Incorrect, TRTC's trademark registration applications were refused. And no, the previous trademark registration was not abandoned. From the U.S. Patent and Trademark Office website, not some third party site. They didn't even bother to sign the applications either.
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86400760
MARK: IVXX ELEVATE
*86400760* CORRESPONDENT ADDRESS: JONATHAN A. HYMAN KNOBBE MARTENS OLSON & BEAR, LLP 2040 MAIN ST FL 14 IRVINE, CA 92614-8214
STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 1/8/2015
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 RESULTS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
REFUSAL – NOT IN LAWFUL USE IN COMMERCE – MARIJUANA-RELATED GOODS – BASED ON EVIDENCE
Registration is refused because the applied-for mark, as used in connection with the goods identified in the application, is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.
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); CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630, 81 USPQ2d 1592, 1595 (9th Cir. 2007). Thus, any goods to which the mark is applied must comply with all applicable federal laws. See In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “t is settled that the Trademark Act’s requirement of ‘“use in commerce,” means a “lawful use in commerce,” and [that the sale or] the shipment of goods in violation of [a] federal statute . . . may not be recognized as the basis for establishing trademark rights’” (quoting Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982))); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
The Controlled Substances Act (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]”). In addition, the CSA 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.
In the present case, the application identifies applicant’s goods as follows:
International Class 5: Medicated candy; Medicated chewing gum; Medicated confectionery; Medicinal drinks; Medicinal herb extracts; Medicinal herbal preparations; Medicinal herbs in dried or preserved form; Medicinal preparations for the mouth to be applied in the form of drops, capsules, tablets and compressed tablets; Sweets for medicinal purposes; Balms for medical purposes; Herbal topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the relief of aches and pain
International Class 30: Brownies, Chocolate and chocolates, Chocolate confections, cookies, candy
The wording contained in the applied-for mark combined with the Identification of Goods identifying medicated products in Class 5 plainly indicates that applicant’s identified goods include items that are prohibited by the CSA, namely, goods made with medicinal marijuana. Please see the attached evidence showing that the number “420,” which the applicant’s roman numerals correspond to, is commonly used in reference to marijuana. Please also see the attached Internet evidence showing the roman numeral “IVXX” being used in conjunction with marijuana-related goods and services
Because these goods are prohibited by the CSA, the applied-for mark, as used in connection with such goods, is not in lawful use in commerce.
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
INSUFFICIENT FILING FEES
The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
Additional Filing Fees
The filing fees for adding classes to an application are as follows:
The application was not signed and verified, which are application requirements. See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). Therefore, applicant must verify the statements specified further below in an affidavit or signed declaration under 37 C.F.R. §2.20. See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response form, answer “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing.
To respond to this requirement on paper, via regular mail, applicant may provide the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature. See 37 C.F.R. §§2.20, 2.33(a), (b)(2), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b). The signatory’s particular title or position should also be specified. See TMEP §804.04.
STATEMENTS: The signatory believes that: the applicant is entitled to use the trademark and/or service mark in commerce; the applicant has a bona fide intention and has had a bona fide intention, as of the application filing date, to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the goods and/or services in the application; and to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods and/or services of such other person, to cause confusion or mistake, or to deceive.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________ (Signature)
_____________________________ (Print or Type Name and Position)
_____________________________ (Date)
RESPONSE GUIDELINES
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1). If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Lindsey H. Ben/ Lindsey H. Ben Trademark Examining Attorney Law Office 108 (571) 272-4239 Lindsey.Ben@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
STRICT DEADLINE TO RESPOND TO THIS LETTER TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 1/8/2015
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.
SEARCH RESULTS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
REFUSAL – NOT IN LAWFUL USE IN COMMERCE – MARIJUANA-RELATED GOODS – BASED ON EVIDENCE
Registration is refused because the applied-for mark, as used in connection with the goods identified in the application, is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127.
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); CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630, 81 USPQ2d 1592, 1595 (9th Cir. 2007). Thus, any goods to which the mark is applied must comply with all applicable federal laws. See In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “t is settled that the Trademark Act’s requirement of ‘“use in commerce,” means a “lawful use in commerce,” and [that the sale or] the shipment of goods in violation of [a] federal statute . . . may not be recognized as the basis for establishing trademark rights’” (quoting Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982))); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
The Controlled Substances Act (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]”). In addition, the CSA 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.
In the present case, the application identifies applicant’s goods as follows:
International Class 5: Medicated candy; Medicated chewing gum; Medicated confectionery; Medicinal drinks; Medicinal herb extracts; Medicinal herbal preparations; Medicinal herbs in dried or preserved form; Medicinal preparations for the mouth to be applied in the form of drops, capsules, tablets and compressed tablets; Sweets for medicinal purposes; Balms for medical purposes; Herbal topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the relief of aches and pain
International Class 30: Brownies, Chocolate and chocolates, Chocolate confections, cookies, candy
The wording contained in the applied-for mark combined with the Identification of Goods identifying medicated products in Class 5 plainly indicates that applicant’s identified goods include items that are prohibited by the CSA, namely, goods made with medicinal marijuana. Please see the attached evidence showing that the number “420,” which the applicant’s roman numerals correspond to, is commonly used in reference to marijuana. Please also see the attached Internet evidence showing the roman numeral “IVXX” being used in conjunction with marijuana-related goods and services
Because these goods are prohibited by the CSA, the applied-for mark, as used in connection with such goods, is not in lawful use in commerce.
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
UNSIGNED APPLICATION
The application was not signed and verified, which are application requirements. See 15 U.S.C. §§1051(b), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), 2.34(a)(2), (a)(3)(i), (a)(4)(ii). Therefore, applicant must verify the statements specified further below in an affidavit or signed declaration under 37 C.F.R. §2.20. See 15 U.S.C. §§1051(b)(3), 1126(d)-(e); 37 C.F.R. §§2.33(a), (b)(2), (c), 2.193(e)(1); TMEP §§804.02, 806.01(b)-(d).
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response form, answer “yes” to the TEAS response form wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing.
To respond to this requirement on paper, via regular mail, applicant may provide the following statements and declaration at the end of the response, personally signed by a person authorized under 37 C.F.R. §2.193(e)(1) and dated, with the printed or typed name of the signatory appearing immediately below the signature. See 37 C.F.R. §§2.20, 2.33(a), (b)(2), (c), 2.193(a), (d); TMEP §§611.01(b), 804.01(b). The signatory’s particular title or position should also be specified. See TMEP §804.04.
STATEMENTS: The signatory believes that: the applicant is entitled to use the trademark and/or service mark in commerce; the applicant has a bona fide intention and has had a bona fide intention, as of the application filing date, to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the goods in the application; and to the best of the signatory’s knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods of such other person, to cause confusion or mistake, or to deceive.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his or her own knowledge are true and all statements made on information and belief are believed to be true.
_____________________________ (Signature)
_____________________________ (Print or Type Name and Position)
_____________________________ (Date)
RESPONSE GUIDELINES
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1). If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Lindsey H. Ben/ Lindsey H. Ben Trademark Examining Attorney Law Office 108 (571) 272-4239 Lindsey.Ben@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
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