Responding to USPTO Office Actions – Challenges for Cannabis Companies

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USPTO trademark registrations are an important way for cannabis companies to protect and grow their brands nationally.  While cannabis companies still cannot register trademarks that identify goods or services related to manufacturing, distributing, dispensing, and possessing cannabis and cannabis-based preparations because cannabis, and its psychoactive component, Tetrahydrocannabinol (THC), remain classified as Schedule I controlled substances under the federal Controlled Substances Act (CSA), cannabis businesses can protect certain non-plant touching activities which are federally legal (e.g. certain branded merchandise). However, for many businesses, the USPTO trademark registration process nonetheless proves time-consuming and full of obstacles.

What is a USPTO Office Action?

It is common during the examination of federal trademark applications submitted by cannabis businesses for the USPTO initially to refuse to register a mark by issuing an “office action.”  An office action is an official letter sent by the USPTO, in which an examining attorney lists any legal problems with the chosen trademark, as well as with the application itself. The applicant must resolve all legal problems in the office action before the USPTO will allow the trademark to proceed towards registration. 

The Difference Between Nonfinal and Final USPTO Office Actions

A “nonfinal” office action raises a legal problem about an application for the first time. If an applicant does not adequately address all the issues in an initial “nonfinal” office action, it will receive a “final” office action, representing the last chance to resolve any remaining problems. Applicants receive six months to respond to office actions. Applications without timely responses will become abandoned.

Amending the Federal Trademark Application in Response to an Office Action Issued by the USPTO

In an office action, a USPTO examining attorney may require that the applicant fix legal problems with the application itself by making simple procedural revisions, such as clarifying the identified goods or services. An examining attorney may also raise legal grounds for rejection, such as refusing an application because the chosen trademark is likely to be confused with an already registered trademark or because the chosen trademark describes some trait or characteristic of the goods or services it identifies. Responding to such office actions often requires nuanced arguments supported by evidence and citations to legal precedent. 

Trademark applications by cannabis companies frequently receive office actions addressing whether the mark, as used in connection with the identified goods and/or services, is lawfully being used in commerce.  The USPTO will ask trademark applicants to submit written statements indicating whether the goods and/or services identified in their applications comply with the CSA.  Applicants will be asked to answer specific questions about their goods and/or services, such as whether they “include or contain marijuana, marijuana-based preparations, marijuana extracts or derivatives, or any other illegal controlled substance.” 

The Importance of an Accurately and Thoroughly Prepared Office Action Response

Trademark applicants should carefully prepare all office action responses because they become a matter of public record. In the future, any submitted arguments or evidence potentially may be used against the applicant by an opposing party in a future conflict or proceeding.  For example, if a cannabis company receives an office action regarding lawful use in commerce and submits a response attesting that the goods and/or services in the application comply with the CSA, it could later be difficult for the cannabis company to enforce the resulting trademark registration against another potentially infringing cannabis brand.  
The USPTO often advises applicants to retain experienced trademark counsel to respond to office actions on their behalf.  Please contact the trademark attorneys at Rogoway Law to help you traverse the challenges presented by USPTO office actions.

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