United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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:  June 11, 2020

 

 

PRIORITY ACTION

 

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

 

Applicant must address issues shown below.  On June 8, 2020, the examining attorney and Kourtney Mulcahy discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

FDCA Refusal - Requirements for Bona Fide Intent to Lawfully Use Mark in Commerce – Refusal Applies Only to the Goods Noted Herein

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. 

 

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”).  Thus, the goods 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 pharmaceuticals to which the proposed mark are applied were unlawful under the federal Food, Drug and Cosmetic Act (FDCA), 21 U.S.C. §321(g)(1).

 

In our discussion, the applicant indicated that its goods currently identified as “products infused with hemp, namely, . . . transdermal patch and transdermal gel” are for use as an anti-inflammatory and muscle relaxant. Thus, Applicant’s goods include items that are intended for use in the diagnosis, cure, mitigation, treatment or prevention of disease and/or intended to affect the structure of or any function of the body. 

 

Cannabidiol (CBD) is a chemical constituent of the cannabis plant. On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved the first prescription pharmaceutical formulation of plant-derived CBD, Epidiolex®, for the treatment of two rare forms of epilepsy, Lennox-Gastaut syndrome and Dravet syndrome.  The Drug Enforcement Administration (DEA) placed Epidiolex® on schedule V of the CSA on September 27, 2018.  Nevertheless, marijuana and CBD derived from marijuana remain unlawful.  No other cannabis-derived drug products have been approved by the FDA.  Under the FDCA, any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug.  21 U.S.C. § 321(g)(1)  An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers http://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers copy attached.

 

In 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 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.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.   

 

In the event applicant is currently seeking FDA approval of the marketing of its goods, applicant may submit a copy of its marketing application to establish its intent to lawfully use the applied-for mark. Alternatively, applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. 

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

IDENTIFICATION OF GOODS

The identification of goods is amended to read as follows:  “Hemp derived CBD products, namely, body cream and body gel; Products infused with hemp derived from CBD, namely, body creams and body gels” in Class 3.  See TMEP §§1402.01, 1402.01(e).

 

 

 

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

 

 

/Aisha C. Johnson/

Examining Attorney

Law Office 101

United States Patent and Trademark Office

(571) 272-9295

aisha.johnson@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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.