Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  October 08, 2020

 

INTRODUCTION

 

Applicant’s response of September 22, 2020 to the office action of March 28, 2020, has been reviewed and the following determinations have been made.

 

Upon further consideration, the Section 2d refusal is withdrawn.  The Request for Information is satisfied.  The identification as amended is accepted.

 

The CSA and FDCA refusals are continued because applicant’s response contains conflicting statements that require clarification.  Applicant should also note the new requirement for additional information.

 

Summary of Issues: 

 

·       CONTINUED: CSA Refusal 

·       CONTINUED: FDCA Refusal

·       NEW: Request for Information         

 

 

CSA REFUSAL (continued)

 

Applicant’s arguments have been considered and the refusal is continued for the following reasons.

 

In applicant’s September 22, 2020 response to office action, applicant amended the identification of goods to include the statement that “none of the aforementioned goods containing cannabis or cannabis extracts including CBD.” 

 

In the same response, applicant responded to the Request for Information (RFI) stating that “Yes, the goods will contain extracts from industrial hemp” and “No” to the question of whether the goods contain CBD.

 

Applicant’s amendment to the identification and responses to the RFI are inconsistent.  “Cannabis” is a broad term that encompasses both hemp (which is cannabis with a THC concentration of 0.3% or less on a dry weight basis) and marijuana (which is cannabis with a THC concentration of more than 0.3% on a dry weight basis).  Thus, the admission that the goods will contain “extracts from hemp” and the statement in the identification that the goods do not contain cannabis are inconsistent.  Applicant must clarify this inconsistency.

 

Identification of Goods: Applicant is advised that in order for the proposed amendment to the identification to overcome the CSA refusal, the comma that precedes the word “none” must be replaced with a semi-colon, so that the limitation applies to all of the preceding goods, not just the “purified bottled drinking water”.

 

In addition, if the goods contain hemp, but no CBD, applicant may amend the identification to clarify, for example: 

 

Water beverages; drinking water; bottled water; bottled drinking water; purified bottled drinking water; all of the foregoing goods containing hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3% on a dry weight basis and none of the foregoing  containing any cannabidiol (CBD).

 

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).

 

Filing Date:  In order to overcome the CSA refusal, applicant still needs to request that the Office amend the filing date to December 20, 2018, the date on which the Agriculture Improvement Act was signed into law.

 

Applicant is advised that if the application is amended as suggested above, the CSA refusal will be withdrawn.  Applicant is further advised, that any future specimen must show the goods as described in the identification or the refusal with be reinstated.  Applicant is also advised that the Date of First Use in Commerce in any future Statement of Use (or Amendment to Allege Use) cannot be earlier than December 20, 2018. 

 

 

FDCA REFUSAL (continued)

 

The FDCA refusal is also continued for the reasons stated above (incorporated herein by reference).  Specifically, applicant’s responses to the Request for Information appear to be inconsistent with the amendment to the identification.  Applicant must clarify these inconsistencies.

 

If the goods contain hemp extracts without any cannabidiol (CBD) cannabinoids, then applicant may adopt the identification as suggested above and the refusal will be withdrawn.  However, the same requirements (and advisories) set forth in the section above apply in order for the FDCA refusal to be withdrawn.

 

 

REQUEST FOR INFORMATION

 

To permit proper examination of the application, applicant must submit additional information about applicant’s goods and/or services.  See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).

 

In this case, the record contains inconsistencies that require clarification.  Specifically, in applicant’s September 22, 2020 response to office action, applicant amended the identification of goods to include the statement that “none of the aforementioned goods containing cannabis or cannabis extracts including CBD.”  At the same time, applicant responded to the Request for Information (RFI) stating that “Yes, the goods will contain extracts from industrial hemp” and “No” to the question of whether the goods contain CBD.

 

The term “cannabis” refers to (and includes) both hemp (which is cannabis with a THC concentration of 0.3% or less on a dry weight basis) and marijuana (which is cannabis with a THC concentration of more than 0.3% on a dry weight basis).  Thus, the admission that the goods will contain “extracts from hemp” and the statement in the identification that the goods do not contain cannabis are inconsistent.  Additional information is required to clarify this inconsistency.

 

Applicant must respond to the following:

 

1.     If the goods contain hemp extract, does the hemp extract contain any cannabinoids?

2.     If applicant answered “yes” to question #1, do the cannabinoids in the hemp extract include cannabidiol (CBD)?

3.     Do or will the goods contain more than a trace amount of cannabidiol (CBD)?

4.     In what form are/will the “extracts from industrial hemp” be added to the goods, e.g., liquid, powder, etc.?

5.     Does/will applicant have any documentation showing the cannabinoid profile of the hemp in the goods? 

 

 

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

 

 

/Deborah Lobo/

Trademark Examining Attorney

Law Office 109

571-272-3263

deborah.lobo@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 October 08, 2020 for

U.S. Trademark Application Serial No. 88976611

 

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. 

 

 

/Deborah Lobo/

Trademark Examining Attorney

Law Office 109

571-272-3263

deborah.lobo@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 October 08, 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.”