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:  November 23, 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:

• Trademark Act Section 2(e)(1) Refusal to Register
• Requirement for Further Information Regarding Applicant’s Services
• Advisory Regarding Identification of Services

 

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes the feature, characteristic, purpose, and function of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods and/or services, not in the abstract.  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b).  “Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

The applicant has applied to register the mark “CANNABIS BANKING FINANCIAL NETWORK” for providing a network of banks and payment solutions to cannabis businesses.  As stated in the recitation of services, applicant’s mark directly describes the services offered.

 

“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).  It is enough if a mark describes only one significant function, attribute, or property.  In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.

 

Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly infringement suits brought by the trademark or service mark owner.  In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209.  Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials.  See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

 

 

Supplemental Register

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

 

Disclaimer Required on the Supplemental Register

 

Applicant is advised that, if the application is amended to seek registration on the Supplemental Register, applicant will be required to disclaim “BANKING FINANCIAL NETWORK” because such wording appears to be generic in the context of applicant’s services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

Applicant may submit a disclaimer in the following format:

 

No claim is made to the exclusive right to use “BANKING FINANCIAL NETWORK” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

 

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

ADDITIONAL INFORMATION REQUIRED

To permit proper examination of the application, applicant must submit additional information about the goods.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested information should include fact sheets, brochures, advertisements, and/or similar materials relating to the goods.  If such materials are not available, applicant must provide a detailed factual description of the goods.  Any information submitted in response to this requirement must clearly and accurately indicate the nature of the goods identified in the application. 

In addition, applicant must submit a written statement indicating whether the goods identified in the application comply with the Controlled Substances Act (CSA), 21 U.S.C. §§801-971.  See 37 C.F.R. §2.69; TMEP §907. 

The CSA prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.  21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]”).  The CSA also makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “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 into the human body a controlled substance, possession of which is unlawful under [the CSA].” 21 U.S.C. §863.  

Further, the Money Laundering Control Act of 1986 prohibits a person, “knowing that the property involved in a financial transaction represents the proceeds of some form of unlawful activity, [to conduct or attempt] to conduct such a financial transaction which in fact involves the proceeds of specified unlawful activity…with the intent to promote the carrying on of specified unlawful activity.”  18 U.S. Code § 1956.

 

Applicant must provide written responses to the following questions:

1.      Will applicant’s identified services involve the possession, sale, or provision of marijuana, cannabis, hemp, cannabidiol (CBD), marijuana-based, cannabis-based or hemp-based preparations, or marijuana, cannabis or hemp-based extracts or derivatives which are derived from any part of the plant Cannabis sativa L other than the mature stalks or sterilized seeds from the said plant, synthetic marijuana, or any other illegal controlled substances?

2.      Will applicant’s identified services involve the possession, sale, or provision of oils, extracts, compounds or derivatives obtained from resins extracted from any part of the Cannabis sativa L plant including the stalks, flowering tops or seeds of said plant?

3. “Do applicant’s services comply with the Controlled Substances Act?”
4. “Is the applicant handling money in connection with its escrow services, and if so, is the money proceeds from the sale of marijuana or any other illegal controlled substance?”
5. “Do applicant’s services comply with the Money Laundering Control Act of 1986?”

 

 

Failure to satisfactorily respond to a requirement for information is a ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Garden of Eatin’ Inc., 216 USPQ 355, 357 (TTAB 1982); TMEP §814.  Please note that merely stating that information about the goods 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). 

Applicant is advised that, upon consideration of the information provided by applicant in response to the above requirement, registration of the applied-for mark may be refused on the ground that the mark, as used in connection with the identified goods and/or services, is not in lawful use in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.

 

IDENTIFICATION OF SERVICES

The wording in applicant’s identification of goods and/or services is an otherwise acceptable entry in the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual); however, based on the specimen and/or other evidence of record, applicant must further describe the specialized use of these goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.04, 1402.05.

Entries in the ID Manual are presumed to include only those goods and/or services within the ordinary meaning of the words and the ordinary channels of trade for those goods and/or services.  Thus, an applicant must further explain specialized types of goods and/or services or specialized trade channels outside the ordinary meaning in identifications.  See TMEP §1402.05.

In this case, applicant’s wording is typically used to identify vaporizers that are used with tobacco and nicotine.  However, the specimen and/or other evidence of record shows that applicant’s goods may actually be used with marijuana.

Applicant may adopt the following identification, if accurate: 

“Financial services, namely, offering a network of banks and payment processor solutions to publicly-held companies, businesses-to-business (B2B) companies, Cannabis-related businesses, and CBD retail and Ecommerce businesses; all of the aforementioned services solely for hemp growers and not including cannabis growers of greater than 0.3 percent on a dry weight basis” in International Class 036.

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.

 

 

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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.    

 

 

/Kelly J. Trusilo/

Trademark Examining Attorney

Law Office 107

571-272-8976

kelly.trusilo@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 November 23, 2020 for

U.S. Trademark Application Serial No. 90067419

 

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. 

 

 

/Kelly J. Trusilo/

Trademark Examining Attorney

Law Office 107

571-272-8976

kelly.trusilo@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 November 23, 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.”