Advertising material is generally not acceptable as a specimen for goods. In re MN Apparel LLC, 2021 USPQ2d 535, at *15 (TTAB 2021) (citing In re Siny Corp., 920 F.3d 1331, 1336, 2019 USPQ2d 127099, at *2-3 (Fed. Cir. 2019)); In re Anpath Grp., 95 USPQ2d 1377, 1380 (TTAB 2010); In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010); see TMEP §904.03(i). Any material whose function is merely to tell the prospective purchaser about the goods, or to promote the sale of the goods, is unacceptable to support trademark use. Similarly, informational inserts are generally not acceptable to show trademark use. In re MediaShare Corp., 43 USPQ2d 1304 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520 (TTAB 1993) ; In re Drilco Indus. Inc., 15 USPQ2d 1671 (TTAB 1990); In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980); In re Bright of Am., Inc., 205 USPQ 63 (TTAB 1979). However, an instruction sheet may be an acceptable specimen. See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984) . See TMEP §904.03(j) regarding manuals and §904.04(c) regarding package inserts.
The following types of items are generally considered advertising, and unless they comprise displays associated with the goods, are not acceptable as specimens of use on goods: advertising circulars and brochures; price lists; announcements; press releases; listings in trade directories; business cards; and online advertising banners appearing on search-engine results pages or in social media. See TMEP §904.03(g) regarding specimens that consist of displays associated with goods, and §904.03(i) regarding specimens that consist of electronic displays.
Further, material used by the applicant to conduct its internal business is unacceptable as a specimen of use on goods. These materials include all documents whose sole function is to carry out the applicant’s business dealings, such as order forms, invoices, bill heads or receipts, waybills, warranties, pricelists, and business stationery. See In re Chi. Rawhide Mfg. Co., 455 F.2d 563, 173 USPQ 8 (C.C.P.A. 1972); Standard Brands Inc. v. Newton, 177 USPQ 408, 409 (TTAB 1973); In re Bright of Am., 205 USPQ at 71; Upco Co. v. Speed Crete of La., Inc., 154 USPQ 555 (TTAB 1967); Dynacolor Corp. v. Beckman & Whitley, Inc., 134 USPQ 410 (TTAB 1962); Pendleton Woolen Mills v. Eloesser-Heynemann Co., 133 USPQ 211 (TTAB 1962); Varian Assocs. v. IMAC Corp., 160 USPQ 283 (N.D. Ill. 1968); Boss Co. v. Homemaker Rugs, Inc., 117 USPQ 255 (N.D. Ill. 1958).
Material that would otherwise be considered mere advertising may be acceptable as a specimen of use for goods if it includes a photograph of the applied-for mark appearing on the goods or on packaging for the goods. See TMEP §§904.02(b), 904.03, 904.03(b), 904.03(c).
As to display of trademarks on company uniforms, see In re McDonald’s Corp., 199 USPQ 702 (TTAB 1978); Toro Mfg. Corp. v. John B. Stetson Co., 161 USPQ 749 (TTAB 1969) .
Bags and other packaging materials bearing the name of a retail store and used by the store merely for packaging items of sold merchandise are not acceptable to show trademark use of the store name for the products sold by the store (e.g., bags at cash register). When used in this manner, the name merely identifies the store. See In re Pa. Fashion Factory, Inc., 588 F.2d 1343, 200 USPQ 140 (C.C.P.A. 1978).
If material inserted in a package with the goods is merely advertising material, then it is not acceptable as a specimen of use on or in connection with the goods. Material that is only advertising does not necessarily cease to be advertising because it is placed inside a package.
Package inserts such as invoices, announcements, order forms, bills of lading, leaflets, brochures, printed advertising material, circulars, press releases, and the like are not acceptable specimens to show use on goods. See In re Bright of Am., Inc., 205 USPQ 63 (TTAB 1979).
If the examining attorney determines that the specimen is not acceptable, the examining attorney will require the applicant to submit a substitute specimen. Generally, when submitting a substitute specimen, the applicant must include an affidavit or declaration under 37 C.F.R. §2.20 verifying that the substitute specimen was in use in commerce as of the pertinent date in 37 C.F.R. §2.59(a)–(b). Similarly, when submitting an additional specimen in support of a multiple-class application that is not identical to the specimen originally filed, the applicant must include an affidavit or declaration under 37 C.F.R. §2.20 verifying that the new specimen was in use in commerce as of the pertinent date in 37 C.F.R. §2.59(a)–(b). See 37 C.F.R. §§2.86(a)(3), (b)(3). The affidavit or declaration must be signed by someone properly authorized to verify facts on behalf of the applicant under 37 C.F.R. §2.193(e)(1). 37 C.F.R. §2.59(a); see TMEP §611.03(a).
In an application under §1(a) of the Trademark Act, the affidavit or declaration must state that the substitute or additional specimen was in use in commerce at least as early as the application filing date. 37 C.F.R. §2.59(a). If the applicant cannot provide an acceptable substitute specimen, supported by an affidavit or declaration of use in commerce as of the filing date of the application, the applicant may amend the basis to §1(b). See 37 C.F.R. §2.35(b)(1). See TMEP §806.03 regarding amendments to the basis.
In an application under §1(b) of the Act, an applicant who files a substitute or additional specimen after an amendment to allege use under §1(c) of the Act must include an affidavit or declaration under 37 C.F.R. §2.20 stating that the substitute or additional specimen was in use in commerce prior to filing the amendment to allege use. 37 C.F.R. §2.59(b)(1). An applicant who files a substitute specimen after a statement of use under §1(d) of the Act must verify that the substitute or additional specimen was in use in commerce before the expiration of the deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). 37 C.F.R. §2.59(b)(2).
If the dates of use change as the result of the submission of new specimen(s), the applicant must file an amendment of the dates of use, supported by an affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.71(c); TMEP §903.04.
In some situations, however, an affidavit or declaration of use of substitute specimens is not necessary. For instance, if the specimen originally filed is cut from a larger object, it is not necessary to provide an affidavit or declaration when a sample (or a photograph) of the complete object is submitted to corroborate the original specimen. In these circumstances, the additional specimen is supplemental, and the examining attorney may consider the original specimens to have been satisfactory.
If there is matter printed on a specimen that is not in English and that is necessary to permit proper examination, the examining attorney must either include a translation of this matter in the record or require that the applicant submit a translation of this matter. See 37 C.F.R. §2.61(b). If the examining attorney determines that an English translation is necessary, he or she should limit the requirement in an appropriate manner to avoid placing an unnecessary burden on the applicant.
A §1(a) application for registration or an allegation of use submitted in a §1(b) application for a trademark or service mark must include one specimen per class, showing the applied-for mark as actually used in commerce on or in connection with the goods or services identified. 15 U.S.C. §§1051(a)(1), (c), (d)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a)-(b), 2.76(b)(2), 2.88(b)(2). Initially, the examining attorney must review the specimen to determine whether (1) the applied-for mark appears on the specimen, (2) the specimen shows use for the specific goods/services identified, and (3) the specimen otherwise shows the applied-for mark in actual "use in commerce."
The following non-exhaustive list reflects examples of "use-in-commerce" problems that may be raised on initial review of specimens:
In an Office action addressing such specimen issues, the examining attorney must indicate that registration is refused because the applicant has not provided evidence of use of the applied-for mark in commerce. The statutory bases for refusal are §1 and §45 of the Trademark Act, 15 U.S.C. §§1051, 1127. The examining attorney must also require the applicant to submit a substitute specimen and, if necessary, a supporting affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.59. If the refusal is made because the specimen is illegible, the applicant may respond by submitting a true copy of the originally submitted specimen that is clear and legible, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted. TMEP §904.02(a); see TMEP §904.02(b).
This specimen refusal, based on an applicant’s not providing the required evidence of use of the applied-for mark in commerce, also applies to specimens for collective and certification mark applications. A §1(a) application for registration or an allegation of use for a collective trademark or collective service mark must include one specimen per class showing how a member uses the mark on the member's goods or in the sale of the services, including use in the performance or rendering of the services, or advertising of the member's services. A §1(a) application for registration or an allegation of use for a collective membership mark must include one specimen per class showing use by members to indicate membership in the collective organization. A §1(a) application for registration or an allegation of use for a certification mark must include one specimen per class showing how a person other than the owner uses the mark to reflect certification of regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services. 15 U.S.C. §§1051(a)(1), (c), (d)(1), 1054, 1127; 37 C.F.R. §§2.44(a)(4)(i)(C), 2.45(a)(4)(i)(E), 2.56(a), (b)(3)-(b)(5), 2.76(b)(2), 2.88(b)(2).
If the specimen submitted does not show the applied-for mark in actual use in commerce, for the identified goods or services, the examining attorney must refuse registration because the applicant has not provided evidence of use of the applied-for mark in commerce. The statutory bases for refusal are §1 and §45 of the Trademark Act, 15 U.S.C. §§1051, 1127. The examining attorney must also require the applicant to submit a substitute specimen and, if necessary, a supporting affidavit or declaration under 37 C.F.R. §2.20. See 37 C.F.R. §2.59. If the refusal is made because the specimen is illegible, the applicant may respond by submitting a true, unaltered copy of the originally submitted specimen that is clear and legible, with a statement by the person who transmitted it that it is a true copy of the specimen that was originally submitted. TMEP §904.02(a); see TMEP §904.02(b).
For more information regarding specimens for collective trademarks and collective service marks see TMEP §1303.01(a)(i)(C), for collective membership marks see §1304.02(a)(i)(C), and for certification marks see §1306.02(a)(i)(B), §1306.04(c)-(d).
If the applicant responds to the Office action refusing registration by submitting a substitute specimen that does not show use of the mark in commerce for the same or a different "use-in-commerce" reason, such as the examples listed above, the examining attorney must issue a final refusal because the substitute specimen does not present a new issue. For example, if the original specimen was a photocopy of the drawing, and the applicant submits, in a response to the refusal, a substitute specimen that comprises advertising for its goods, this does not present a new issue. However, if the applicant responds to the refusal by submitting a substitute specimen that fails to show the applied-for mark functioning as a trademark or service mark (e.g., shows the mark is merely ornamental), this presents a new issue that requires issuance of a new nonfinal Office action. See TMEP §904.07(b) for a contrasting list of substantive reasons, relating to failure to function as a mark, that might present a new issue. Therefore, the examining attorney must issue a new refusal as to the substitute specimen, and must maintain the prior refusal as to the original specimen and indicate that the substitute specimen did not obviate the initial refusal.
If the applicant responds to the "use-in-commerce" refusal by submitting a substitute specimen, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to show use in commerce, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney must issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.
If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal (assuming the application is otherwise in condition for final refusal) because the substitute specimen does not present a new issue.
See TMEP §714.05 regarding new issues requiring issuance of nonfinal action.
In a §1(a) application for registration or an allegation of use submitted in a §1(b) application for a trademark or service mark, the examining attorney must also evaluate the specimen to determine whether the applied-for mark is used in a way that shows that: (1) the applied-for mark identifies the goods or services of the applicant and distinguishes them from the goods or services of others; and (2) the applied-for mark indicates the source of those goods or services. See 15 U.S.C. §1127. If use on the specimen fails in either regard, the record lacks the requisite evidence that the applied-for mark functions as a mark. The following non-exhaustive list reflects examples where review of the specimen would indicate a failure to function as a mark:
If the deficiency in a specimen amounts to failure to demonstrate use of the applied-for mark as a trademark or service mark, the examining attorney must issue a "failure-to-function" refusal of registration on the ground that the applied-for mark does not function as a trademark or service mark, in addition to advising the applicant of the appropriate response options, which may include requiring the applicant to submit a substitute specimen. See, e.g., In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039, at *16 (TTAB 2019); In re Osmotica Holdings Corp., 95 USPQ2d 1666 (TTAB 2010); In re Supply Guys, Inc., 86 USPQ2d 1488 (TTAB 2008). The statutory bases for refusal are §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1127, for trademarks, or §§1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, 1127, for service marks. Generally, when initially refusing registration on the ground that the subject matter does not function as a trademark or service mark, the examining attorney should advise the applicant that the refusal will be reconsidered if the applicant submits a substitute specimen showing proper use of the applied-for mark as a trademark or service mark and, if necessary, a supporting affidavit or declaration. See TMEP §904.05 regarding affidavits supporting new specimens. However, in instances where the nature of the mark, such as with informational marks, indicates that consumers would never perceive the mark as source indicating, regardless of the manner of use, no such advisory need be given.
This "failure-to-function" specimen refusal also applies to specimens for collective and certification mark applications. If the deficiency in a specimen amounts to failure to demonstrate use of the applied-for mark as a collective or certification mark, the examining attorney must issue a "failure-to-function" refusal of registration on the ground that the applied-for mark does not function as a collective or certification mark and advise the applicant of the appropriate response options, which may include requiring the applicant to submit a substitute specimen. See In re Int’l Inst. of Valuers, 223 USPQ 350 (TTAB 1984); In re Mountain Fuel Supply Co., 154 USPQ 384 (TTAB 1967); Ex parte Van Winkle, 117 USPQ 450 (Comm’r Pats. 1958). The statutory bases for refusal are §§1, 2, 4, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053, 1127. Generally, when initially refusing registration on the ground that the subject matter does not function as a collective or certification mark, the examining attorney should advise the applicant that the refusal will be reconsidered if the applicant submits a substitute specimen showing proper use of the applied-for mark as a collective or certification mark and, if necessary, a supporting affidavit or declaration. See TMEP §904.05 regarding affidavits supporting new specimens. However, in instances where the nature of the mark, such as with informational marks, indicates that consumers would never perceive the mark as source indicating, regardless of the manner of use, no such advisory need be given.
For additional specimen refusals for collective and certification marks and more information regarding whether the specimen shows the applied-for mark functioning as a collective or certification mark, see TMEP §1303.01(a)(i)(C) for collective trademark and collective service mark specimens, see §1304.03(b) for collective membership mark specimens, and see §1306.04(c)-(d) for certification mark specimens.
Because the examining attorney has advised the applicant of the appropriate response options, which may include the general requirements for a substitute specimen, if the applicant responds to the failure-to-function refusal by submitting a specimen that does not show the mark in use in commerce for a reason such as those set out in TMEP §904.07(a), the examining attorney must issue a final refusal, as no new issue is presented. For example, if the original specimen was refused as ornamental and the substitute specimen does not show the applied-for mark, the examining attorney may issue a final refusal. By contrast, if the applicant responds to the Office action refusing registration by submitting a substitute specimen that reflects failure to function as a mark for a different substantive reason, such as the examples listed in TMEP §904.07(b), the examining attorney must issue a new nonfinal Office action because the substitute specimen presents a new issue. For example, if the original specimen shows the mark used merely as a domain name, and the applicant submits a substitute specimen that shows the mark used in an ornamental manner, this presents a new issue. Therefore, the examining attorney must issue a new refusal as to the substitute specimen, and must maintain the prior failure-to-function refusal as to the original specimen and indicate that the substitute specimen did not obviate the initial refusal. If the applicant responds to the refusal by submitting a substitute specimen that fails to show the applied-for mark functioning as a trademark or service mark for the same reason as the original specimen (e.g., the original specimen was refused as ornamental and the substitute specimen also reflects ornamental use), this does not present a new issue and the examining attorney must issue a final Office action.
If the applicant responds to the failure-to-function refusal by submitting a substitute specimen, and unlike in the original specimen, the mark on the substitute specimen now does not agree with the mark on the drawing (see TMEP §807.12), but the specimen would otherwise be acceptable to identify the goods/services of the applicant and indicate the source of those goods/services, the examining attorney may allow the applicant to amend the drawing if such an amendment would not constitute a material alteration of the mark. If any remaining issues can be handled by examiner’s amendment, and the mark is a standard character mark, the examining attorney may give the applicant the option to amend the drawing by examiner’s amendment. If not, the examining attorney should issue a final refusal that also gives the applicant the option to overcome the refusal by submitting a substitute drawing.
If an amendment of the drawing would be a material alteration, the examining attorney must issue a final refusal (assuming the application is otherwise in condition for final refusal), because the substitute specimen does not present a new issue. See TMEP §714.05.
See TMEP §714.05 regarding new issues requiring issuance of nonfinal action, §§1202–1202.19(k) regarding matter that does not function as a trademark, and TMEP §§1301.02–1301.02(f) regarding matter that does not function as a service mark.
The applicant is not required to specify the method or intended method of use of a mark. However, the examining attorney has the discretion under 37 C.F.R. §2.61(b) to inquire as to the method or intended method of use of the mark if this information is needed to properly examine the application. See TMEP §814; see also In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).
The owner of a mark registered in the United States Patent and Trademark Office may give notice that the mark is registered by displaying with the mark the words "Registered in United States Patent and Trademark Office," the abbreviation "Reg. U.S. Pat. & Tm. Off.," or the letter R enclosed within a circle, ®. 15 U.S.C. §1111.
The registration symbol should be used only on or in connection with the goods/services/collective membership organization listed in the registration.
The federal registration symbol may not be used with marks that are not actually registered in the USPTO. Even if an application is pending, the registration symbol may not be used until the mark is registered.
Registration in a state of the United States does not entitle a person to use the federal registration notice. Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964) .
A party may use terms such as "trademark," "trademark applied for," "TM" and "SM" regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.
In addition to the United States, several countries recognize use of the symbol ® to designate registration. When a foreign applicant’s use of the symbol on the specimens is based on a registration in a foreign country, the use is appropriate.
The following foreign countries use the ® symbol to indicate that a mark is registered in their country:
Improper use of the federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. See TMEP §906.04. However, misunderstandings about use of federal registration symbols are more frequent than occurrences of actual fraudulent intent. Common reasons for improper use of the federal registration symbol that do not indicate fraud are:
See also Sauquoit Paper Co. v. Weistock, 46 F.2d 586, 8 USPQ 349 (C.C.P.A. 1931); Dunleavy Co. v. Koeppel Metal Furniture Corp., 134 USPQ 450 (TTAB 1962) , aff’d, 328 F.2d 939, 140 USPQ 582 (C.C.P.A. 1964); Radiant Mfg. Corp. v. Da-Lite Screen Co., 128 USPQ 132 (TTAB 1961) ; Tobacco By-Products & Chem. Corp. v. Smith, 106 USPQ 293 (Comm’r Pats. 1955), modified 243 F.2d 188, 113 USPQ 339 (C.C.P.A. 1957).
If a specimen in an application shows the federal registration symbol used with the mark that is the subject of the application, or with any portion of this mark, the examining attorney must determine from USPTO records whether or not such matter is registered. If it is not, and if the symbol does not appear to indicate registration in a foreign country (see TMEP §906.01), the examining attorney must point out to the applicant that the records of the USPTO do not show that the mark with which the symbol is used on the specimens is registered, and that the registration symbol may not be used until a mark is registered in the USPTO. The examining attorney should not require any explanation or comment from the applicant concerning the use of the symbol in relation to the mark.
Improper use of the federal registration symbol, ®, that is deliberate and intends to deceive or mislead the public or the USPTO is fraud. See Copelands’ Enters. Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Assocs., 20 USPQ2d 1156 (TTAB 1991) .
The examining attorney may not issue a refusal of registration based on fraud. If it appears to the examining attorney that fraud on the USPTO has been committed, the examining attorney must follow the procedures outlined in TMEP §720.
When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.
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); In re Stanley Bros. Soc. Enters., LLC, 2020 USPQ2d 10658, at *9 (TTAB 2020) (citing In re PharmaCann LLC, 123 USPQ2d 1122, 1124 (TTAB 2017); In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016)); see 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69. Thus, the goods or services to which the mark is applied, and the mark itself, must comply with all applicable federal laws. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) ("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, i.e., the sale or shipment of the product under the mark [has] to comply with all applicable laws and regulations. If this test is not met, the use of the mark fails to create any rights that can be recognized by a Federal registration."). In addition, "the fact that the provision of a product or service may be lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law." In re Brown, 119 USPQ2d at 1351 .
Generally, the USPTO presumes that an applicant’s use of the mark in commerce is lawful unless the application record indicates a violation of federal law. In re Stanley Bros. Soc. Enters., LLC, 2020 USPQ2d 10658, at *10 (citing In re Brown, 119 USPQ2d at 1351). Thus, registration will not be refused based on the absence of lawful use in commerce unless "either (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 Stanley Bros. Soc. Enters., LLC, 2020 USPQ2d 10658, at *11 (quoting In re Brown, 119 USPQ2d at 1351); see also Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045, 2047 (TTAB 1988) ; Santinine Societa v. P.A.B. Produits,209 USPQ 958, 964TTAB1981
If the record in an application based on Trademark Act Section 1(a) indicates that the mark itself or the identified goods or services violate federal law, registration must be refused under Trademark Act Sections 1 and 45, based on the absence of lawful use of the mark in commerce. See 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.69; In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968) .
For applications based on Trademark Act Section 1(b), 44, or 66(a), if the record indicates that the mark or the identified goods or services are unlawful, actual lawful use in commerce is not possible. See In re PharmaCann LLC , 123 USPQ2d at 1124 ; In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016); John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d 1942, 1948 (TTAB 2010). Thus, a refusal under Trademark Act Sections 1 and 45 is also appropriate for these non-use-based applications, because the applicant does not have a bona fide intent to lawfully use the mark in commerce. See 15 U.S.C. §§1051, 1127; In re PharmaCann LLC , 123 USPQ2d at 1124 ; In re JJ206, LLC,120 USPQ2d at 1569; John W. Carson Found., 94 USPQ2d at 1948 .
Under Trademark Rules 2.61(b) and 2.69, 37 C.F.R. §§2.61(b) and 2.69, examining attorneys may require additional information about the goods or services and inquire about compliance with federal laws to support a refusal or otherwise facilitate proper examination. See TMEP §814. Before issuing an inquiry or refusal pertaining to the lawfulness of goods or services, examining attorneys must obtain approval from their managing attorney or senior attorney, who may seek additional guidance from the Office of the Deputy Commissioner for Trademark Examination Policy.
For the purpose of determining whether to issue an inquiry or refusal, the USPTO will not regard apparent technical violations, such as labeling irregularities on specimens, as violations. For example, if a package fails to show all required labeling information, the examining attorney should not take any action. Likewise, the USPTO does not routinely solicit information regarding label approval under the Federal Alcohol Administration Act or similar acts. However, if the record indicates that the mark itself or the goods or services violate federal law, an inquiry or refusal must be made. Evidence indicating that the identified goods or services involve the sale or transportation of a controlled substance or drug paraphernalia in violation of the Controlled Substances Act (CSA), 21 U.S.C. §§801-971, would be a basis for issuing an inquiry or refusal. See In re JJ206, LLC, 120 USPQ2d at 1569-70; In re Brown, 119 USPQ2d at 1351-53. Subject to certain limited statutory exceptions, the CSA makes it unlawful to manufacture, distribute, or dispense a controlled substance; possess a Schedule I controlled substance; or sell or offer for sale drug paraphernalia, or use any facility of interstate commerce to transport such drug paraphernalia. See 21 U.S.C. §§812(b)(1)(B), 841(a)(1), 844(a), 863. Note that, regardless of state law, marijuana and marijuana extracts remain Schedule I controlled substances under federal law and are subject to the CSA’s prohibitions. 21 C.F.R. §1308.11; see U.S. Const. Art. VI. Cl. 2; Gonzales v. Raich, 545 U.S. 1, 27, 29 (2005); U.S. v. Oakland Cannabis Buyers’ Coop., 532 U.S. 483, 491 (2001); In re JJ206, LLC, 120 USPQ2d at 1571; In re Brown, 119 USPQ2d at 1352 . These prohibitions apply with equal force to the distribution and dispensing of medical marijuana. In re PharmaCann LLC , 123 USPQ2d at 1126 .
The Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), which amends the Agricultural Marketing Act of 1946 (AMA), removed "hemp" from the CSA’s definition of marijuana. Hemp is defined under the 2018 Farm Bill to include any cannabis plant, or derivative thereof, that contains not more than 0.3 percent delta-9 tetrahydrocannabinol (THC) on a dry-weight basis. Thus, "hemp," as defined in the 2018 Farm Bill, is not a controlled substance under the CSA. However, the inclusion of certain hemp extracts in goods may still be unlawful under other federal statutes, including the Food Drug and Cosmetic Act (FDCA). See 21 U.S.C. §331(II); see also In re Stanley Bros. Soc. Enters., LLC, 2020 USPQ2d 10658, at *12.
When refusing registration, the examining attorney must indicate the particular law that is violated by the mark or the identified goods or services.
If, in response to a requirement for information or a refusal, the applicant indicates that the relevant goods or services comply with federal law, but there is extrinsic evidence indicating that the goods or services do not, in fact, comply with federal law, the examining attorney must refuse registration (or maintain the prior refusal), citing the relevant extrinsic evidence.
See TMEP §1205 regarding refusal of registration of matter that is protected by a statute or convention.
