Charlotte's Web Holdings Inc (CWBHF)

[Wolf-man jack]

BAD NEWS for Charlotte’s Web Trademark according to GT you understand. Have Mercy Wolf ahooooooo

Wolf Says; It is not bad news, GT is clueless you understand. Have Mercy Wolf ahooooooo

CHARLOTTE'S WEB

A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.
Status Date: Oct. 03, 2019

https://tsdr.uspto.gov/#caseNumber=88329062&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch



https://tsdr.uspto.gov/documentviewer?caseId=sn88329062&docId=OOA20191003175330#docIndex=1&page=1


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 03, 2019

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 OFFICE’S DATABASE OF MARKS

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).

FDCA REFUSAL - BASED ON EVIDENCE – NOT LAWFUL USE IN COMMERCE
CLASS 5 ONLY

Registration is refused for the goods listed in Class 5 because the applied-for mark is not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907. The goods 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 “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.

This refusal issues when “(1) a violation of federal law is indicated by the application record or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-relevant activities involve a per se violation of a federal law.” In re Brown, 119 USPQ2d at 1351 (citing Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988); Santinine Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981)); TMEP §907.
The Federal Food, Drug, and Cosmetic Act prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug or a biological product for which substantial clinical investigations have been instituted and for which the existence of such investigations has been made public. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the Federal Food, Drug and Cosmetic Act).
Cannabidiol (CBD) is an active ingredient in an FDA-approved drug, Epidiolex®, (see https://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm611046.htm copy attached) and is the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements. See FDA Regulation of Cannabis and Cannabis-derived Products: Questions and Answers https://www.fda.gov/NewsEvents/PublicHealthFocus/ucm421168.htm copy attached.
Applicant’s goods are broad enough to encompass products that consist of, or include, items or activities that are or were prohibited by the FDCA, namely, dietary and nutritional supplements comprised of cannabidiol (CBD) derived from hemp.
The attached excerpt from applicant’s website, CWHEMP.COM, plainly indicates that applicant’s identified goods/services include items and/or activities that are prohibited by the FDCA, namely, dietary and nutritional supplements containing CBD and that such goods are currently being marketed, promoted or offered for sale to consumers.
It is unlawful to introduce food containing added CBD into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. See Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds.
https://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm copy attached.

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 applicant’s goods consist of or include items or activities that violate federal law, the applied-for mark as used in connection with such goods is not in lawful use in commerce.

Applicant should note the following additional ground for refusal.

CANNABIS-RELATED GOODS REFUSAL –– BASED ON EVIDENCE – NOT
IN LAWFUL USE IN COMMERCE – BOTH CLASSES

Registration is refused because the applied-for mark was not in lawful use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907 on the dates of first use in commerce as alleged in the application.

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 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 “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 evidence of record indicates that at least some of the items or activities to which the proposed mark will be applied are unlawful under the federal Controlled Substances Act (CSA), 21 U.S.C. §§801-971. More specifically, applicant has alleged that its goods as identified in Classes 3 and 5 are comprised of ingredients from Cannabis sativa L with a delta-9 tetrahydrocannabinol (THC) content of no more than 0.3 percent on a dry weight basis. This is now the definition of “industrial hemp.” Hemp is a member of the Cannabis sativa family.

On the dates of first use in commerce as alleged in the application, the CSA prohibited, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and any material or preparation containing marijuana. 21 U.S.C. §§812, 841(a)(1), 844(a); see also 21 U.S.C. §802(16) (defining “[marijuana]” as “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)).

In this case, the specimen of record, attached excerpt from applicant’s website and the applicant’s identification plainly indicates that applicant’s identified goods/services include items and/or activities that are prohibited by the CSA, namely, that the goods contain ingredients that were derived from hemp.

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). Applicant has alleged its dates of first use in commerce in Class 3 as November 30, 2017 and in Class 5 as September 30, 2018. These dates were before passage of the AMA (2018 Farm Bill) wherein hemp with a THC content of less than 0.3 percent was removed from the definition of marijuana under the CSA. Therefore, at the time of the alleged first use in commerce in both classes, applicant could not lawfully sell the identified goods in interstate commerce.

However, to the extent the applicant’s goods are derived solely from cannabis plants that meet the current statutory definition of hemp, such goods may be lawfully sold in Interstate commerce.

Therefore, in order to overcome this refusal, applicant must amend the dates of first use in commerce in both classes to a date that is not earlier than December 20, 2018. The applicant may also present arguments and evidence against this refusal.

Applicant should note the following additional ground for refusal.

MARK IS MERELY DESCRIPTIVE – SECTION 2(E)(1) – BOTH CLASSES

Registration is refused because the applied-for mark merely describes a feature, ingredient or characteristic of applicant’s goods. 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. 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)).

“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.

In this case the applicant’s mark is CHARLOTTE’S WEB for goods which include cosmetics, beauty balms and creams, skin care preparations, body, skin and lip balms in Class 3 all of which are comprised of hemp with a THC content of not more than 0.3 percent and dietary and nutritional supplements in Class 5 that are likewise derived from hemp with a THC content of less than 0.3 percent.

Charlotte’s Web identifies a particular strain of low THC, high CBD content Cannabis sativa plants. See the attachments from LEAFLY.COM, ALLBUD.COM, WIKIPEDIA.ORG, NEWCANNABISVENTURES.COM, COLORADOPOTGUIDE.COM as well as applicant’s own website, CWHEMP.COM. Applicant’s website indicates that applicant is using extracts from the Charlotte’s Web strain of hemp as a key ingredient or component of the goods.

A term that describes an ingredient of the goods is merely descriptive. TMEP §1209.01(b); see In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (holding NOPALEA merely descriptive of dietary and nutritional supplements containing nopal juice); In re Keebler Co., 479 F.2d 1405, 178 USPQ 155 (C.C.P.A. 1973) (holding RICH ‘N CHIPS merely descriptive of chocolate chip cookies); In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (C.C.P.A. 1973) (holding CREME DE MENTHE merely descriptive of candy); In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990) (holding OATNUT merely descriptive of bread containing oats and hazelnuts); Flowers Indus., Inc. v. Interstate Brands Corp., 5 USPQ 2d 1580 (TTAB 1987) (holding HONEY WHEAT merely descriptive of bread containing honey and wheat).

Therefore, the mark in its entirety is merely descriptive of a key component or ingredient use in the goods, namely, extracts derived from the Charlotte’s Web strain of hemp.

SECTION 2(F)/SUPPLEMENTAL REGISTER ADVISORY

If applicant believes applicant’s mark has acquired distinctiveness, that is, it has become a distinctive source indicator for the applied-for goods, applicant may amend the application to assert a claim of acquired distinctiveness under Trademark Act Section 2(f). See 15 U.S.C. §1052(f). The USPTO decides each case on its own merits. See TMEP §1212.06.

To support this claim of acquired distinctiveness, applicant may submit evidence of “advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” In re Change Wind Corp., 123 USPQ2d 1453, 1467 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 1300, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). A showing of acquired distinctiveness need not consider all of these types of evidence; no single factor is determinative. In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424; see TMEP §§1212.06 et seq. Rather, the determination involves assessing all of the circumstances involving the use of the mark. See In re Steelbuilding.com, 415 F.3d at 1300, 75 USPQ2d at 1424 (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217, 225 USPQ2d 124, 131-32 (2d Cir. 1985)).

Alternatively, applicant may respond to the refusal under Section 2(e)(1) of the Trademark Act 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.

Applicant is advised that amending the application to Section 2(f) of the Trademark Act or on the Supplemental Register will not overcome a refusal to register under Sections 1 and 45 of the Trademark Act, 15 USC Sections 1051 and 1127, based on use of the mark on unlawful goods.

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

NO SIGNED DECLARATION FILED WITH APPLICATION

The application was unsigned, resulting in the application not being properly verified. See TMEP §804. Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a)-(b)(1), (c), 2.34(a)(1)(i); TMEP §804.02.

The following statements must be verified: That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have 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/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a). For more information about this, see the Verified statement webpage.

To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.

Please call or email the assigned trademark examining attorney with questions about this Office action. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.

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

/Jeffrey J Look/
Jeffrey J Look
Trademark Examining Attorney
Law Office 108
Phone: [phone]
Email: [e-mail]


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.