Marketwatch report 

Drake’s attempt to trademark Canada’s warning label for marijuana appears to have failed, but not entirely because Canada owns the rights.

The U.S. Patent and Trademark Office informed the rapper Thursday that his attempt to trademark the symbol,originally reported by MarketWatch earlier this month, is legally rejected. The main reason for rejecting the application, however, was that another company actually has a trademark for the phrase “THC.”

Canada’s rights to the warning label were cited as a reason for the application may be denied for specific products containing marijuana with Tetrahydrocannabinol, commonly referred to as THC, a psychoactive component in cannabis. All the potential uses cited by Drake in his patent application — which focused on most kinds of apparel, such as clothing, shoes and various kinds of hats — were denied because another company has the trademark on the phrase THC.

That company, Pineapple Express Inc.PNPL,-76.00%, is traded over the counter in the U.S. and owns a portfolio of intellectual property and trademarks,including at one time thc.com. It recently launched a California cannabis delivery business.

The letter,publicly filed by the U.S. government, lists several other reasons why Drake’s marijuana trademark application may ultimately be denied: it may be confused with others, they can’t be used to sell federally illegal goods such as weed, and it doesn’t distinguish the products from others.

Read the full report at https://www.marketwatch.com/story/drakes-attempt-to-trademark-canadas-weed-warning-label-hits-a-stop-sign-2019-11-23

USPTO

Source: https://tsdr.uspto.gov/documentviewer?caseId=sn88612716&docId=OOA20191121185715#docIndex=0&page=1

United States Patent and Trademark Office (USPTO)

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

U.S. Application Serial No. 88612716

 

Mark:  THC

 

 

 

 

Correspondence Address: 

ROBERT KLEINMAN

COMMON SENSE COUNSEL

404 WEST 7TH STREET

AUSTIN, TX 78701

 

 

 

Applicant:  Dream Crew IP

 

 

 

Reference/Docket No. N/A

 

Correspondence Email Address: 

 robert@commonsensecounsel.com

 

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 abandonedusing 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 21, 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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASS 25 ONLY

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1954405.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.  This refusal applies only to Class 25.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

COMPARISON OF THE MARKS

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

Registrant’s mark is THC in standard characters.  Applicant’s mark is THC set inside a stop sign design with a cannabis leaf in the center of the sign.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Here both marks are comprised of identical lettering, namely, THC.  This literal element in applicant’s mark presents a similar commercial impression to the registered mark.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

COMPARISON OF THE GOODS

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

In this case the registrant is using its mark in connection with clothing, namely T-shirts, hats, beanies, pants, shorts, baseball jerseys, jackets, sweatshirts, polo shirts and sweat pants.  Applicant has identified many of the same clothing items, namely, t-shirts, hats, shorts, jackets, sweatshirts and sweat pants.  Applicant has also listed some broader terms that encompass some of the more specific item listed by registrant such as beanies (a type of hat), baseball jerseys (a type of jersey), pants (trousers) and shirts (polo shirts).

When analyzing an applicant’s and registrant’s goods  for similarity and relatedness, that determination is based on the description of the goods  in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the goods in the application and registration(s) are essentially identical.  Therefore, it is presumed that the channels of trade and class (es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

Because the goods are either the same or very closely related, coupled with the fact that the dominant element of applicant’s mark is identical to the registered mark, consumers who encounter the THC branded clothing of applicant and registrant in the marketplace could likely confuse the source of the goods.

POTENTIAL REFUSAL – PRIOR PENDING APPLICATION – CLASSES 5, 31, 34 ONLY

In addition to the cited registration above, applicant should note the following potential refusal under Section 2(d) of the Trademark Act.  The filing date of pending U.S. Application Serial No. 88239310 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.  Note that this potential refusal is limited only to the goods identified in Classes 5, 31 and 34.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

Applicant should note the following additional ground for refusal.

CANNABIS-RELATED GOODS REFUSAL –– BASED ON EVIDENCE – NO BONA FIDE

INTENT TO LAWFULLY USE IN COMMERCE – CLASSES 5, 31, 34

Registration is refused because applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce as of the filing date of the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.  This refusal is limited only to Classes 5, 31 and 34.

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 “[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 CSA prohibits, 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 applicant is a company owned largely by a well-known rap musician by the name of “Drake” who has recently partnered with a Canadian cannabis company to produce marijuana.  See the attachments from MARKETWATCH.COM, PITCHFORK.COM, ROLLINGSTONE.COM, HOLLYWOODREPORTER.COM, CNBC.COM, BET.COM, LEAFLY.COM and XXLMAG.COM.  Applicant’s identifications in Classes 5, 31 and 34 include the generally broad wording herbs for medicinal purposes, raw herbs and herbs for smoking.  Cannabis is an herb.  See the attachments from WIKIPEDIA.ORG and NATIONALGEOGRAPHIC.COM.  The letters “THC” as used in the mark stand for “tetrahydrocannabinol” which is the main psychoactive compound in cannabis.  See the attachments from MERRIAM-WEBSTER.COM, NATIONALGEOGRAPHIC.COM and LIVESCIENCE.COM. 

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)  Applicant’s goods consist of, or include, items or activities that are or were prohibited by the CSA, namely, herbs for medical use, raw herbs and herbs for smoking which the evidence shows is clearly intended to include marijuana.  Applicant did not have a bona fide intent to lawfully use the applied-for mark in commerce in connection with the goods.  See In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016)(“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); TMEP §907.   

Applicant should note the following additional ground for refusal.

REGISTRATION REFUSED – FAILURE TO FUNCTION – CLASS 5, 31 AND 34 ONLY

Registration is refused because the applied-for mark is a universal symbol that does not function as a trademark or service mark to indicate the source of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a universal symbol that merely conveys information about applicant’s or similar goods.  See In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); In re Melville Corp., 228 USPQ 970, 971 (TTAB 1986); TMEP §1202.17(c)(i)(A), (c)(iii).  This refusal applies only to the goods identified in Classes 5, 31 and 34.

 

Determining whether a symbol functions as a trademark or service mark involves considering (1) the significance of the symbol, (2) the nature of the symbol’s use in the relevant marketplace, and (3) the impression created when the mark is used in connection with the identified goods.  TMEP §1202.17(c)(i); see In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862.  A common universal symbol that is used in its usual context or field, or with relevant goods, is not likely to be viewed as a source indicator and will likely impart its generally recognized meaning instead.  See TMEP §1202.17(c)(i)(A) (citing In re Schwauss, 217 USPQ 361 (TTAB 1983)).

 

The attached evidence from CANADA.CA, MJPACKAGING.COM, MARKETWATCH.COM and LEAFLY.COM shows that the applied-for mark is identical to the symbol mandated under Canadian law to indicate that goods bearing such a symbol contain “THC,” the main psychoactive cannabinoid found in cannabis or marijuana.  The purpose of the symbol is to warn consumers that products, such as edibles and smoking matter, such as smoking herbs, contain more than 10 micrograms of THC per gram.  See the attachment from CANADA.CA.  It serves no source identifying function because the symbol is intended to be used merely to convey information about the material content of the product.  Even though the mark is mandated for use on marijuana products in Canada, the symbol was been widely reported in news circulated in the United States.  See e.g., the attachments from MARKETWATCH.COM, GRAPHICARTSMAG.COM and LEAFLY.COM.  A significant number of American consumers routinely travel to Canada with more than 12 million Americans visiting the country through the first six months of 2019.  See the attachments from CNN.COM and NARCITY.COM.  A significant number of American consumers of marijuana products would, therefore, be familiar with the Canadian THC symbol and the fact that it is intended to provide information about the material content of the products and would likely view that symbol the same way for cannabis products sold in the United States.

 

Because consumers are accustomed to seeing this symbol used in this manner, when it is applied to applicant’s goods, they would perceive it merely as informational matter indicating that the goods are comprised of THC derived from cannabis or marijuana.  Thus, the symbol will not be perceived as a mark that identifies the source of applicant’s goods in Classes 5, 31 and 34.

 

An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f).  TMEP §1202.17(c)(ii)(B); see In re Eagle Crest, Inc., 96 USPQ2d at 1229. 

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 – CLASSES 5, 31 AND 34

Applicant’s mark consists of the wording “THC”, which indicates that applicant’s goods have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic:  that the goods are comprised of tetrahydrocannabinol.  See the attachments from MERRIAM-WEBSTER.COM, LIVESCIENCE.COM and NATIONALGEOGRAPHIC.COM. 

 

This feature or characteristic is considered desirable for applicant’s goods because THC is the key psychoactive component of marijuana.  It is reputed to have medicinal properties that some consumers use for treating medical conditions such as pain, seizures, nausea, anxiety, and cancer among other things.  See the attachments from BUSINESSINSIDER.COM, HEALTH.HARVARD.EDU and CARE2.COM.  Furthermore, a study has shown that consumers are willing to pay more for their desired amount of THC in cannabis products whether it be for recreational or medicinal use.  See the attachment from CANNABISBUSINESSTIMES.COM

 

However, if some or all of the goods  do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods .  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

Therefore, applicant may amend the identification to the following, if accurate:  (proposed changes in boldface).

CLASS 5 – Herbs for medicinal purposes comprised of tetrahydrocannabinol (THC) in a significant amount;

CLASS 31 – Raw herbs comprised of tetrahydrocannabinol (THC) in a significant amount;

CLASS 34 – Herbs for smoking, comprised of tetrahydrocannabinol (THC) in a significant amount.

Class 25 is acceptable as currently drafted in the application.

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See TMEP §1402.07(e).

REQUEST FOR INFORMATION – RULE 2.61(B)

Applicant is further advised that if the goods do not have THC in significant amounts, such as hemp with less than 0.3 percent THC, then a refusal to register under Section 2(a) of the Trademark Act, 15 USC Section 1052(a), will be issued.  Applicant is hereby required to provide information about the material content of the goods in Classes 5, 31, and 34 and in particular, indicate whether the goods will contain THC in an amount greater than 0.3 percent.  See 37 C.F.R. §§2.61(b), 2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-52 (TTAB 1968); TMEP §§814, 907.  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.

Applicant is also required to indicate whether the letters “THC” have or will be used as a varietal or cultivar name for any type of plant and whether “THC” has ever been used or will be used in connection with a plant patent, utility patent or certificate for plant-variety protection.

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 and services 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).

DISCLAIMER REQUIRED

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “THC” and the image of a cannabis leaf because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

As the attached evidence shows, “THC” is the primary psychoactive component of marijuana or cannabis plants which are classified as “herbs” which may be used both recreationally and medicinally.  Consumers are familiar with this abbreviation and know that it is merely descriptive of an ingredient or component of cannabis.  Applicant’s goods are identified as “herbs for medicinal purposes, raw herbs and herbs for smoking.”  This wording is broad enough to include cannabis containing THC.  This wording is, therefore, merely descriptive of the material content of the goods. 

 

The design of a cannabis/marijuana leaf is the legal equivalent of the wording “cannabis or marijuana.”  The attached evidence from WIKIPEDIA.ORG shows and describes various cannabis leaves.  The attachments from CANADA.CA, MARKETWATCH.COM and LEAFLY.COM show that the leaf design is intended to convey to consumers that the products are comprised of cannabis containing significant quantities of THC.  Therefore, the leaf image is the legal equivalent of “cannabis,” the material content of the goods.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “THC” or the “image of a cannabis leaf” apart from the mark as shown in Classes 5, 31 and 34. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage

DESCRIPTION OF THE MARK – ALL CLASSES

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  Here the description fails to contain a color location statement describing where the various claimed colors appear in the mark.

 

The following description is suggested, if accurate:  The mark consists of a red stop sign outlined in white and red with the color black appearing in the bottom quarter of the stop sign.  There is a white cannabis leaf in the center and the letters “THC” in white set inside the black portion of the sign.

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:  571-272-1652

Email:  jeffrey.look@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.