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:  September 14, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SEARCH OF USPTO DATABASE OF MARKS

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

SUMMARY OF ISSUES:

• Controlled Substances Act Refusal
• Drug Paraphernalia Refusal
• Identification of Goods

 

CANNABIS-SPECIFIED GOODS REFUSAL– NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce with respect to goods and/or services that are not lawful under federal law.  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 cannabis goods:  dried cannabis; dried marijuana;.  Such goods 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)  Applicant’s goods and/or services consist of, or include, items or activities that are or were prohibited by the CSA, namely, dried cannabis; dried marijuana;.   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.”); 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 identified did not potentially comply with applicable federal laws until that date.  Because the identified goods and/or services consist of or include items or activities that are prohibited under the Controlled Substances Act, the applicant did not have a valid basis for filing the application.  Nevertheless, to the extent the applicant’s goods will be derived 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 all cannabis-containing items are “solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.”  Please see the complete requirement for an acceptable identification of goods below.

 

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

 

DRUG PARAPHERNALIA REFUSAL - NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE

 

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 to which the proposed mark will be applied are broad enough to encompass products that are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971.    The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport “drug paraphernalia,” which is defined as “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing in the human body a controlled substance.”  21 U.S.C. § 863.  Under the CSA, marijuana is a controlled substance.  21 U.S.C. §§ 812(a), (c), 841, 844.

 

The identification of goods includes equipment and products for inhaling and introducing to the body marijuana, namely, “Tobacco and tobacco products; absorbent paper for tobacco pipes; ashtrays; books of cigarette papers; 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; cases for electronic cigarettes; ceramic snuff boxes; chemical flavourings in liquid form used to refill electronic cigarette cartridges; chewing tobacco; cigar boxes; cigar cases; cigar cutters; cigar holders; cigar humidifiers; cigar tubes; cigarette boxes; cigarette cases; cigarette filters; cigarette lighter holders; cigarette lighters; cigarette lighters of precious metal; cigarette lights; cigarette paper; cigarette rollers; cigarette rolling machines; cigarette rolling papers; cigarette tips; cigarette tubes; cigarettes; cigarillos; cigars; …e-cigarettes; electric cigarettes; electronic cigarette boxes; electronic cigarette cases; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic cigars; electronic hookahs; electronic smoking pipes; electronic vaporizers for smoking purposes; filter tips for cigarettes; filter-tipped cigarettes; firestones; flints and firestones; flints for lighters; gas containers for cigar lighters; hand-rolling tobacco; herbs for smoking; holders for cigarette lighters; holders of cigars of precious metal; hookahs; humidors; leaf tobacco; lighter flints; lighters; lighters for smokers; liquefied gas cylinders for cigarette lighters; liquid nicotine solutions for use in e-cigarettes; liquid nicotine solutions for use in electronic cigarettes; liquid solutions for use in electronic cigarettes; liquified fuel gas cylinders for cigarette lighters; machines allowing smokers to make cigarettes by themselves; machines for rolling cigarettes; match books; match boxes; match holders; match holders of precious metal; matchboxes; matchboxes of precious metal; matches; menthol cigarettes; menthol pipe tobacco; mentholated cigarettes; mentholated pipes; mentholated tobacco; metal cigar cases; metal snuff boxes; mouthpieces for cigarette holders; narghiles; oral vaporizers for smokers; oral vaporizers for smoking purposes; paraffin matches; pipe cleaners; pipe cleaners for tobacco pipes; pipe pouches; pipe racks for tobacco pipes; pipe tampers; pipe tobacco; pipes for smoking mentholated tobacco substitutes; pocket apparatus for rolling cigarettes; pocket apparatus for self-rolling cigarettes; pocket appliances for rolling one's own cigarettes; pocket-size cigarette rolling machines; roll your own tobacco; rolling tobacco; safety matches; smokeless cigar vaporizer pipes; smokeless cigarette vaporizer pipes; smokeless tobacco; smoking pipe cleaners; smoking pipe scourers; smoking pipes; smoking tobacco; snuff; snuff boxes; snuffboxes; snus; spittoons for tobacco users; sulfur matches; sulphur matches; tampers for tobacco pipes; tips of yellow amber for cigar and cigarette holders; tobacco; tobacco, cigars and cigarettes; tobacco filters; tobacco flavourings; tobacco jars; tobacco pipe cleaners; tobacco pipe tampers; tobacco pipes; tobacco pouches; tobacco products; tobacco slicers; tobacco spittoons; tobacco tins; white phosphorus matches; yellow phosphorus matches”. 

 

In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful.  See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976).  Accordingly, because 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.  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).  Because the identified goods and/or services consist of or include items or activities that are still prohibited under the Controlled Substances Act, namely “Tobacco and tobacco products; absorbent paper for tobacco pipes; ashtrays; books of cigarette papers; 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; cases for electronic cigarettes; ceramic snuff boxes; chemical flavourings in liquid form used to refill electronic cigarette cartridges; chewing tobacco; cigar boxes; cigar cases; cigar cutters; cigar holders; cigar humidifiers; cigar tubes; cigarette boxes; cigarette cases; cigarette filters; cigarette lighter holders; cigarette lighters; cigarette lighters of precious metal; cigarette lights; cigarette paper; cigarette rollers; cigarette rolling machines; cigarette rolling papers; cigarette tips; cigarette tubes; cigarettes; cigarillos; cigars; dried cannabis; dried marijuana; e-cigarettes; electric cigarettes; electronic cigarette boxes; electronic cigarette cases; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic cigars; electronic hookahs; electronic smoking pipes; electronic vaporizers for smoking purposes; filter tips for cigarettes; filter-tipped cigarettes; firestones; flints and firestones; flints for lighters; gas containers for cigar lighters; hand-rolling tobacco; herbs for smoking; holders for cigarette lighters; holders of cigars of precious metal; hookahs; humidors; leaf tobacco; lighter flints; lighters; lighters for smokers; liquefied gas cylinders for cigarette lighters; liquid nicotine solutions for use in e-cigarettes; liquid nicotine solutions for use in electronic cigarettes; liquid solutions for use in electronic cigarettes; liquified fuel gas cylinders for cigarette lighters; machines allowing smokers to make cigarettes by themselves; machines for rolling cigarettes; match books; match boxes; match holders; match holders of precious metal; matchboxes; matchboxes of precious metal; matches; menthol cigarettes; menthol pipe tobacco; mentholated cigarettes; mentholated pipes; mentholated tobacco; metal cigar cases; metal snuff boxes; mouthpieces for cigarette holders; narghiles; oral vaporizers for smokers; oral vaporizers for smoking purposes; paraffin matches; pipe cleaners; pipe cleaners for tobacco pipes; pipe pouches; pipe racks for tobacco pipes; pipe tampers; pipe tobacco; pipes for smoking mentholated tobacco substitutes; pocket apparatus for rolling cigarettes; pocket apparatus for self-rolling cigarettes; pocket appliances for rolling one's own cigarettes; pocket-size cigarette rolling machines; roll your own tobacco; rolling tobacco; safety matches; smokeless cigar vaporizer pipes; smokeless cigarette vaporizer pipes; smokeless tobacco; smoking pipe cleaners; smoking pipe scourers; smoking pipes; smoking tobacco; snuff; snuff boxes; snuffboxes; snus; spittoons for tobacco users; sulfur matches; sulphur matches; tampers for tobacco pipes; tips of yellow amber for cigar and cigarette holders; tobacco; tobacco, cigars and cigarettes; tobacco filters; tobacco flavourings; tobacco jars; tobacco pipe cleaners; tobacco pipe tampers; tobacco pipes; tobacco pouches; tobacco products; tobacco slicers; tobacco spittoons; tobacco tins; white phosphorus matches; yellow phosphorus matches”  the applicant did not have a valid filing basis for any such items or activities.  To the extent the applicant’s goods are exclusively for use with products derived solely from cannabis plants that meet the current statutory definition of hemp, such goods may be lawful.

 

Therefore, in order to overcome this refusal, applicant must amend the identification of goods and services to specify that all items are “exclusively for use with CBD products solely derived from hemp with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.”  Please see the complete requirement for an acceptable identification of goods below.

 

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

 

IDENTIFICATION OF GOODS

 

The wording “tobacco products” in the identification of goods is indefinite and must be clarified because the products must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “cigarette lights” in the identification of goods is indefinite and must be clarified because the goods being not of precious metal must be specified.  Id.

 

The wording “tips” in the identification of goods is indefinite and must be clarified because the goods being filters must be specified.  Id.

 

The wording “cigarette roller” in the identification of goods is indefinite and must be clarified because the nature of the roller must be specified.  Id.

 

The wording “e-cigarettes” in the identification of goods is indefinite and must be clarified because the nature of the goods must be specified.  Id.

 

The wording “gas containers for cigar lighters” in the identification of goods is indefinite and must be clarified because the nature of the gas must be specified.  Id.

 

The wording “lighters” and “pipe cleaners” in the identification of goods is indefinite and must be clarified because the lighters being for smokers must be specified.  Id.

 

The wording “narghiles” in the identification of goods is indefinite and must be clarified because the goods being hookah parts must be specified.  Id.

 

The wording “snus” in the identification of goods is indefinite and must be clarified because the goods being tobacco powder must be specified.  Id.

 

The wording “tobacco flavourings” in the identification of goods is indefinite and must be clarified because the goods not being essential oils must be specified.  Id

 

Applicant may substitute the following wording, if accurate (suggested changes in bold): 

 

Class 034: Tobacco and tobacco products, namely, {specify tobacco products}; absorbent paper for tobacco pipes; ashtrays; books of cigarette papers; 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; cases for electronic cigarettes; ceramic snuff boxes; chemical flavourings in liquid form used to refill electronic cigarette cartridges; chewing tobacco; cigar boxes; cigar cases; cigar cutters; cigar holders; cigar humidifiers; cigar tubes; cigarette boxes; cigarette cases; cigarette filters; cigarette lighter holders; cigarette lighters; cigarette lighters of precious metal; cigarette lights not of precious metal [not for automobiles]; cigarette paper; cigarette roller machines; cigarette rolling machines; cigarette rolling papers; cigarette filter tips; cigarette tubes; cigarettes; cigarillos; cigars; e-cigarettes being Electronic cigarettes; electric cigarettes; electronic cigarette boxes; electronic cigarette cases; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic cigars; electronic hookahs; electronic smoking pipes; electronic vaporizers for smoking purposes; filter tips for cigarettes; filter-tipped cigarettes; firestones; flints and firestones; flints for lighters; liquefied gas containers for cigar lighters; hand-rolling tobacco; herbs for smoking; holders for cigarette lighters; holders of cigars of precious metal; hookahs; humidors; leaf tobacco; lighter flints; lighters for smokers; lighters for smokers; liquefied gas cylinders for cigarette lighters; liquid nicotine solutions for use in e-cigarettes; liquid nicotine solutions for use in electronic cigarettes; liquid solutions for use in electronic cigarettes; liquified fuel gas cylinders for cigarette lighters; machines allowing smokers to make cigarettes by themselves; machines for rolling cigarettes; match books; match boxes; match holders; match holders of precious metal; matchboxes; matchboxes of precious metal; matches; menthol cigarettes; menthol pipe tobacco; mentholated cigarettes; mentholated pipes; mentholated tobacco; metal cigar cases; metal snuff boxes; mouthpieces for cigarette holders; Hookah parts, namely, narghiles; oral vaporizers for smokers; oral vaporizers for smoking purposes; paraffin matches; Smoking pipe cleaners; pipe cleaners for tobacco pipes; pipe pouches; pipe racks for tobacco pipes; pipe tampers; pipe tobacco; pipes for smoking mentholated tobacco substitutes; pocket apparatus for rolling cigarettes; pocket apparatus for self-rolling cigarettes; pocket appliances for rolling one's own cigarettes; pocket-size cigarette rolling machines; roll your own tobacco; rolling tobacco; safety matches; smokeless cigar vaporizer pipes; smokeless cigarette vaporizer pipes; smokeless tobacco; smoking pipe cleaners; smoking pipe scourers; smoking pipes; smoking tobacco; snuff; snuff boxes; snuffboxes; Tobacco powder, namely, snus; spittoons for tobacco users; sulfur matches; sulphur matches; tampers for tobacco pipes; Filter tips of yellow amber for cigar and cigarette holders; tobacco; tobacco, cigars and cigarettes; tobacco filters; tobacco flavourings, other than essential oils; tobacco jars; tobacco pipe cleaners; tobacco pipe tampers; tobacco pipes; tobacco pouches; tobacco products, namely, {specify tobacco products}; tobacco slicers; tobacco spittoons; tobacco tins; white phosphorus matches; yellow phosphorus matches; any CBD in the goods being featured or for use with the goods being solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis”

 

See TMEP §§1402.01, 1402.03

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

RESPONSE

 

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.

 

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

 

 

Murray Jr., George

/George Murray/

Trademark Examining Attorney

Law Office 121

(571) 270-5101

George.Murray@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 14, 2020 for

U.S. Trademark Application Serial No. 88879381

 

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. 

 

 

Murray Jr., George

/George Murray/

Trademark Examining Attorney

Law Office 121

(571) 270-5101

George.Murray@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 14, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”