United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88746415
Mark: STEMCBD
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Correspondence Address:
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Applicant: StemStix, Inc.
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Reference/Docket No. SStx-04
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: June 11, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL
This refusal only applies to the following goods: “Cosmetic preparations; Cosmetic preparations for body care; Cosmetic preparations for skin renewal” in class 003.
The applicant has applied to register the mark STEMCBD in standard character format for “Cosmetic preparations; Cosmetic preparations for body care; Cosmetic preparations for skin renewal” in class 003.
The mark in Registration No. 4084246 is DERMASTEM in standard character format for “Non-medicated topical ointment comprised of a blend of algal polysaccharides and other botanical blends supporting stem cell physiology of the skin” in class 003.
The mark in Registration No. 5413195 is STEMM in standard character format for “Hair care products, namely, non-medicated hair treatments for cosmetic purposes, non-medicated scalp serums, shampoos, conditioners, hair styling products, namely, hair styling gels, hair styling preparations, hair styling sprays, and hair oils” in class 003.
Please note, all the marks are in standard character format.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, applicant’s mark STEMCBD is confusingly similar to the marks DERMASTEM in Registration No. 4084246 and STEMM in Registration No. 5413195. Specifically, STEM in applicant’s mark is highly similar in sound and appearance to the STEM in registrant’s mark in Registration No. 4084246 and the STEMM in registrant’s mark in Registration No. 5413195. Further, this shared word means “[t]he main ascending part of a plant; a stalk or trunk.” See http://www.ahdictionary.com/word/search.html?q=stem.
Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). In the present case, the attached evidence shows that the wording CBD in the applied-for mark is merely descriptive of or generic for applicant’s goods. See http://www.ahdictionary.com/word/search.html?q=CBD, http://www.ahdictionary.com/word/search.html?q=+cannabidiol, the Mark Drawing in the Application dated January 3, 2020 at p. 2, http://cbdamericanshaman.com/beauty, http://www.cosmedix.com/skincare/retail/cbd and http://koicbd.com/cbd-skincare/. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording STEM the more dominant element of the mark. Therefore, the dominant element of applicant’s mark STEM is identical to the word STEM in registrant’s mark DERMASTEM in Registration No. 4084246 and nearly identical to registrant’s mark STEMM in Registration No. 5413195. Therefore, the marks are confusingly similar.
In summary, because of the contemporaneous use of the distinctive word STEM, it follows that purchasers are likely to believe that the marks identify the same source for cosmetic preparation goods. Thus, the marks are confusingly similar.
Comparison of the Goods
The applicant’s goods are “Cosmetic preparations; Cosmetic preparations for body care; Cosmetic preparations for skin renewal” in class 003.
The registrant’s goods in Registration No. 4084246 are “Non-medicated topical ointment comprised of a blend of algal polysaccharides and other botanical blends supporting stem cell physiology of the skin” in class 003.
The registrant’s goods in Registration No. 5413195 are “Hair care products, namely, non-medicated hair treatments for cosmetic purposes, non-medicated scalp serums, shampoos, conditioners, hair styling products, namely, hair styling gels, hair styling preparations, hair styling sprays, and hair oils” in class 003.
As the case law and attached evidence shows, the applicant's cosmetic preparation goods, registrant’s non-medicated topical ointment goods in Registration No. 4084246 and registrant’s non-medicated hair treatment, shampoo, conditioner, hair styling preparation and hair oil goods in Registration No. 5413195 are commercially related, because applicant’s broad identification encompass the registrants’ narrower identifications in Registration Nos. 4084246 and 5413195 and many companies provide these types of goods.
Determining likelihood of confusion is based on the description of the goods stated in the application and registrations 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 “Cosmetic preparations; Cosmetic preparations for body care; Cosmetic preparations for skin renewal”, which presumably encompasses all goods of the type described, including registrants’ more narrow identifications of: “Non-medicated topical ointment comprised of a blend of algal polysaccharides and other botanical blends supporting stem cell physiology of the skin” in Registration No. 4084246 and “Hair care products, namely, non-medicated hair treatments for cosmetic purposes, non-medicated scalp serums, shampoos, conditioners, hair styling products, namely, hair styling gels, hair styling preparations, hair styling sprays, and hair oils” in Registration No. 5413195. 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). Thus, applicant’s and registrants’ goods are legally identical. 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 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 registrants’ goods are related.
Moreover, the attached Internet evidence consists of screenshots from Aveda, Kiehl’s and The Body Shop. See http://www.aveda.com/, http://www.kiehls.com/ and http://www.thebodyshop.com/en-us/. This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrants’ goods 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). Accordingly, purchasers are likely to be confused as to the source of the goods when they encounter cosmetic preparation goods offered under highly similar marks. Therefore, applicant's goods and registrant's goods are considered related for likelihood of confusion purposes.
In summary, the marks are confusingly similar and the goods are related. Therefore, purchasers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTIONS 1 & 45 REFUSAL – FDCA REFUSAL
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 registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, the goods to which the mark is to be applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
The Federal Food, Drug, and Cosmetic Act (FDCA) prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug approved under Section 355 of the Act or a biological product licensed under 42 U.S.C. §262. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA and does not include an article that is approved as a new drug under 21 U.S.C. §355, certified as an antibiotic under 21 U.S.C. §357, or licensed as a biologic under 42 U.S.C. §262).
Cannabidiol (CBD), a chemical constituent of the cannabis plant, was the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements. On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved the first prescription pharmaceutical formulation of plant-derived CBD, Epidiolex®, for the treatment of two rare forms of epilepsy, Lennox-Gastaut syndrome and Dravet syndrome. The Drug Enforcement Administration (DEA) placed Epidiolex® on schedule V of the CSA on September 27, 2018. Nevertheless, marijuana and CBD derived from marijuana remain unlawful. No other cannabis-derived drug products have been approved by the FDA. Under the FDCA, any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug. 21 U.S.C. § 321(g)(1) An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers http://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers copy attached.
Applicant’s goods are broad enough to encompass products that consist of, or include, items that are or were prohibited by the FDCA, namely, applicant’s goods of: “Cosmetic preparations; Cosmetic preparations for body care; Cosmetic preparations for skin renewal; Electronic cigarette liquid (e-liquid) comprised of essential oils” in class 003, “Beauty beverages, namely, fruit juices and energy drinks containing nutritional supplements; Concentrated fruit juice; Concentrates for making fruit juices; Fruit juice; Fruit juice bases; Fruit juice beverages; Fruit juice concentrates; Fruit juices; Fruit juices and fruit drinks; Green vegetable juice beverages; Herbal juices; Mixed fruit juice; Non-alcoholic beverages containing fruit juices; Non-alcoholic fruit juice beverages; Vegetable juice” in class 032 and “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of propylene glycol; Electronic cigarette liquid (e-liquid) comprised of vegetable glycerin; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; Cartridges sold filled with propylene glycol for electronic cigarettes; Cartridges sold filled with vegetable glycerin for electronic cigarettes; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Flavorings, other than essential oils, for use in electronic cigarettes; Liquid nicotine solutions for use in electronic cigarettes” in class 034. Given the broad nature of these entries, it is presumed that these goods could potentially include the prohibited substance of CBD. Moreover, the wording CBD contained in the applied-for mark plainly indicates that applicant’s identified goods will in fact contain CBD.
It is unlawful to introduce food to which CBD, an “article that is approved as a new drug,” has been added into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. 21 U.S.C. §§321(ff)(3)(B)(ii), 331(d), 355(a); see also 21 U.S.C. §352(f)(1) regarding mislabeled drugs. See also Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds. http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm copy attached.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) Because introduction of such goods into commerce was not lawful as of the filing date, applicant did not have a bona fide intent to use the applied-for mark in lawful commerce in connection with such goods. See e.g. In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.
PRIOR FILED APPLICATIONS NOTICE
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(A) ADVISORY
Applicant is advised that as the mark features the acronym “CBD”, it conveys to potential purchasers the impression that applicant’s goods do contain cannabidiol (“CBD”) in sufficient levels to have a therapeutic or medical effect. This feature or characteristic is considered desirable for applicant’s goods because CBD is touted as being beneficial for pain management, anxiety and sleep problems, depression treatments, muscle spasms, digestive issues and skin ailments. However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
Please see the attached examples from the following sources emphasizing the desirability of CBD as an ingredient in skin care and edible items.
To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
RESPONSE OPTIONS & ADVISORY
Applicant may respond to the Section 2(a) Advisory by adopting the following identification of goods, if accurate:
Class 003: “Cosmetic preparations; Cosmetic preparations for body care; Cosmetic preparations for skin renewal; Electronic cigarette liquid (e-liquid) comprised of essential oils; all of the foregoing goods containing CBD solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
Class 032: “Beauty beverages, namely, fruit juices and energy drinks containing nutritional supplements; Concentrated fruit juice; Concentrates for making fruit juices; Fruit juice; Fruit juice bases; Fruit juice beverages; Fruit juice concentrates; Fruit juices; Fruit juices and fruit drinks; Green vegetable juice beverages; Herbal juices; Mixed fruit juice; Non-alcoholic beverages containing fruit juices; Non-alcoholic fruit juice beverages; Vegetable juice; all of the foregoing goods containing CBD solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
Class 034: “Electronic cigarette liquid (e-liquid) comprised of flavorings in liquid form, other than essential oils, used to refill electronic cigarette cartridges; Electronic cigarette liquid (e-liquid) comprised of propylene glycol; Electronic cigarette liquid (e-liquid) comprised of vegetable glycerin; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes; Cartridges sold filled with propylene glycol for electronic cigarettes; Cartridges sold filled with vegetable glycerin for electronic cigarettes; Chemical flavorings in liquid form used to refill electronic cigarette cartridges; Flavorings, other than essential oils, for use in electronic cigarettes; Liquid nicotine solutions for use in electronic cigarettes; all of the foregoing goods containing CBD solely derived from hemp with a delta-9 tetrahyrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”
Applicant should note that by adopting the above identification amendment proposed the applicant may overcome the Section 2(a) Advisory. However, applicant may still be subject to the FDCA refusal for the applicant’s beverage goods in class 032.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Rebecca Lee/
Examining Attorney
Law Office 122
(571) 272 - 7809
Rebecca.Lee1@uspto.gov
RESPONSE GUIDANCE
