Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  May 24, 2020

 

This Office action is in response to applicant’s communication filed on April 22, 2020.

 

The Trademark Act Section 2(d) Refusal to Register with regard to Registration Numbers 2709322, 4821166, 4899468, and 5822493 is maintained and continued.

 

The cited prior pending application Serial Number 88226702 is withdrawn as this application has been abandoned.

 

The Trademark Act Sections 1 and 45 Refusals to Register based on the CSA and FDCA are maintained and continued.

 

Upon review of applicant’s correspondence, the Examining Attorney has discovered a new issue that was not set forth in the prior Office Action. 

 

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IDENTIFICATION OF GOODS

The wording in applicant’s identification of goods and/or services is an otherwise acceptable entry in the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual); however, based on the specimen and/or other evidence of record, applicant must further describe the specialized use of these goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.04, 1402.05.

Entries in the ID Manual are presumed to include only those goods and/or services within the ordinary meaning of the words and the ordinary channels of trade for those goods and/or services.  Thus, an applicant must further explain specialized types of goods and/or services or specialized trade channels outside the ordinary meaning in identifications.  See TMEP §1402.05.

In this case, applicant’s wording may be acceptable, but for the use with and/or containing marijuana and marijuana derivatives. The wording “containing permissible delta-9 THC concentrations as set forth in applicable federal legislation of the United States” does not obviate any refusals or requirements as it is not sufficiently definite.  As laws may be amended, discontinued, or newly enacted, the applicant’s recitation of goods and services may change.  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

Applicant may adopt the following language:

“none of the foregoing containing CBD and solely 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.

 

SUSPENSION

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

            - U.S. Application Serial No(s). 88074516, 88192113, 88229868, 88229942, 88315146, 88344535, 88347256, and 88365748

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/Kelly J. Trusilo/

Trademark Examining Attorney

Law Office 107

571-272-8976

kelly.trusilo@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 24, 2020 for

U.S. Trademark Application Serial No. 88425723

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Kelly J. Trusilo/

Trademark Examining Attorney

Law Office 107

571-272-8976

kelly.trusilo@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).

 

 

 

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.”