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:  February 25, 2020

 

 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.

 

SUMMARY OF ISSUES:

• Disclaimer Requirement
• Request for Information

 

SEARCH OF USPTO DATABASE OF MARKS

 

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.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “HERB” because it is 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). 

 

In the context of the goods the attached evidence from applicant’s website as well as third party dictionaries shows that the wording “HERB” would be understood as a slang term for marijuana. The goods feature potentially feature CBD and/or Hemp products, as attached evidence attests.  Thus, the wording merely describes applicant’s goods because it describes a potential ingredient in the goods and therefore must be disclaimed.

 

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

 

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

 

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

 

REQUEST FOR INFORMATION

 

LAWFUL USE INQUIRY – MARIJUANA RELATED GOODS

 

Registration may be 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.

 

In the present application, the applicant has applied for the mark “HAPPY HERB”, which attached evidence of use appears to show that the goods contain cannabidiol (“CBD”).  Applicant must answer the following questions to permit proper examination of the application. See 37 C.F.R. §2.61(b); TMEP §814.

 

The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods. If such materials are not available, applicant must provide a detailed factual description of the goods and/or services. Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application.

 

In addition, applicant must submit a written statement indicating whether the goods identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971. 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. §802(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.

 

Finally, applicant must provide written responses to the following questions:

 

1. Do/Will any of applicant’s identified goods include or contain marijuana, cannabis, hemp, marijuana-based preparations, cannabis-based preparations, hemp-based preparations, extracts or derivatives from marijuana, cannabis or hemp, including tetrahydrocannabinol (THC) or cannabidiol (CBD), synthetic marijuana, or any other controlled substance under the CSA?
2. Do/Will any of applicant’s identified goods include or contain CBD?
3. If the applicant’s goods contain CBD, is the CBD derived from hemp that complies with the 2018 Farm Bill?
4. If the answer to Question 3 above is “yes”, will the CBD be derived from hemp with a delta-9 THC concentration of not more than .3% on a dry weight basis”?
5. Do/Will any of applicant’s identified goods include or contain hemp or hemp oil?
6. Upon information and belief, do applicant’s identified goods and services comply with the Controlled Substances Act?

 

Please note, if applicant adopts the following identification, this inquiry will be withdrawn:

 

International Class 3:  Cosmetics, namely, lip tints; body care products, namely, lip scrubs, body scrubs, facial scrubs, facial masks, body cleansers, facial cleansers, body lotions, facial lotions, body creams, facial creams and hand creams; shaving products, namely, shaving creams; facial oils; all of the foregoing containing hemp derived CBD from cannabis with a delta-9 THC concentration of not more than .3% on a dry weight basis.

 

Failure to satisfactorily respond to a requirement for information is a ground for refusing registration. See In re Cheezwhse.com, Inc. , 85 USPQ2d 1917, 1919 (TTAB 2008); In re Garden of Eatin’ Inc. , 216 USPQ 355, 357 (TTAB 1982); TMEP §814. Please note that merely stating that information about the goods and services is available on applicant’s website is an inappropriate response to the above requirement and is insufficient to make the relevant information properly of record. See In re Planalytics, Inc. , 70 USPQ2d 1453 , 1457-58 (TTAB 2004). Applicant is advised that, upon consideration of the information provided by applicant in response to the above requirement, registration of the applied-for mark may be refused on the ground that the mark, as used in connection with the identified goods and/or services, is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

RESPONSE GUIDELINES

 

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(s) and/or requirement(s) 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. 

 

 

 

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

 

 

/Charles Hiser/

Examining Attorney

Law Office 130

(571) 272-7526

Charles.Hiser@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 February 25, 2020 for

U.S. Trademark Application Serial No. 88521935

 

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. 

 

 

/Charles Hiser/

Examining Attorney

Law Office 130

(571) 272-7526

Charles.Hiser@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 February 25, 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.”