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. 88425723
Mark: SOOTHE
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Correspondence Address:
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Applicant: Aphria Inc.
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Reference/Docket No. 425488-1
Correspondence Email Address: |
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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 22, 2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – INTERNATIONAL CLASSES 003, 005, AND 34 ONLY
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
Comparison of the Marks
In the present case, applicant’s mark is “SOOTHE” and registrants’ marks in Registration Numbers 2709322, 4899468, and 5822493 are “SOOTHE”. 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.
Further, the mark in Registration Number 4821166 consists of the term “SOOTHE” with a design element. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, the marks are confusingly similar.
Comparison of the Goods
The applicant’s goods include, in pertinent part, “bath oils; body oils; cosmetic oils; massage oils; oils for toiletry purposes; and skin care preparations” in Class 003, a variety of medicinal oils, salves, pastes, tinctures, tablets and capsules in Class 005, and “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” in Class 034.
The registrants’ goods are “medicine for the relief of upset stomach, indigestion, nausea, heartburn and diarrhea symptoms” (2709322); “Throat lozenges” (4821166); “Essential oils for medicinal uses” (4899468); and “Electronic vaporizers and atomizers for electronic cigarette users and oral vaporizers for electronic cigarette users, namely, vape pens, and advanced personal vaporizers for electronic cigarette users; Articles for electronic cigarette users, namely, components for electronic vaporizers and atomizers, namely, oral vaporizer refill cartridges sold empty; Vape pens and advanced personal oral vaporizers accessories, namely, electronic vaping mods, bumpers, caps, cartridges, cartomizers, clearomizers, coils, cones, drip tips, and vape pen refilling tools; liquid nicotine solutions for use in electronic vaporizers and atomizers, vape pens, and advanced personal vaporizers; Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form used to refill electronic cigarette cartridges and tanks” (5822493).
Applicant’s hemp and cannabidiol medicinal products, as well as nutraceuticals and other medicinals in Class 005 are broadly defined so as to include registrant’s throat lozenges, essential oils and medicines for stomach ailments. Further, applicant’s smokers’ articles are used with registrant’s goods in Class 034, including listing the same goods of “oral vaporizers for smokers.”
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.
Registration is refused for the goods in International Classes 3, 5, 29, 30, 32, and 34 (“cannabidiol for recreational use”) because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce with respect to goods that are not lawful under federal law. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. APPLICANT SHOULD NOTE THAT THE GOODS “smoking pipes, oral vaporizers for smokers” in INTERNATIONAL CLASS 34 are SUBJECT TO A SEPARATE CANNABIS-RELATED GOODS REFUSAL BELOW.
To qualify for federal trademark 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 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 to which the proposed mark will be applied are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971.
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 in International Classes 3, 5, 29, 30, 32, and 34 (“cannabidiol for recreational use”) include items that are prohibited by the CSA, namely, the website shows that the applicant is in the medical cannabis/cannabidiol (CBD) industry, and the current wording of goods is broad enough to encompass products that contain cannabis/CBD.
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 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. 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 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 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 below.
APPLICANT SHOULD NOTE THAT AN AMENDMENT TO THE IDENTIFICATION OF GOODS WILL NOT OVERCOME THE FDCA REFUSAL FOR INTERNATIONAL CLASSES 5, 29, 30, and 32 BELOW.
The applicant may also present arguments and evidence against this refusal.
Applicant should note the following additional ground for refusal.
Drug Paraphernalia Refusal – Based on Evidence - Per se unlawful –– No Bona Fide Intent to Lawfully Use in Commerce – INTERNATIONAL CLASS 34 “smoking pipes, oral vaporizers for smokers”
Registration is refused for the goods “SMOKING PIPES; ORAL VAPORIZERS FOR SMOKERS” in International Class 34 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. APPLICANT SHOULD NOTE THAT THIS REFUSAL DOES NOT APPLY TO THE GOODS “Smokers' articles, namely, grinders for use with hemp; dried hemp; derivatives of hemp, namely, resins and oils, not for medical use; hemp for recreational use; smokers' articles, namely, pouches for use with hemp, lighters for smokers” IN INTERNATIONAL CLASS 34.
To qualify for federal trademark 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 applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
Here, the items or activities to which the proposed mark 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 includes equipment and products for processing, inhaling, introducing to the body marijuana, namely, pipes, cigarette paper, hookahs, oral vaporizers, humidors, rolling trays, and grinders. The attached excerpt from the Applicant’s website shows that the applicant is in the medical cannabis/cannabidiol (CBD) industry, and the current wording of goods is broad enough to encompass products that are intended for use with cannabis/CBD.
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 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, the applicant did not have a valid filing basis for any such items or activities. To the extent the applicant’s goods are exclusively for use with products 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 to specify that all items are “exclusively for use with cannabis/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 below.
The applicant may also present arguments and evidence against this refusal.
Applicant should note the following additional ground for refusal.
FDCA Refusal – Based on Evidence – No Bona Fide Intent to Lawfully Use in Commerce as of Filing Date – INTERNATIONAL CLASSES 5, 29, 30, AND 32
Registration is refused for the goods in International Classes 5, 29, 30, and 32 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. APPLICANT SHOULD NOTE THAT THIS REFUSAL DOES NOT APPLY TO THE GOODS IN INTERNATIONAL CLASSES 3, 31, OR 34.
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
To qualify for federal trademark 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 will 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 Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug or a biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the Federal Food, Drug and Cosmetic Act).
Cannabidiol (CBD) is an active ingredient in an FDA-approved drug, Epidiolex®, (see http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm611046.htm copy attached) and is the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements. See FDA Regulation of Cannabis and Cannabis-derived Products: Questions and Answers http://www.fda.gov/NewsEvents/PublicHealthFocus/ucm421168.htm copy attached. The Drug Enforcement Administration (DEA) placed Epidiolex® on schedule V of the CSA on September 27, 2018. Nevertheless, marijuana and CBD derived from marijuana remain unlawful. No other cannabis-derived drug products have been approved by the FDA. Under the Food, Drug and Cosmetics Act (FDCA), any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug. 21 U.S.C. § 321(g)(1) An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers http://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers
Applicant’s goods are broad enough to encompass products that consist of, or include, items or activities that are or were prohibited by the FDCA, namely, nutritional supplements, herbal supplements, dietary supplements, herbal tinctures, medicated skin care preparations, analgesic creams, food, and beverages, with them all containing CBD.
The attached excerpt from applicant’s website, which shows the applicant making goods that contain CBD, plainly indicates that applicant’s aforementioned products contain CBD and that such goods are currently being marketed, promoted or offered for sale to consumers.
It is unlawful to introduce food containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. See Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds.
http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm copy attached.
In addition, an unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers http://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers copy attached. The attached excerpt from applicant’s website plainly indicates that applicant’s pharmaceuticals, topical analgesics, medicated balms, lotions, creams, tinctures, etc. are comprised of cannabidiol and are promoted to have therapeutic or medical benefits that affect the structure or function of the body.
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. 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.
IDENTIFICATION OF GOODS
International Class 3
- Bath additivesàapplicant must specify the particular additives, e.g., “non-medicated bath salts”
- lip care preparations; lip conditionersàapplicant must specify that these are “non-medicated” to be in Class 3
- liquid soapsàapplicant must specify that these are “non-medicated” to be in Class 3
- skin care preparationsàapplicant must specify that these are “non-medicated” to be in Class 3
- soaps for body care; soaps for personal useàapplicant must specify that these are “non-medicated” to be in Class 3
International Class 5
The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:
- 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 hempàapplicant must specify that these are “medicated” to be in Class 5 and specify what the oils, salves, and pastes are for, e.g., “body oils, salves and concentrated pastes”
- 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 aidàapplicant must specify that these are “medicated” to be in Class 5
International Class 30
The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:
- food energy barsàapplicant must clarify the type of energy bars, e.g., “cereal based energy bars”
International Class 30
The identification of goods is indefinite and must be clarified for the following reasons. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01:
- dried hemp; derivatives of hemp, namely, resins and oils, not for medical use; cannabidiol and hemp for recreational useàapplicant must clarify the use of the goods in Class 34, e.g., “herbs for smoking”
Additionally, the suggested amendments to the Identification of Goods made in the No Bona Fide Intent to Lawful Use in Commerce sections above are incorporated below.
Applicant may adopt the following identification, if accurate. The wording that appears in bold and/or italics below represents the suggested changes. Any wording that is crossed out represents matter that must be deleted from the identification.
International Class 3: Non-medicated 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; non-medicated lip care preparations; non-medicated 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; non-medicated soaps for body care; non-medicated soaps for personal use; each of the foregoing containing hemp, or cannabidiol solely 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: Hemp or cannabidiol related products, namely, medicated oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabidiol or derivatives thereof; medicated 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; medicated 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; all of the aforementioned goods containing cannabis solely 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: 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; all of the aforementioned goods containing cannabis solely 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: 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 aforementioned goods containing cannabis solely 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: Live hemp plants; hemp seeds
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 aforementioned containing cannabis solely 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: Smokers' articles, namely, grinders for use with hemp; herbs for smoking, namely, dried hemp; derivatives of hemp for smoking purposes, namely, resins and oils, not for medical use, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; herbs for smoking, namely, cannabidiol and hemp for recreational use with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis; smokers' articles, namely, smoking pipes exclusively for use with cannabis/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, pouches for use with hemp, lighters for smokers, oral vaporizers for smokers exclusively for use with cannabis/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
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For this application to proceed, applicant must explicitly address each refusal and/or 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.
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
/Kelly J. Trusilo/
Trademark Examining Attorney
Law Office 107
571-272-8976
kelly.trusilo@uspto.gov
RESPONSE GUIDANCE
