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:  April 15, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH RESULTS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

 

·         Advisory: Prior-Filed Application

• FDCA Refusal – No Bona Fide Intent To Lawfully Use In Commerce as of Filing Date - 005
• Identification of Goods Amendment Required
• Application Signature Date Required
• Additional Information Required
• Attorney Bar Information Required

 

ADVISORY: PRIOR-FILED APPLICATION

 

The filing dates of pending U.S. Application Serial Nos. 86880126, 87880669, 88433172, 88502672, 88007108, 88007095, 88007118, and 88007115 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

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.

 

FDCA REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE AS OF FILING DATE – IC 005

 

The stated refusal refers to International Class 005 only and does not bar registration in the other class.

 

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 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 to 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 items or activities listed in the application in connection with which the mark is intended to be used involve a per se violation of federal law.  See In re Brown, 119 USPQ2d at 1352.  The Federal Food, Drug, and Cosmetic Act (FDCA) prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug approved under Section 355 of the Act or a biological product licensed under 42 U.S.C. §262.  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 FDCA and does not include an article that is approved as a new drug under 21 U.S.C.  §355, certified as an antibiotic under 21 U.S.C. §357, or licensed as a biologic under 42 U.S.C.  §262).

Cannabidiol (CBD), a chemical constituent of the cannabis plant, was the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements.  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 the present case, the application identifies applicant’s goods in International Class 005 as follows: “Medicated cosmetics; medicated cosmetics containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated skin soap; medicated skin soap containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated skin care preparations; medicated skin care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated skin cleansing preparations; medicated skin cleansing preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated lip care preparations; medicated lip care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated acne treatment preparations; medicated acne treatment preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated nail care preparations; medicated nail care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated essential oils; medicated essential oils containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated hair care preparations; medicated hair care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC.”

It is unlawful to introduce food to which CBD, an “article that is approved as a new drug,” has been added into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. 21 U.S.C. §§321(ff)(3)(B)(ii), 331(d), 355(a); see also 21 U.S.C.  §352(f)(1) regarding mislabeled drugs.  See also 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. Therefore, the applicant’s limitation statement indicating that the CBD included in the applicant’s goods is 2018 Farm Bill Compliant, or derived from hemp containing less than .3% tetrahyrocannabinol (THC) does not obviate this refusal.

 

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 use the applied-for mark in lawful 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.   

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)  Deleting the class to which the refusal pertains;

 

(2)  Filing a Request to Divide Application form (form #3) to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)  Amending the basis for that class, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

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

 

IDENTIFICATION OF GOODS AMENDMENT REQUIRED

 

The wording “non-medicated skin cleansing preparations; medicated lip care preparations” in the identification of goods is indefinite and must be clarified because to specify the type of preparations.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Additionally, the goods “non-medicated acne treatment preparations” in Class and “medicated essential oils” are classified incorrectly.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). The wording “acne treatment preparations” is definite in Class 5 and is presumed to encompass all acne treatment preparations, including non-medicated acne preparations. Additionally, all essential oils are classified in Class 3. Furthermore, it appears that there is no such good as a “medicated essential oil.” Therefore, applicant must amend these goods to be definite and properly classified or remove these goods from the application.

 

Applicant may adopt the following if accurate:

 

IC 003: Cosmetics; cosmetics containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; non-medicated skin care preparations; non-medicated skin care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; non-medicated skin cleansing preparations, namely, {specify preparations, e.g., skin cleansers, skin cleansing cream, skin cleaning lotion}; non- medicated skin cleansing preparations, namely, {specify preparations, e.g., skin cleansers, skin cleansing cream, skin cleaning lotion} containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; non-medicated lip care preparations; non-medicated lip care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; non-medicated acne treatment preparations; non-medicated acne treatment preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; nail care preparations; nail care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; essential oils; essential oils containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; hair care preparations; hair care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC

 

IC 005: Medicated cosmetics; medicated cosmetics containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated skin soap; medicated skin soap containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated skin care preparations; medicated skin care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated skin cleansing preparations; medicated skin cleansing preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated lip care preparations, namely, {specify preparations, e.g., medicated lip balm}; medicated lip care preparations, namely, {specify preparations, e.g., medicated lip balm} containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated acne treatment preparations; medicated acne treatment preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated nail care preparations; medicated nail care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated essential oils; medicated essential oils containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC; medicated hair care preparations; medicated hair care preparations containing hemp-derived cannabidiol (''CBD'') with less than 0.3% THC

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

APPLICATION SIGNATURE DATE REQUIRED

 

The application does not set forth the date the application or allegation of use documents were signed; therefore, applicant must provide this date.  TMEP §804.01(b); see 37 C.F.R. §§2.33(c), 2.61(b), 2.76(g), 2.88(g). 

 

For more information about the verified statement and instructions on providing a verified statement or date of signing using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.

 

ADDITIONAL INFORMATION REQUIRED

 

To permit proper examination of the application, applicant must provide all the following information:

 

(1)  Explain whether the wording “BLISS” in the mark has any meaning or significance in the trade or industry in which applicant’s goods are manufactured or provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry. 

 

(2)  Respond to the following questions: 

1. Do applicant’s goods contain or applicant services include any element referred to as “Bliss?” 

2. Do applicant’s competitors use BLISS to advertise similar goods? 

3. Who is the typical consumer of applicant’s goods? 

4. Where are applicant’s goods typically purchased (provide examples of online and brick-and-mortar store venues)?.

 

See 37 C.F.R. §2.61(b); TMEP §814. 

 

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.

 

ATTORNEY BAR INFORMATION REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and requirements in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05..

 

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

 

 

/Rebecca D. Coughlan/

Trademark Examining Attorney

Law Office 113

Phone: 571-272-4975

Email: rebecca.coughlan@uspto.gov

 

 

RESPONSE GUIDANCE

• 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 April 15, 2020 for

U.S. Trademark Application Serial No. 88515229

 

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. 

 

 

/Rebecca D. Coughlan/

Trademark Examining Attorney

Law Office 113

Phone: 571-272-4975

Email: rebecca.coughlan@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 April 15, 2020, 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.”