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:  March 23, 2021

 

 

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 Sections 1 and 45 Refusal to Register – CSA
• Requirement for Clarification of the Identification of Goods

 

 

 

 

 

 

TRADEMARK ACT SECTIONS 1 AND 45 REFUSAL TO REGISTER - CSA

 

Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark.   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. 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.

 

The application identifies a connection to hemp. CBD is a nonpsychoactive constituent of the cannabis plant. Goods containing CBD derived from cannabis that meets the definition of “marijuana” are illegal under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971.  In addition, 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). See the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA).  Thus, certain goods and/or services containing or involving hemp, CBD derived from hemp, and/or CBD with less than .3% THC that were used in commerce or intend to be used in commerce on or after December 20, 2018 may be lawful under the CSA. 

 

The application is currently refused under the CSA because applicant’s Identification of Goods does not identify the source of and/or the THC content of the applicant’s hemp.

Further, 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 for inhaling or introducing to the body marijuana, namely, vaporizer pipes and pens. 

 

 

Thus, the application includes items or activities that are prohibited under the CSA, and as such applicant currently does not have a valid filing basis for any such items or activities. 

 

To the extent applicant’s goods are derived solely from cannabis plants that meet the current statutory definition of “hemp,” and were used or will be used on or after December 20, 2018, such goods may be lawful if applicant adopts the following response options addressed below.

 

 

Response Options Available for Overcoming the CSA Refusal:

 

Applicant must amend the identification of goods to specify that all cannabidiol-containing items and/or hemp derived 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.” 

Applicant may adopt the following limitation and amend the identification of goods accordingly:

 

 

“Tobacco substitutes; Dried hemp flower; pre-rolled cigarettes; Tobacco substitutes in the form of leaves and flowers; Smokeless cigarette vaporizer pipe and vaping pens; hemp flower and hemp flower pre-rolls for smoking purposes; Smokable cannabis flower, smokable hemp flower, cannabis concentrate; Cannabis preparations, namely, dried flower and cannabis derivatives, namely, cigarettes and oils, not including essential oils, for use in smokeless oral vaporizers; loose dried hemp flower being a tobacco substitute for use in pipes, vaporizers and rolled cigarettes; manufactured cannabis concentrate; none of the foregoing for use with or containing ingredients derived from cannabis with a delta-9 tetrahydrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis”

 

 

Applicant is advised that additional amendments to the Identification of Goods and Services are required for clarification purposes as addressed below in this Office Action.  The above proposals are required and presented in order to satisfy only the CSA refusal.

 

SCOPE ADVISORY: Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

DATE OF FIRST USE IN COMMERCE ADVISORY: Applicant is advised that to avoid or overcome a refusal based on unlawful use prohibited by the CSA upon the filing an amendment to allege use or statement of use, the date of first use of the mark in commerce must be no earlier than December 20, 2018, the date on which the 2018 Farm Bill was signed into law.

 

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.

 

 

 

IDENTIFICATION OF GOODS

 

The wording “dried hemp flower” in the identification of goods is indefinite and must be clarified because dried plants are classified as to their use.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Please note: The following suggested amendments include language to overcome the CSA Refusal.

 

 

“Tobacco substitutes; Dried hemp flower for smoking; pre-rolled cigarettes; Tobacco substitutes in the form of leaves and flowers; Smokeless cigarette vaporizer pipe and vaping pens; hemp flower and hemp flower pre-rolls for smoking purposes; Smokable hemp flower; Cannabis preparations, namely, dried flower and cannabis derivatives, namely, pre-rolled cigarettes and oils, not including essential oils, for use in smokeless oral vaporizers; loose dried hemp flower being a tobacco substitute for use in pipes, vaporizers and rolled cigarettes; none of the foregoing for use with or containing ingredients derived from cannabis with a delta-9 tetrahydrocannabinol (THC) concentration of more than 0.3 percent on a dry weight basis””

 

 

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 March 23, 2021 for

U.S. Trademark Application Serial No. 90124918

 

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 March 23, 2021, 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.”