United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88545779
Mark: SOOTHE
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Correspondence Address: |
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Applicant: TM38 LLC
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Reference/Docket No. 150769-00101
Correspondence Email Address: |
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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: August 10, 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.
SUMMARY OF ISSUES:
· Advisory: Prior-Filed Applications
· Controlled Substance Act Refusal & Response Options
· FDCA Refusal - Not in Lawful Use in Commerce
· FDCA Refusal - No Intent to Lawfully Use In Commerce as of Filing Date
· New Specimen Required – Goods Not Shown – IC 005
· Identification and Classification Amendment Required
· Clarification of the Number of Classes for Which Registration is Sought Required
· Advisory: Multiple Class Application Requirements
· Disclaimer Statement Required
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark SOOTHE in U.S. Registration No. 4899468 owned by Ovvio International LLC (OI), the mark SOOTHE AS in U.S. Registration No. 5900337 owned by Aesthetics Biomedical, Inc (AB), and the mark SOOTHE in U.S. Registration No. 4821166 owned by Duval OTC I, LLC (DO). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is SOOTHE (combination word and design mark) used in connection with the goods “Body care and toiletry products, namely, body lotion, cosmetic hand cream, skin moisturizer, moisturizing skin lotions; all of the foregoing containing CBD; nutritional oils for cosmetic purposes containing CBD; Body care and toiletry products, namely, body wash, hair shampoo, hair conditioner; all of the foregoing containing CBD; non-medicated herbal body care products containing CBD, namely, body oils, salves, and lip balms containing CBD” in International Class 003 and “Dietary pet supplements in the form of pet treats containing CBD; Powdered CBD concentrates in the form of edible powders, powder drink mixes, and isolate dabs” in International Class 005.
Registrant OI’s mark is SOOTHE (standard character mark) used in connection with the goods “Essential oils for medicinal uses” in International Class 003.
Registrant AB’s mark is SOOTHE AS (combination word and design mark) used in connection with the goods “topical skin sprays, beauty balm creams, and skin cleansers all for cosmetic purposes but marketed to physicians for use in combination with a radio frequency microneedling device as part of a treatment for patients” in International Class 003.
Registrant DO’s mark is SOOTHE (combination word and design mark) used in connection with the goods “Throat lozenges” in International Class 005.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
SIMILARITY OF THE MARKS
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Applicant’s mark SOOTHE and registrant OI’s mark SOOTHE, registrant AB’s mark SOOTHE AS, and registrant DO’s mark SOOTHE are confusingly similar.
Applicant’s mark and registrant’s mark are similar in appearance, sound, meaning, and commercial impression. The marks share the word SOOTHE which is identical in appearance and sound and which create the same impression of relief or alleviation in each of the marks. See attached evidence from merriam-webster.com defining SOOTHE.
Applicant’s removal of the letters AS from registrant AB’s mark does not obviate a finding of a likelihood of confusion. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Applicant’s, registrant AB’s and registrant DO’s use of stylization and design elements does not obviate a finding of a likelihood of confusion. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Here, it is unlikely that consumers would refer to the applied-for mark or registered marks by the minor stylization and design elements, but instead are likely to refer to the marks by the wording. Thus, the wording is the dominant portion of the marks.
Therefore, although the applicant’s mark and registrants’ marks have minor differences, the marks are very similar and thus have the same overall commercial impression, and as a result, purchasers are likely to be confused as to the source of the applicant’s and registrants’ goods. Therefore, the marks are confusingly similar.
RELATEDNESS OF THE GOODS
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Applicant’s goods “Body care and toiletry products, namely, body lotion, cosmetic hand cream, skin moisturizer, moisturizing skin lotions; all of the foregoing containing CBD; nutritional oils for cosmetic purposes containing CBD; Body care and toiletry products, namely, body wash, hair shampoo, hair conditioner; all of the foregoing containing CBD; non-medicated herbal body care products containing CBD, namely, body oils, salves, and lip balms containing CBD” in International Class 003 and “Dietary pet supplements in the form of pet treats containing CBD; Powdered CBD concentrates in the form of edible powders, powder drink mixes, and isolate dabs” in International Class 005 are related to registrant OI’s goods “Essential oils for medicinal uses” in International Class 003, registrant AB’s goods “topical skin sprays, beauty balm creams, and skin cleansers all for cosmetic purposes but marketed to physicians for use in combination with a radio frequency microneedling device as part of a treatment for patients” in International Class 003, and registrant DO’s goods “Throat lozenges” in International Class 005.
Because the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
(1) Deleting the classes 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 classes 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 such classes, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
ADVISORY: PRIOR-FILED APPLICATIONS
The filing dates of pending U.S. Application Serial Nos. 88425723, 88192113, 88344535, 88315146, 88361674, 88229942, 88976743, 88976611, 88352298 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.
Applicant should note the following additional ground for refusal.
CONTROLLED SUBSTANCES ACT REFUSAL & RESPONSE OPTIONS AVAILABLE TO APPLICANT TO OVERCOME REFUSAL
Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark. 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. Thus, the goods 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.
The application identifies a connection to cannabidiol (CBD). CBD is a nonpsychoactive constituent of the cannabis plant. Goods containing CBD derived from cannabis that meets the definition of “marijuana” are illegal under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. In addition, on December 20, 2018, the CSA was amended to remove “hemp” from the definition of “marijuana” and specifically exclude “tetrahydrocannabinols in hemp (as defined under section 297A of the Agricultural Marketing Act of 1946)” from Schedule I, 21 U.S.C. §812(c)(17). See the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA). Thus, certain goods containing or involving hemp, CBD derived from hemp, and/or CBD with less than .3% THC that were used in commerce or intend to be used in commerce on or after December 20, 2018 may be lawful under the CSA.
However, applicant should note that even hemp-derived CBD products may be subject to an additional unlawful use refusal under the Food, Drug and Cosmetic Act as addressed below.
The application is currently refused under the CSA because applicant’s date of use in commerce pre-dates the Agriculture Improvement Act of 2018, which became effective only on December 20, 2018, AND the applicant’s Identification of Goods does not identify the source of, and/or the THC content of, the applicant’s CBD.
Thus, the application includes items or activities that are prohibited under the CSA, and as such applicant currently does not have a valid filing basis for any such items or activities.
To the extent applicant’s goods or services involving goods are derived solely from cannabis plants that meet the current statutory definition of “hemp,” and were used or will be used on or after December 20, 2018, such goods may be lawful if applicant adopts the following response options addressed below.
Response Options Available for Overcoming the CSA Refusal:
The applicant’s dates of first use in commerce are 05/11/2018, 05/03/2018, 06/08/2018, and 08/07/2017. Thus, these dates must be changed to at least December 20, 2018 or later in compliance with the Agriculture Improvement Act of 2018. December 20, 2018 indicates the date on which the 2018 Farm Bill was signed into law.
Applicant must respond to this Office Action and must specify the amended date of first use in commerce of the mark, verified with an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.34(a)(1)(ii)-(iii), 2.193(e)(1); TMEP §903.
For an overview of the requirements for providing verified dates of use and instructions on how to satisfy these requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademark/laws-regulations/dates-use.
In addition, Applicant must also amend the identification of goods to specify that the cannabidiol-containing items offered are “solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis.”
Applicant may adopt one of the following limitations and amend the identification of goods accordingly:
IC 003: “Body care and toiletry products, namely, body lotion, cosmetic hand cream, skin moisturizer, moisturizing skin lotions; all of the foregoing containing CBD; nutritional oils for cosmetic purposes containing CBD; Body care and toiletry products, namely, body wash, hair shampoo, hair conditioner; all of the foregoing containing CBD; non-medicated herbal body care products containing CBD, namely, body oils, salves, and lip balms containing CBD; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
IC 005: “Dietary pet supplements in the form of pet treats containing CBD; Powdered CBD concentrates in the form of edible powders, powder drink mixes, and isolate dabs; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
IC 030: “Gummy candies containing CBD; Coffee, coffee-based beverages, tea, tea-based beverages, herbal tea, herbal tea-based beverages; all of the foregoing containing CBD; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
IC 032: “Energy drinks and water containing; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
IC 034: “electronic vaporizer liquid containing CBD for use in electronic vaporizers, including, e-cigarettes, e-cigars, and personal vaporizers, namely, electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges, electronic cigarette liquid (e-liquid) comprised of crystalline cannabidiol, CO2 extractions, terpene blend, and coconut oil; all of the foregoing containing CBD; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
Applicant is advised that additional amendments to the Identification of Goods and Services are required for clarification purposes as addressed below in this Office Action. The above proposals are required and presented in order to satisfy only the CSA refusal.
SCOPE ADVISORY: 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).
DATE OF FIRST USE IN COMMERCE ADVISORY: Applicant is advised that to avoid or overcome a refusal based on unlawful use prohibited by the CSA upon the filing an amendment to allege use or statement of use, the date of first use of the mark in commerce must be no earlier than December 20, 2018, the date on which the 2018 Farm Bill was signed into law.
If applicant adopts the following above response option, the CSA refusal will be withdrawn. However, applicant should note that this response option does not obviate the additional unlawful use refusal under the Food, Drug and Cosmetic Act as addressed below.
Applicant should note the following additional ground for refusal.
FDCA REFUSAL - NOT LAWFUL USE IN COMMERCE
Registration is refused because the applied-for mark is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. The goods 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.
This refusal issues when “(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-relevant activities involve a per se violation of a federal law.” In re Brown, 119 USPQ2d at 1351 (citing Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988); Santinine Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981)); TMEP §907.
The items or activities listed in the application for which use of the mark is alleged 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 as follows: “Dietary pet supplements in the form of pet treats containing CBD; Powdered CBD concentrates in the form of edible powders, powder drink mixes, and isolate dabs” in International Class 005 and “Gummy candies containing CBD” in International Class 030.
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.
Furthermore, products containing CBD identified for use by animals are unapproved new animal drugs that are deemed unsafe under 21 U.S.C. §360b(a). Under 21 U.S.C. 348, an animal food additive is deemed unsafe unless it is approved by FDA for its intended use prior to marketing. CBD is not approved for use in any animal food. Animal food containing an unsafe food additive within the meaning of §348 is adulterated within the meaning of Section 342(a)(2)(C)(i) of the FDCA. Introduction of an adulterated animal food into interstate commerce is prohibited under Section 331(a) of the FDCA, 21 U.S.C. 331(a).
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) Accordingly, because applicant’s goods consist of or include items or activities that are a per se violation of federal law, the applied-for mark as used in connection with such goods is not in lawful use in commerce.
Applicant should note the following additional ground for refusal.
FDCA REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE AS OF FILING DATE
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 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 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 as follows: “Coffee, coffee-based beverages, tea, tea-based beverages, herbal tea, herbal tea-based beverages; all of the foregoing containing CBD” in International Class 030 and “Energy drinks and water containing CBD” in International Class 032.
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.
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.
NEW SPECIMEN REQUIRED – GOODS NOT SHOWN – IC 005
Specifically, applicant’s specimen consists of an image of a jar with the mark on it above the wording “recovery mix.” To the right of the goods is the wording “micro CBD recovery mix.” However, no description of the goods is provided. Applicant’s goods in class 5 are “Dietary pet supplements in the form of pet treats containing CBD; Powdered CBD concentrates in the form of edible powders, powder drink mixes, and isolate dabs.” It is unclear from the specimen was “recovery mix” is and thus, it is unclear if the goods shown are any of the applied-for goods in Class 5. Therefore, the specimen does not show use of the applied-for mark in connection with the applied-for goods in use in commerce. Thus, a new specimen is required.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
IDENTIFICATION AND CLASSIFICATION AMENDMENT REQUIRED
Applicant must clarify the wording “Powdered CBD concentrates in the form of edible powders, powder drink mixes, and isolate dab” in the identification of goods in International Class 005 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the nature of the goods is or what the goods “isolate dabs” are. Further, this wording could identify goods in more than one international class. For example, “Concentrates and powders used in the preparation of energy drinks and fruit flavored beverages” are in International Class 032 and “powdered nutritional supplemental drink mix and concentrate” are in International Class 005.
Applicant must clarify the wording “water” in the identification of goods in International Class 032 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. For example, “drinking water for dogs” is in International Class 031 and “drinking water” is in International Class 032.
Applicant may substitute the following wording, if accurate:
IC 003: (Based on Use in Commerce) Body care and toiletry products, namely, body lotion, cosmetic hand cream, skin moisturizer, moisturizing skin lotions; all of the foregoing containing CBD; nutritional oils for cosmetic purposes containing CBD; (Based on Intent to Use) Body care and toiletry products, namely, body wash, hair shampoo, hair conditioner; all of the foregoing containing CBD; non-medicated herbal body care products containing CBD, namely, body oils, salves, and lip balms containing CBD; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis
IC 005: Dietary pet supplements in the form of pet treats containing CBD; Powdered CBD concentrates in the nature of {specify nature of goods, e.g., nutritional supplements} in the form of edible powders, powder drink mixes, and isolate dabs, namely, {specify the common commercial name of the goods}; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis
IC 030: (Based on Use in Commerce) Gummy candies containing CBD; (Based on Intent to Use) Coffee, coffee-based beverages, tea, tea-based beverages, herbal tea, herbal tea-based beverages; all of the foregoing containing CBD; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis
IC 031: Drinking water for dogs containing CBD; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis
IC 032: Energy drinks and {specify the type of water, e.g., drinking} water containing CBD; Powered CBD concentrates, namely, {specify goods, e.g., concentrates and powers used in the preparation of energy drink and fruit-flavored beverages}; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis
IC 034: electronic vaporizer liquid containing CBD for use in electronic vaporizers, particularly, e-cigarettes, e-cigars, and personal vaporizers, namely, electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges, electronic cigarette liquid (e-liquid) comprised of crystalline cannabidiol, CO2 extractions, terpene blend, and coconut oil; all of the foregoing containing CBD; any CBD in the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis
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.
CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED
The application identifies goods that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 5 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
ADVISORY – MULTIPLE CLASS APPLICATION REQUIREMENTS
The application references goods based on use in commerce and intent to use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:
If in use in commerce:
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 5 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 3, 5, 30, and 34; and applicant needs a specimen for classes 31 and 32. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
If intent to use in commerce, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods 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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 6 classes; however, applicant submitted a fee sufficient for only 5 classes. 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 STATEMENT REQUIRED
Applicant must disclaim the wording “SOOTHE” because it is merely descriptive of a function, feature, purpose, or use of applicant’s goods. 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 merriam-webster.com shows this wording SOOTHE means “relieve, alleviate.” Applicant’s goods are various cosmetics, supplements, food, beverages, and smoking articles. Thus, the wording merely describes applicant’s goods because SOOTHE immediately conveys to consumers that applicant’s goods are used for relief or to alleviate.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SOOTHE” 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.
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.
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
