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:  March 30, 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:

• Information about services required (RFI) – 2018 Farm Bill
• Amendment of identification of services required
• Disclaimer required

 

SEARCH OF THE REGISTERED AND PENDING 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.

 

REQUEST FOR INFORMATION ABOUT SERVICES REQUIRED – 2018 FARM BILL

To permit proper examination of the application, applicant must submit additional information about applicant's services because the nature of such services is not clear from the present record.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).  The requested information should include fact sheets, brochures, and/or advertisements and promotional materials.  If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ.  If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.

 

Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the services will not satisfy this requirement for information.

 

In addition, the Agriculture Improvement Act of 2018 (2018 Farm Bill) authorized the production of hemp in the United States and directed the U.S. Department of Agriculture (USDA) to establish a new regulatory program for domestic hemp production.  On October 31, 2019, the USDA published an interim final rule that establishes rules and regulations concerning the production of hemp.  See Establishment of a Domestic Hemp Production Program, 84 Fed. Reg. 58,522 (October 31, 2019) (to be codified at 7 CFR pt. 390).  Under the interim final rule, a producer must be licensed and/or authorized to produce hemp under a USDA approved plan.  USDA approved plans include those plans submitted by States or Indian Tribes that have been approved by the USDA, or the USDA established Federal plan for producers in States and territories of Indian Tribes not covered by approved plans.  Please note, however, that hemp farming and cultivation currently remains illegal in Idaho, Mississippi, and South Dakota.  Accordingly, applicant must provide written responses to the following questions:

 

(1) Do or will applicant's identified services including farming, propagation, growing, cultivating, processing, production, refining and/or harvesting of Cannabis Sativa L for market for the benefit of or provision to third parties?

 

(2) If yes to Question 2, will the Cannabis Sativa L contain a THC content of more than .03 percent on a dry weight basis?

 

(3) Is the applicant a pilot participant under the Agricultural Act of 2014?  If yes, please provide supporting documentation.

 

(4) Is the applicant currently an authorized hemp producer under a State, Tribal, or USDA Federal plan?

 

(5) If yes to Question 4, please specify which plan (State, including identifying which State, Tribal, or USDA), and provide the authorization or license number and any supporting documentation.

 

(6) Upon information and belief, is applicant in compliance with its State, Tribal, or USDA Federal plan's rules and regulations regarding the production of domestic hemp? 

 

(7) Are the applied-for services being conducted in the states of Idaho, Mississippi, and South Dakota?

 

(8) What is the specific nature of “processing” and “refining” of agricultural products

 

(9) &For the services of "contract farming for others" and "hydroponic farming services," what type of crops are being farmed?  Does applicant offer contract farming and/or hydroponic farming of hemp?  Does applicant offer contract farming and/or hydroponic farming of cannabis and/or marijuana?

 

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. 

 

AMENDMENT OF IDENTIFICATION OF SERVICES

The Trademark Act requires that a trademark or service mark application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used.  15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053.  Specifically, a complete application must include a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.”  37 C.F.R. §2.32(a)(6) (emphasis added).  This requirement for a specification of the particular goods and/or services applies to applications filed under all statutory bases.  See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.01(b)-(c).

 

The wordings “agricultural product processing for others” and “processing of products from legally produced industrial hemp and cbd” in the identification of services are indefinite and must be clarified because applicant must specify the “product,” such as hemp.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 40 for “agricultural product processing for others; processing of legally produced industrial hemp and cbd for others; processing of products from legally produced industrial hemp and cbd.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.  If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

The wording “hosting social entertainment events, namely, weddings” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass wedding ceremony services which are classified in International Class 45.

 

Applicant has referenced “CBD” in “agricultural services, namely, planting, growing, fertilizing, pruning and picking hemp and cbd for others” in International Class 44.  If these services are limited to CBD containing a delta-9 tetrahydrocannabinol (thc) concentration of not greater than 0.3 percent on a dry weight basis, then the identification must be clearly identified in order to ensure that the applied-for services fall within the scope of permitted farming services as it relates to the plant species Cannabis sativa L. under the 2018 Farm bill.  See http://www.ams.usda.gov/rules-regulations/hemp and http://www.federalregister.gov/documents/2019/10/31/2019-23749/establishment-of-a-domestic-hemp-production-program.

 

Applicant may substitute the following wording, if accurate.  The bolded words are suggested additions.

 

International Class 40

Agricultural product processing for others, namely, agricultural hemp; processing of legally produced industrial hemp and cbd for others; processing of products from legally produced industrial hemp and cbd, namely, <specify the common commercial names of the “products” being processed>; [agricultural product processing for others; processing of legally produced industrial hemp and cbd for others; processing of products from legally produced industrial hemp and cbd;] refining cbd oil; all of the forgoing services wherein the cannabidiol (cbd) is derived from hemp as defined in the federal 2018 farm bill and containing a delta-9 tetrahydrocannabinol (thc) concentration of not greater than 0.3 percent on a dry weight basis; all of the foregoing services in compliance with federal laws and rules

 

International Class 41

Hosting social entertainment events, namely, [weddings] wedding reception planning and coordination for others; Entertainment services in the nature of hosting social entertainment events; Arranging, organizing, conducting, and hosting social entertainment events; Special event planning for social entertainment purposes; Consultation in the field of special event planning for social entertainment purposes; Party planning of wedding events

 

 

International Class 44

Agricultural services, namely, planting, growing, fertilizing, pruning and picking hemp [and cbd] for others; Agricultural services, namely, planting, growing, fertilizing, pruning and picking hemp and cbd for others, particularly wherein the cannabidiol (cbd) is derived from hemp as defined in the federal 2018 farm bill and containing a delta-9 tetrahydrocannabinol (thc) concentration of not greater than 0.3 percent on a dry weight basis; all of the foregoing services in compliance with federal laws and rules

 

International Class 45 (see below to add this class)

Hosting of weddings, namely, providing facilities for wedding ceremonies, wedding chapel services, and planning and arranging of wedding ceremonies

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  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). 

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENT – ITU

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only three class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

DISCLAIMER

Applicant must disclaim the wording “FARM” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s 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). 

 

The attached evidence from on-line references shows this wording is commonly used in connection with similar services to mean “a tract of land devoted to agricultural purposes” and “an area of land and its buildings used for growing crops and rearing animals, typically under the control of one owner or manager.”  Thus, the wording merely describes applicant’s services because it indicates that identified services are performed and provided on a farm.

 

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

 

No claim is made to the exclusive right to use “FARM” 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. 

 

 

 

 

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

 

 

 

/Sophia S. Kim/

Sophia S. Kim

Senior Trademark Examining Attorney

Law Office 106

571-272-9178

sophia.kim@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 March 30, 2020 for

U.S. Trademark Application Serial No. 88531009

 

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. 

 

 

/Sophia S. Kim/

Sophia S. Kim

Senior Trademark Examining Attorney

Law Office 106

571-272-9178

sophia.kim@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 March 30, 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.”