To: | Native American Agricultural Development ETC. (efiling@grr.com) |
Subject: | U.S. Trademark Application Serial No. 88642374 - NAVAJO GOLD - 9069/005 |
Sent: | October 29, 2019 09:33:52 AM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88642374
Mark: NAVAJO GOLD
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Correspondence Address: GOTTLIEB, RACKMAN & REISMAN, P.C.
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Applicant: Native American Agricultural Development ETC.
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Reference/Docket No. 9069/005
Correspondence Email Address: |
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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.
PRIOR-FILED PENDING APPLICATION (ADVISORY)
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
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.
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:
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”).
Relatedness of the Goods/Services
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 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).
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
(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
(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).)
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:
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
CITIZENSHIP AMENDED ENTITY TYPE REQUIRED
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
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
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
(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
/Kathy de Jonge/
Trademark Examining Attorney
Law Office 107
(571) 272-9152
kathleen.dejonge@USPTO.gov (informal use only)
RESPONSE GUIDANCE