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:  October 29, 2019

 

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

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:

• Prior-Filed Pending Application (Advisory)
• Section 2(d) Refusal
• CSA Refusal
• FDCA Refusal
• Request for Information
• Statement Required -- Significance of “GOLD” in the Mark
• Citizenship and Amended Entity Type Required
• Amended Identification of Goods and Services Required
• Multiple-Class Application Requirements

 

PRIOR-FILED PENDING APPLICATION (ADVISORY)

The filing date of pending U.S. Application Serial No. 88396774 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d), as to the goods and services in International Classes 32 and 35, because of a likelihood of confusion between the two 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 application.

 

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 mark in the referenced application.  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.

 

REFUSAL TO REGISTER – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES TO IC 3, 25, 34, and 35 ONLY

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2061748, 2237848, 3602907, 3822206, 3890372, and 5404969.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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 and/or services 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).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

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 and/or services.  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.

 

• Applicant’s mark is NAVAJO GOLD for the following goods and services (and other goods and services not at issue):

 

INTERNATIONAL CLASS 3:  Powders; skin care preparations, namely, creams, balms, lotions; makeup; cosmetics; beauty products; soaps; fragrances; perfumes; essential oils; toothpastes and dentifrices; hair products, namely, shampoo, conditioner, hairspray, gel and hair brushes; body wash

 

INTERNATIONAL CLASS 25:  Clothing; hair accessories; hats; gloves; apparel for men, women and children; pants; jackets; shirts; nightwear

 

INTERNATIONAL CLASS 34:  Hemp cigarettes; cigarettes; smoking accessories, namely, cigarette rolling papers; hemp powder; e-cigarettes; smoking accessories, namely, pipes, water pipes, grinders, vaporizers, scales, inhalers, cases, storage containers, filters, cartridges, pods, lighters, matches, ashtrays, holders, nebulizers

 

INTERNATIONAL CLASS 35:  Online retail, wholesale and retail store services featuring [] skin care preparations, balms, lotions, makeup, cosmetics, beauty products, soaps, powders, fragrances, perfumes, essential oils, toothpastes and dentifrices, hair products, body wash, medicated cosmetics, medicated supplements, [] clothing, [], hemp cigarettes, cigarettes, e-cigarettes, smoking accessories, capsules, powder, rolling papers

 

The application indicates that applicant is a corporation organized under the laws of the Navajo Nation; however, it does not indicate that applicant is a wholly owned enterprise of the Navajo Nation.  The cited registrations, all owned by the Navajo Nation, are:

 

• NAVAJO for “men’s, women’s and children’s sportswear; namely, slacks, shorts, skirts and jeans” (U.S. Reg. No. 2061748);

 

• NAVAJO for “clothing, namely, tops, vests, shirts, sport shorts, polo shirts, golf shirts, * jackets, * T-shirts, sweat shirts” (U.S. Reg. No. 2237848);

 

• NAVAJO for “Online retail store services, namely, on-line ordering services, in the field of clothing, namely, men's, and women's sportswear, namely, jeans, tops, shirts, sport shorts, polo shirts, golf shirts, T-shirts, and sweatshirts” (U.S. Reg. No. 3602907);

 

• NAVAJO for “Aftershaves; [ aftershave balms; aftershave lotions; body creams; ] body lotions[ ; body oils; body splash; body sprays; perfumery products, namely,] perfume, cologne, [ toilet water, eau de toilette, eau de parfum, eau-de-cologne; fragrances, namely, fragrance for personal use, room fragrance and body spray used as a personal deodorant and as a fragrance; creams in the nature of after-shave cream, bath cream, beauty cream, cold cream, cosmetic cream, ] eye cream, [ hair cream, hand cream, lip cream, massage cream,] moisturizing cream, [ night cream, perfumed cream, pre-shave cream, shaving cream, skin cream,] anti-aging cream, [ lip balm,] facial cream,[ ; deodorants, namely, body deodorant, deodorant for personal use, deodorant soap, deodorants for body care; soaps;] shower gels [ ; hair gels; hair lotions; massage oils; fragrance oils, namely, jasmine oil for personal use, lavender oil, peppermint oil; room fragrances; solid fragrances; perfume oils; diffusing oils, namely, essential oils; incense; sachets; scented body markers for cosmetic use as fragrances; scented skincare products, namely, scented cosmetic cream for skin care, scented body lotion, scented non-medicated skin care preparations; sun protection products, namely, after-sun gel, after-sun lotion, after-sun oil, cosmetic sun-protecting preparations, sun block, sun cream, sun screen, sun-block lotion, sun tanning lotion; ambient fragrances of any kind for use as vehicle, home and environmental fragrances; ancillaries, namely, other forms of fragrances for the body]” (U.S. Reg. No. 3822206);

 

• NAVAJO for “Tobacco whether manufactured or unmanufactured; matches and smokers' articles, namely, ashtrays not of precious metal” (U.S. Reg. No. 3890372); and

 

• NAVAJO for “Blouses; Boots; Cap visors; Coats; Footwear; Hats; Rain wear; Shoes; Sweaters” (U.S. Reg. No. 5404969).

 

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)); TMEP §1207.01(b).

 

The registrant’s NAVAJO marks and applicant’s NAVAJO GOLD mark share the identical first and dominant term “NAVAJO.”  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Applicant’s mark incorporates the entirety of the registrant’s NAVAJO mark.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Relatedness of the Goods/Services

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe assorted skin care preparations, beauty products, fragrance products, hair products; clothing and apparel for men, women and children, cigarettes, and smoking accessories, namely, cigarette rolling papers; hemp powder; e-cigarettes; smoking accessories, and online retail, wholesale and retail store services related thereto, which presumably encompasses all goods and/or services of the type described, including the registrant’s more narrow Aftershaves; [] body lotions [] perfume, cologne, [] eye cream, [] moisturizing cream, [] anti-aging cream, [] facial cream,[] shower gels []” (U.S. Reg. No. 3822206);  “men’s, women’s and children’s sportswear; namely, slacks, shorts, skirts and jeans” (U.S. Reg. No. 2061748); “clothing, namely, tops, vests, shirts, sport shorts, polo shirts, golf shirts, *jackets, *T-shirts, sweat shirts” (U.S. Reg. No. 2237848); “Blouses; Boots; Cap visors; Coats; Footwear; Hats; Rain wear; Shoes; Sweaters” (U.S. Reg. No. 5404969); “Tobacco whether manufactured or unmanufactured; matches and smokers’ articles, namely, ashtrays not of precious metal” (U.S. Reg. No. 3890372); and related “Online retail store services, namely, on-line ordering services, in the field of clothing, namely, men's, and women's sportswear, namely, jeans, tops, shirts, sport shorts, polo shirts, golf shirts, T-shirts, and sweatshirts” (U.S. Reg. No. 3602907).  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Moreover, applicant’s “hemp cigarettes; cigarettes; smoking accessories, namely, cigarette rolling papers; hemp powder; e-cigarettes; smoking accessories, namely, pipes, water pipes, grinders, vaporizers, scales, inhalers, cases, storage containers, filters, cartridges, pods, lighters, matches, ashtrays, holders, nebulizers” are related to the registrant’s “tobacco whether manufactured or unmanufactured; matches and smokers’ articles, namely, ashtrays not of precious metal” because they are types of cigarettes and smokers’ articles.  Thus, applicant’s and the registrant’s goods and/or services involve legally identical products.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and the registrant’s goods and/or services are related.

 

Applicant’s online retail, wholesale and retail store services featuring skin care preparations, balms, lotions, makeup, cosmetics, beauty products, soaps, powders, fragrances, perfumes, essential oils, toothpastes and dentifrices, hair products, body wash, medicated cosmetics, medicated supplements, clothing, hemp cigarettes, cigarettes, e-cigarettes, smoking accessories, capsules, powder, rolling papers are related to the registrant’s goods and services because they are related to the same types of goods.  Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).

 

Applicant’s addition of cannabidiol substances to its goods does not prevent a likelihood of confusion.  The attached Internet evidence, consisting of screenprints from http://www.peterthomasroth.com/collections, http://www.bnbtobacco.com/ and http://www.smokersoutletonline.com/, demonstrates that the same entity commonly manufactures/produces/provides the relevant hemp-free and hemp-added goods and/or services and markets the goods and/or services under the same mark through the same trade channels.  Thus, applicant’s and the registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Given that the marks share the identical dominant term “NAVAJO” for identical and closely related goods and services, there is a likelihood of confusion regarding the source of the goods and services.  Accordingly, registration must be refused under Section 2(d) of the Trademark Act.

 

OWNERSHIP OF CITED REGISTRATIONS

If the marks in the cited registrations are owned by applicant, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)       Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)       Submit copies of documents evidencing the chain of title.

 

(3)       Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration Nos. 2061748, 2237848, 3602907, 3822206, 3890372, and 5404969.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

Applicant should note the following additional ground for refusal.

 

REFUSAL -- UNLAWFUL USE UNDER THE CONTROLLED SUBSTANCES ACT

THIS PARTIAL REFUSAL APPLIES TO IC 1, 3, 5, 29, 30, 31, 32, 33, 34, and 35 ONLY

 

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

 

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”).  Thus, the goods and/or services to which the mark is applied must comply with all applicable federal laws.  See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907. 

 

Here, the items or activities with which the proposed mark will be used include those that are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. The application identifies the following cannabidiol/potentially cannabidiol goods and/or services in classes 1, 3, 5, 29, 30, 31, 32, 33, 34, and 35 as follows: 

 

INTERNATIONAL CLASS 1:  Hemp; cannabidiol; cannabigerol; cannabinol; THCV; cannabinoids derived from hemp; herbal preparations

 

INTERNATIONAL CLASS 3:  Powders; skin care preparations, namely, creams, balms, lotions; makeup; cosmetics; beauty products; soaps; fragrances; perfumes; essential oils; toothpastes and dentifrices; hair products, namely, shampoo, conditioner, hairspray, gel and hair brushes; body wash

 

INTERNATIONAL CLASS 5:  Pharmaceutical preparations and herbal medicine preparations derived from plants in forms such as pills, capsules, sprays, oral sprays, tinctures, supplements; herbal tinctures; cannabinoids derived from hemp for use in medicated cosmetics, medicated oils, medicated supplements, medicated food and beverages; plant extracts for medical, veterinary and pharmaceutical purposes; pharmaceutical preparations and herbal medicine preparations derived from plants in forms such as elixirs, patches, doses, hashish, resins, oils, drops, chews, gummies, salves, pastes and concentrates

 

INTERNATIONAL CLASS 29:  Dairy products containing cannabinoids derived from hemp; edible oils and fats containing cannabinoids derived from hemp; jellies and jams containing cannabinoids derived from hemp; fruit and nut based spreads containing cannabinoids derived from hemp; snack foods containing cannabinoids derived from hemp

 

INTERNATIONAL CLASS 30:    Bakery products containing cannabinoids derived from hemp; candies containing cannabinoids derived from hemp; dessert products containing cannabinoids derived from hemp; chocolate and chocolate-based products containing cannabinoids derived from hemp; cocoa and cocoa products containing cannabinoids derived from hemp; coffee containing cannabinoids derived from hemp; tea containing cannabinoids derived from hemp; artificial coffee containing cannabinoids derived from hemp; ice cream containing cannabinoids derived from hemp; sauces containing cannabinoids derived from hemp

 

INTERNATIONAL CLASS 31:  Pet beverages containing cannabinoids derived from hemp; pet food containing cannabinoids derived from hemp; pet treats containing cannabinoids derived from hemp; hemp seeds

 

INTERNATIONAL CLASS 32:  Non-alcoholic beverages containing cannabinoids derived from hemp; fruit beverages and juices containing cannabinoids derived from hemp; syrups and other preparations for making beverages containing cannabinoids derived from hemp; beer containing cannabinoids derived from hemp

 

INTERNATIONAL CLASS 33:  Alcoholic beverages containing cannabinoids derived from hemp

 

INTERNATIONAL CLASS 34:  Hemp cigarettes; cigarettes; smoking accessories, namely, cigarette rolling papers; hemp powder; e-cigarettes; smoking accessories, namely, pipes, water pipes, grinders, vaporizers, scales, inhalers, cases, storage containers, filters, cartridges, pods, lighters, matches, ashtrays, holders, nebulizers

 

INTERNATIONAL CLASS 35:  Online retail, wholesale and retail store services featuring hemp, cannabinoids derived from hemp, herbal preparations, skin care preparations, balms, lotions, makeup, cosmetics, beauty products, soaps, powders, fragrances, perfumes, essential oils, toothpastes and dentifrices, hair products, body wash, medicated cosmetics, medicated supplements, medicated food and beverages, plant extracts for medical, veterinary and pharmaceutical purposes, pharmaceutical preparations and herbal medicine preparations derived from plants, tinctures, clothing, hair accessories, dairy products, edible oils and fats, jellies and jams, fruit and nut based spreads, snack foods, bakery products, candies, dessert products, chocolate and chocolate-based products, cocoa and cocoa products, coffee, tea, artificial coffee, ice cream, sauces, pet beverages, pet food, pet treats, hemp seeds, non-alcoholic beverages, fruit beverages and juices, syrups and other preparations for making beverages, beer, alcoholic beverages, hemp cigarettes, cigarettes, e-cigarettes, smoking accessories, capsules, powder, rolling papers

 

 

Cannabidiol (CBD) is a nonpsychoactive constituent of the cannabis plant.  Applicant’s identified goods and/or services are broad enough to include products produced from “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin” (subject to certain exceptions). 21 U.S.C. §802(16)(definition of “marihuana” – commonly referred to as “marijuana”).   

 

In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful.  See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976)  Because use of the applied-for mark in connection with such goods and/or services was not lawful as of the filing date, applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with such goods and/or services.  See In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.   

 

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).  The goods and/or services that feature cannabidiol did not potentially comply with applicable federal laws until that date.  Because the identified goods and/or services that feature cannabidiol consist of or include items or activities that are still prohibited under the Controlled Substances Act, namely those containing cannabidiol derived from marijuana, applicant did not have a valid basis for filing the application for such goods.  Nevertheless, to the extent applicant’s goods will be derived solely from cannabis plants that meet the current statutory definition of hemp, the goods may presently be lawful.

 

Therefore, in order to overcome this refusal, applicant must amend the identification of goods and services to specify that the goods and services in Classes 1, 3, 5, 29, 30, 31, 32, 33, 34, and 35 do not contain cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis.  The following wording is suggested, if accurate (note – additional requirements regarding the identification of goods and services appear elsewhere in this Office action): 

 

 

INTERNATIONAL CLASS 1:  Hemp; cannabidiol; cannabigerol; cannabinol; THCV; cannabinoids derived from hemp; herbal preparations; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 3:  Powders; skin care preparations, namely, creams, balms, lotions; makeup; cosmetics; beauty products; soaps; fragrances; perfumes; essential oils; toothpastes and dentifrices; hair products, namely, shampoo, conditioner, hairspray, gel and hair brushes; body wash; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 5:  Pharmaceutical preparations and herbal medicine preparations derived from plants in forms such as pills, capsules, sprays, oral sprays, tinctures, supplements; herbal tinctures; cannabinoids derived from hemp for use in medicated cosmetics, medicated oils, medicated supplements, medicated food and beverages; plant extracts for medical, veterinary and pharmaceutical purposes; pharmaceutical preparations and herbal medicine preparations derived from plants in forms such as elixirs, patches, doses, hashish, resins, oils, drops, chews, gummies, salves, pastes and concentrates; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 29:  Dairy products containing cannabinoids derived from hemp; edible oils and fats containing cannabinoids derived from hemp; jellies and jams containing cannabinoids derived from hemp; fruit and nut based spreads containing cannabinoids derived from hemp; snack foods containing cannabinoids derived from hemp; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 30:    Bakery products containing cannabinoids derived from hemp; candies containing cannabinoids derived from hemp; dessert products containing cannabinoids derived from hemp; chocolate and chocolate-based products containing cannabinoids derived from hemp; cocoa and cocoa products containing cannabinoids derived from hemp; coffee containing cannabinoids derived from hemp; tea containing cannabinoids derived from hemp; artificial coffee containing cannabinoids derived from hemp; ice cream containing cannabinoids derived from hemp; sauces containing cannabinoids derived from hemp; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 31:  Pet beverages containing cannabinoids derived from hemp; pet food containing cannabinoids derived from hemp; pet treats containing cannabinoids derived from hemp; hemp seeds; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 32:  Non-alcoholic beverages containing cannabinoids derived from hemp; fruit beverages and juices containing cannabinoids derived from hemp; syrups and other preparations for making beverages containing cannabinoids derived from hemp; beer containing cannabinoids derived from hemp; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 33:  Alcoholic beverages containing cannabinoids derived from hemp; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 34:  Hemp cigarettes; cigarettes; smoking accessories, namely, cigarette rolling papers; hemp powder; e-cigarettes; smoking accessories, namely, pipes, water pipes, grinders, vaporizers, scales, inhalers, cases, storage containers, filters, cartridges, pods, lighters, matches, ashtrays, holders, nebulizers; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

INTERNATIONAL CLASS 35:  Online retail, wholesale and retail store services featuring hemp, cannabinoids derived from hemp, herbal preparations, skin care preparations, balms, lotions, makeup, cosmetics, beauty products, soaps, powders, fragrances, perfumes, essential oils, toothpastes and dentifrices, hair products, body wash, medicated cosmetics, medicated supplements, medicated food and beverages, plant extracts for medical, veterinary and pharmaceutical purposes, pharmaceutical preparations and herbal medicine preparations derived from plants, tinctures, clothing, hair accessories, dairy products, edible oils and fats, jellies and jams, fruit and nut based spreads, snack foods, bakery products, candies, dessert products, chocolate and chocolate-based products, cocoa and cocoa products, coffee, tea, artificial coffee, ice cream, sauces, pet beverages, pet food, pet treats, hemp seeds, non-alcoholic beverages, fruit beverages and juices, syrups and other preparations for making beverages, beer, alcoholic beverages, hemp cigarettes, cigarettes, e-cigarettes, smoking accessories, capsules, powder, rolling papers; all of the forgoing not containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than .3% on a dry weight basis

 

The applicant may also present arguments and evidence against this refusal.

 

Applicant should note the following additional ground for refusal.

 

REFUSAL UNDER THE FOOD, DRUG, AND COSMETIC ACT

THIS PARTIAL REFUSAL APPLIES TO IC 5, 29, 30, 31, 32, 33, and 35 ONLY

 

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

 

To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”).  Thus, the goods 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 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 or a biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public.  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 Federal Food, Drug and Cosmetic Act). 

 

Cannabidiol (CBD) is an active ingredient in an FDA-approved drug, Epidiolex®, (see http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm611046.htm copy attached) and is the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements.  See FDA and Marijuana: Questions and Answers  http://www.fda.gov/NewsEvents/PublicHealthFocus/ucm421168.htm copy attached.

 

In the present case, the application identifies applicant’s goods and/or services in classes 5, 29, 30, 31, 32, 33, and 35 as follows:

 

INTERNATIONAL CLASS 5:  Pharmaceutical preparations and herbal medicine preparations derived from plants in forms such as pills, capsules, sprays, oral sprays, tinctures, supplements; herbal tinctures; cannabinoids derived from hemp for use in medicated cosmetics, medicated oils, medicated supplements, medicated food and beverages; plant extracts for medical, veterinary and pharmaceutical purposes; pharmaceutical preparations and herbal medicine preparations derived from plants in forms such as elixirs, patches, doses, hashish, resins, oils, drops, chews, gummies, salves, pastes and concentrates

 

INTERNATIONAL CLASS 29:  Dairy products containing cannabinoids derived from hemp; edible oils and fats containing cannabinoids derived from hemp; jellies and jams containing cannabinoids derived from hemp; fruit and nut based spreads containing cannabinoids derived from hemp; snack foods containing cannabinoids derived from hemp

 

INTERNATIONAL CLASS 30:    Bakery products containing cannabinoids derived from hemp; candies containing cannabinoids derived from hemp; dessert products containing cannabinoids derived from hemp; chocolate and chocolate-based products containing cannabinoids derived from hemp; cocoa and cocoa products containing cannabinoids derived from hemp; coffee containing cannabinoids derived from hemp; tea containing cannabinoids derived from hemp; artificial coffee containing cannabinoids derived from hemp; ice cream containing cannabinoids derived from hemp; sauces containing cannabinoids derived from hemp

 

INTERNATIONAL CLASS 31:  Pet beverages containing cannabinoids derived from hemp; pet food containing cannabinoids derived from hemp; pet treats containing cannabinoids derived from hemp; hemp seeds

 

INTERNATIONAL CLASS 32:  Non-alcoholic beverages containing cannabinoids derived from hemp; fruit beverages and juices containing cannabinoids derived from hemp; syrups and other preparations for making beverages containing cannabinoids derived from hemp; beer containing cannabinoids derived from hemp

 

INTERNATIONAL CLASS 33:  Alcoholic beverages containing cannabinoids derived from hemp

 

INTERNATIONAL CLASS 35:  Online retail, wholesale and retail store services featuring hemp, cannabinoids derived from hemp, herbal preparations, skin care preparations, balms, lotions, makeup, cosmetics, beauty products, soaps, powders, fragrances, perfumes, essential oils, toothpastes and dentifrices, hair products, body wash, medicated cosmetics, medicated supplements, medicated food and beverages, plant extracts for medical, veterinary and pharmaceutical purposes, pharmaceutical preparations and herbal medicine preparations derived from plants, tinctures, clothing, hair accessories, dairy products, edible oils and fats, jellies and jams, fruit and nut based spreads, snack foods, bakery products, candies, dessert products, chocolate and chocolate-based products, cocoa and cocoa products, coffee, tea, artificial coffee, ice cream, sauces, pet beverages, pet food, pet treats, hemp seeds, non-alcoholic beverages, fruit beverages and juices, syrups and other preparations for making beverages, beer, alcoholic beverages, hemp cigarettes, cigarettes, e-cigarettes, smoking accessories, capsules, powder, rolling papers

 

It is unlawful to introduce food containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived.  See  Statement of former 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.  See  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).  The application does not indicate whether applicant is currently seeking FDA approval of the marketing of its goods, and if so, does not include a copy of its marketing application, to claim a bona fide intent to use the mark in commerce under Section 1(b), 15 U.S.C. §1051(b), upon approval of applicant’s application for FDA approval, when lawful use may be alleged.   See 37 C.F.R. §§2.34 et seq., TMEP §§806 et seq. 

 

Because introduction of such goods into commerce was not lawful as of the filing date, applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with such goods and/or the identified services.  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.  Accordingly, registration is refused, as to the indicated goods and services, under Sections 1 and 45 of the Trademark Act.

 

REFUSALS PERTAIN TO SPECIFIED CLASSES ONLY – OPTIONS

The stated refusals refer to International Classes 1, 3, 5, 25, 29, 30, 31, 32, 33, 34, and 35 only and does not bar registration in International Class 41.

 

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(es) to which the refusal pertains;

 

(2)  Filing a request to divide out the goods and/or services 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).)

 

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

 

If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

REQUEST FOR INFORMATION

To permit proper examination of the application, applicant must submit additional information about the goods and/or services.  37 C.F.R. §§2.61(b), 2.69; Cf. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1284, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing Patent Rule 1.105(a)(1), which is the equivalent of Trademark Rule 2.61(b)); TMEP §§814, 907.  The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods and/or services.  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 and/or services identified in the application. 

 

In addition, applicant must submit a written statement indicating whether the goods/services identified in the application comply with the Food, Drug and Cosmetic Act (FDCA). 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 Federal Food, Drug and Cosmetic Act).   See 37 C.F.R. §2.69; TMEP §907.  Furthermore, 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);

 

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

 

1. Do or will the goods include cannabidiol (CBD)?
2. If so, will there be more than a trace amount of CBD in the goods, e.g., more than 50 parts per million (PPM)?
3. Do or will applicant’s identified goods include CBD which is derived from, oils, extracts or ingredients from plants other than Cannabis sativa L (also known as hemp, marijuana or cannabis)?
4. Is applicant currently seeking FDA approval of the marketing of its goods identified in the application?
5. If the answer to Question 4 is “yes,” please provide a copy of such application.
6. If the “hemp” is grown in the United States of America, was the hemp used in the goods obtained from an authorized grower or supplier of industrial hemp from a hemp growing pilot program set up under the 2014 Farm Bill?

 

Failure to satisfactorily respond to a requirement for information is a ground for refusing registration. See In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (affirming refusal of registration because applicant’s appeal brief failed to address the relevant refusals, including a refusal based on noncompliance with a requirement for information); In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013) (“Failure to comply with a request for information is grounds for refusal,” where applicant provided equivocal responses to examining attorney’s questions and did not address this issue in its brief).  Applicant’s failure to respond to an information requirement may result in an adverse evidentiary inference being drawn regarding applicant’s goods. Id. at 1651; In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); 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).

 

STATEMENT REQUIRED -- SIGNIFICANCE OF “GOLD” IN THE MARK

To permit proper examination of the application, applicant must explain whether the word “GOLD” in the mark has any significance in the personal care products, pharmaceutical products, and/or tobacco, cigarette and smokers’ products fields, trades or industries (including whether any of the goods will include “gold” blend tobacco and/or ashtrays, smokers’ articles or any other products containing gold),  or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry.  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.

 

CITIZENSHIP AMENDED ENTITY TYPE REQUIRED

Applicant must specify its national citizenship for the record.  15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(3)(i); TMEP §803.03(j).  For an enterprise organized under the laws of a federally recognized Indian tribe, the citizenship “UNITED STATES” is acceptable.  See TMEP §803.03(j).

 

In addition, applicant must amend the entity information to specify that it is incorporated “under the laws of the Navajo Nation, a federally recognized Indian tribe.”  See 37 C.F.R. §§2.32(a)(3)(ii)-(iv), 2.61(b); TMEP §803.03(j).

 

The following wording is suggested, if accurate:

 

Applicant:       Native American Agricultural Development Company

Entity:             a corporation formed under the laws of the Navajo Nation, a Federally Recognized Indian Tribe

Citizenship:    UNITED STATES

 

or:

 

Applicant:       Native American Agricultural Development Company

Entity:             a wholly owned tribal enterprise organized under the laws of the Navajo Nation, a Federally Recognized Indian Tribe

Citizenship:    UNITED STATES

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

IDENTIFICATION OF GOODS AND SERVICES

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

Applicant has asserted different filing bases for specific goods within International Class 34.  TMEP §806.02(a).  Therefore, applicant must amend the identification to specify the goods covered by each basis by inserting the applicable basis (i.e., “(based on use in commerce)” or “(based on intent to use)”) immediately before the goods covered by each basis.  37 C.F.R. §§2.34(b), 2.35(b)(6); 37 C.F.R. §2.34(b); TMEP §806.02(a). 

 

In addition, applicant must clarify the wording indicated in bold below and replace the wording “such as” in the identification of goods and services 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 and/or services are.  Further, this wording could identify goods and/or services in more than one international class.  For example, hemp extracts for manufacturing use are in class 1 and hemp milk is in class 29; herbal preparations in the nature of herb extracts herb extracts for use in the manufacture of cosmetics are in class 1, herbal preparations in the nature of topical herbal extracts for cosmetic purposes are in class 3 and herbal preparations for medicinal use are in class 5; non-medicated skin care preparations are in class 3 and medicated skin care preparations are in class 5; hair accessories, namely turbans for drying hair are in class 24, hair scarves are in class 25 and hair accessories, namely, hair ties, hair bands and hair scrunchies are in class 26; fruit-, nut-, and soy-based snack foods are in class 29 and chocolate-, coffee-, and grain-based snack foods are in class 30; chocolate-based products in the nature of meal replacement shakes for weight loss purposes are in class 5 and chocolate-based products in the nature of brownies are in class 30; preparations for making beverages, namely, dairy-based powders for making dairy-based food beverages and shakes are in class 29, preparations for making coffee-based beverages are in class 30 and preparations for making beverages in the nature of syrups for making non-alcoholic beverages are in class 32. 

 

Finally, applicant must amend the identification to specify that the cannabidiol goods or related goods and/or services 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 substitute the following wording, if accurate: 

 

INTERNATIONAL CLASS 1:  Hemp, namely, _____ (specify nature of goods and classify accordingly, e.g., hemp oil containing cannabidiol (CBD) solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis for use in the manufacture of vape pens and vaping accessories); cannabidiol, namely, _____ (specify nature of goods and classify accordingly, e.g., cannabidiol isolate for use in making non-medicated topicals and massage oils not containing any ingredients with a delta-9 tetrahydrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis); cannabigerol, namely, _____ (specify nature of goods and classify accordingly, e.g., cannabigerol isolate for use in making non-medicated topicals and massage oils not containing any ingredients with a delta-9 tetrahydrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis); cannabinol, namely, _____ (specify nature of goods and classify accordingly, e.g., cannabidiol isolate for use in making non-medicated topicals and massage oils not containing any ingredients with a delta-9 tetrahydrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis); tetrahydrocannabivarin (THCV), namely, _____ (specify nature of goods and classify accordingly, e.g., tetrahydrocannabivarin (THCV) isolate for use in making non-medicated topicals and massage oils not containing any ingredients with a delta-9 tetrahydrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis); cannabinoids, namely, _____ (specify, e.g., hemp oil containing cannabidiol (CBD) solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis for use in the manufacture of vape pens and vaping accessories); herbal preparations, namely, _____ (specify and classify accordingly, e.g., herbal preparations in the nature of herb extracts for use in the manufacture of cosmetics); none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 3:  (based on use in commerce) Powders, namely, _____ (specify type and classify accordingly, e.g., face powder, body powder); (based on intent to use) skin care preparations, namely, _____ (specify non-medicated or medicated and classify accordingly) creams, balms, and lotions; makeup; cosmetics; beauty products, namely, _____ (specify type and classify accordingly, e.g., beauty masks); soaps, namely, _____ (specify type and classify accordingly, e.g., non-medicated soaps); fragrances; perfumes; essential oils; toothpastes and dentifrices; hair products, namely, shampoo, conditioner, hairspray, and hair gel and hair brushes [delete from this class -- hair brushes are in class 21]; body wash; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 5: (based on use in commerce) Pharmaceutical preparations for _____ (specify disease or condition treated, e.g., for skin care, for controlling cholesterol and treating anxiety, asthma and allergies) and herbal medicinal preparations derived from plants in the form of pills, capsules, sprays, oral sprays, tinctures, and _____ supplements (specify nature of the supplements, e.g., dietary supplements); herbal tinctures for medical purposes; (based on intent to use) cannabinoids derived from hemp, namely, _____ (specify nature of goods, e.g., hemp oil containing cannabidiol (CBD) solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis) for use in medicated cosmetics, medicated oils for _____ (specify, e.g., for medical purposes), medicated supplements, namely, _____ (specify, e.g., herbal tinctures for medical purposes in the nature of plant extracts derived from hemp oil containing cannabidiol (CBD) solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis), medicated food and beverages, namely, _____ (specify, e.g., nutritionally fortified food and beverages adapted for medical use, dietetic food and beverages for medical purposes); plant extracts for medical, veterinary and pharmaceutical purposes; pharmaceutical preparations for _____ (specify disease or condition treated, e.g., for skin care, for controlling cholesterol and treating anxiety, asthma and allergies) and herbal medicinal preparations derived from plants in the form of elixirs, patches, doses, hashish being _____ (specify, e.g., being a resinous hemp extract for medical purposes containing cannabidiol (CBD) solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis), resins, oils, drops, chews, gummies, salves, pastes and concentrates; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 9:  weighing scales; nebulizers for scientific research use

 

INTERNATIONAL CLASS 10:  nebulizers for medical purposes

 

INTERNATIONAL CLASS 21:  hair brushes

 

INTERNATIONAL CLASS 25:  Clothing, namely, _____ (specify type, e.g., shirts, baseball caps, scarves, sweatshirts); hair accessories [delete from this class – hair accessories are in class 26]; hats; gloves; apparel for men, women and children, namely, _____ (specify, e.g., shirts, shorts, coats, footwear, knit caps, pajamas); pants; jackets; shirts; nightwear

 

INTERNATIONAL CLASS 26:  Hair accessories, namely, _____ (indicate type, e.g., hair ties, hair scrunchies)

 

INTERNATIONAL CLASS 29:  Dairy products, namely, _____ (specify type, e.g., hemp milk) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; edible oils and fats containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; jellies and jams containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; fruit and nut based spreads containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; snack foods, namely, _____ (specify type and classify accordingly, e.g., fruit-, nut-, meat-, cheese- and soy-based snack foods) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 30:    Bakery products containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; candies containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; dessert products, namely, _____ (specify type, e.g., cakes, cookies, pastries, candies, and frozen confections) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; chocolate and chocolate-based products, namely, _____ (specify type of chocolate-based products and classify accordingly, e.g., brownies and meal replacement bars) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; cocoa and cocoa products, namely, _____ (specify type or cocoa products, e.g., cocoa spreads, cocoa-based beverages) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; coffee containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; tea containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; artificial coffee containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; ice cream containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; sauces containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 31:  Pet beverages containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; pet food containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; pet treats, namely, _____ (specify type and classify accordingly, e.g., edible pet treats) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; hemp seeds, namely, _____ (specify type and classify accordingly, e.g., unprocessed edible hemp seeds, hemp seeds for planting) solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 32:  Non-alcoholic beverages, namely, _____ (specify type and classify accordingly, e.g., smoothies, water-based beverages, and soft drinks) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; fruit beverages and juices, namely, _____ (specify type of fruit beverages and juices and classify accordingly, e.g., _____ non-alcoholic fruit beverages, fruit juices, and orange juice) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; syrups and other preparations for making beverages, namely, _____ (specify type of preparations and classify accordingly, e.g., syrups for making beverages and preparations in the nature of powders and concentrates for making soft drinks and tea-based beverages) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; beer containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 33:  Alcoholic beverages, namely, _____ (specify type and classify accordingly, e.g., alcoholic beverages except beers, alcoholic fruit beverages, and pre-mixed alcoholic beverages, other than beer-based) containing cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 34:  (based on use in commerce) Hemp cigarettes solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; cigarettes; smoking accessories, namely, cigarette rolling papers; hemp powder for _____ (specify use and classify accordingly, e.g., hemp powder for smoking) derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis; (based on intent to use) e-cigarettes; smoking accessories, namely, pipes in the nature of _____ (specify, e.g., smoking pipes, tobacco pipes, smokeless cigar vaporizer pipes), water pipes for _____ (specify, e.g., water pipes for smoking), grinders being _____ (specify, e.g., tobacco grinders), vaporizers being _____ (specify, e.g., oral vaporizers for smokers), scales [delete from this class – scales are in class 9], inhalers being _____ (specify type and classify accordingly, e.g., inhalers being devices for heating tobacco and tobacco substitutes for the purpose of inhalation), cases for _____ (specify, e.g., cigarettes, cases for electronic cigarettes and electronic cigarette accessories), storage containers in the nature of _____ (specify type and classify accordingly, e.g., humidors and storage containers specially adapted for hookahs), filters in the nature of _____ (specify, e.g., filer tips and filter tubes for cigarettes), cartridges in the nature of _____ (specify use and whether sold filled or sold empty, e.g., electronic cigarette refill cartridges sold empty, cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes), pods being _____ (specify, e.g., pods of compressed tobacco for smoking), lighters for _____ (specify type and classify accordingly, e.g., cigarette lighters, lighters for smokers), matches, ashtrays, holders for _____ (specify, e.g., cigarettes), nebulizers [delete from this class -- nebulizers for scientific use are in class 9 and nebulizers for medical purposes are in class 10]; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS 35:  Online retail _____ (specify, e.g., retail ordering services), wholesale _____ (specify, e.g., wholesale ordering services) and retail store services featuring hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis, cannabinoids derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis, herbal preparations, skin care preparations, balms, lotions, makeup, cosmetics, beauty products, soaps, powders, fragrances, perfumes, essential oils, toothpastes and dentifrices, hair products, body wash, medicated cosmetics, medicated supplements, medicated food and beverages, plant extracts for medical, veterinary and pharmaceutical purposes, pharmaceutical preparations and herbal medicine preparations derived from plants, tinctures, clothing, hair accessories, dairy products, edible oils and fats, jellies and jams, fruit and nut based spreads, snack foods, bakery products, candies, dessert products, chocolate and chocolate-based products, cocoa and cocoa products, coffee, tea, artificial coffee, ice cream, sauces, pet beverages, pet food, pet treats, hemp seeds solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis, non-alcoholic beverages, fruit beverages and juices, syrups and other preparations for making beverages, beer, alcoholic beverages, hemp cigarettes derived from hemp solely with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis, cigarettes, e-cigarettes, smoking accessories, capsules, powder, rolling papers; none of the foregoing containing cannabis, hemp, or CBD with a delta-9 THC concentration of more than 0.3% on a dry weight basis

 

INTERNATIONAL CLASS TBD (CURRENTLY CLASS 41):  Online informational services, namely, providing information relating to _____ (specify the subject matter of the information and classify accordingly, e.g. –

 

INTERNATIONAL CLASS 35:  Online informational services, namely, providing information relating to current events and on economic, legislative, and regulatory developments as it relates to and can impact businesses in the field of cannabis, marijuana, hemp, CBD, cannabidiol, cannabinoids, cannabigerol, cannabinol, THC, THCV, and herbal preparations

 

INTERNATIONAL CLASS 43: Online informational services, namely, providing information relating to recipes and cooking information in the field of cannabis, marijuana, hemp, CBD, cannabidiol, cannabinoids, cannabigerol, cannabinol, THC, THCV, and herbal preparations

 

INTERNATIONAL CLASS 44:  Online informational services, namely, providing information relating to diagnostic, prophylactic and therapeutic properties of pharmaceuticals in the field of cannabis, marijuana, hemp, CBD, cannabidiol, cannabinoids, cannabigerol, cannabinol, THC, THCV, and herbal preparations

 

INTERNATIONAL CLASS 45:  Online informational services, namely, providing information relating to legal affairs in the field of cannabis, marijuana, hemp, CBD, cannabidiol, cannabinoids, cannabigerol, cannabinol, THC, THCV, and herbal preparations

 

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).

 

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 REQUIREMENTS

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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least sixteen classes; however, applicant submitted fees sufficient for only twelve 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For the goods based on use in commerce in classes 1, 3, and 34, the current specimens are acceptable.

 

See 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.

 

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

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

 

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 October 29, 2019 for

U.S. Trademark Application Serial No. 88642374

 

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. 

 

 

/Kathy de Jonge/

Trademark Examining Attorney

Law Office 107

(571) 272-9152

kathleen.dejonge@USPTO.gov (informal use only)

 

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 October 29, 2019, 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.”