders for use with hemp;	Okay
dried hemp;	Indefinite, unclear the purpose of the goods	Dried hemp for smoking purposes;
derivatives of hemp, namely, resins and oils, not for medical use;	Indefinite, unclear the purpose of the goods	Electronic oral vaporizer liquid derived from hemp, namely, resins and oils, not for medical use;
cannabidiol and hemp for recreational use;	Indefinite, unclear the nature and purpose of the goods	Cannabidiol and hemp oils, waxes, resins for recreational smoking use;
smokers' articles, namely, smoking pipes, pouches for use with hemp, lighters for smokers, oral vaporizers for smokers	Okay

 

Applicant may substitute the following wording, if accurate:

 

“Smokers' articles, namely, grinders for use with hemp; Dried hemp for smoking purposes; Electronic oral vaporizer liquid derived from hemp, namely, resins and oils, not for medical use; Cannabidiol and hemp oils, waxes, resins for recreational smoking use; Smokers' articles, namely, smoking pipes, pouches for use with hemp, lighters for smokers, oral vaporizers for smokers; all of the foregoing containing or for use with hemp, or cannabidiol (CBD), or derivatives thereof derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods 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 seven (7) classes; however, applicant submitted a fee(s) sufficient for only six (6) 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See 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.

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “SUPPLY” in the mark because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached evidence from American Heritage dictionary shows this wording means “to provide something necessary or desired to. Thus, the wording merely describes applicant’s goods because the applicant provides the necessary hemp supplies to consumers.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “SUPPLY” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

INFORMATION ABOUT GOODS REQUIRED

 

To permit proper examination of the application, applicant must submit a written statement indicating whether all the goods and/or services identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971 (see questions below). See 37 C.F.R. §2.69; TMEP §907. The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §8 02(16) (defining “[marijuana]”). The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.

 

The requested information should include fact sheets, instruction manuals, brochures, and/or advertisements. If these materials are unavailable, applicant should submit similar documentation for goods and/or services of the same type, explaining how its own product or services will differ.  If the goods and/or services feature new technology and no information regarding competing goods and/or services is available, applicant must provide a detailed factual description of the goods and/or services.

 

Factual information about the goods and/or services must clearly indicate what the goods and/or services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.

 

In addition, applicant must answer the questions below:

 

1. Do or will any of applicant’s identified goods include or contain marijuana or cannabis, marijuana-based preparations or cannabis-based preparations, extracts or derivatives from marijuana or cannabis, including tetrahydrocannabinol (THC), synthetic marijuana, or any other controlled substance under the CSA?

 

2. Do or will applicant’s identified goods include any oils, extracts, ingredients or derivatives from the plant Cannabis sativa L (also known as cannabis, marijuana or hemp) or from synthetic marijuana?

 

3. If the answer to Question 2 is “yes,” does the hemp used or to be used in applicant’s goods contain more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry weight basis?

 

4. Do or will the goods include cannabidiol (CBD)?

 

5. If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?

 

6. If applicant has any documentation relative to the CBD content of the oils, extracts or derivatives used or to be used in the goods, please submit them with the response.

 

7. Do or will any of applicant’s identified goods include or contain hemp seed oil?

 

8. Which part or parts of the hemp plant are used in obtaining the oils, extracts, ingredients or derivatives?

 

9. Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L (also known as hemp, marijuana or cannabis)?

 

10. Is applicant currently seeking FDA approval of the marketing of its goods identified in the application?

 

11. If the answer to Question 10 is “yes,” please provide a copy of such application.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/L. Dantzler/

Lauren A. Dantzler

Examining Attorney

Law Office 122

(571) 272-7348

lauren.dantzler@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 October 18, 2019 for

U.S. Trademark Application Serial No. 88425673

 

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. 

 

 

/L. Dantzler/

Lauren A. Dantzler

Examining Attorney

Law Office 122

(571) 272-7348

lauren.dantzler@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 October 18, 2019, 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.”