Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA379904
`ESTTA Tracking number:
`11/22/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77019085
`Chad W. Moody P.C.
`RANDALL K. MCCARTHY
`FELLERS, SNIDER ET AL.
`100 N BROADWAY AVE STE 1700
`OKLAHOMA CITY, OK 73102-8820
`UNITED STATES
`rmccarthy@fellerssnider.com
`Supplemental Brief
`ApplicantsSupplementalBrief.pdf ( 6 pages )(132308 bytes )
`Scott R. Zingerman
`mkimball@fellerssnider.com, trademarks@fellerssnider.com
`/scott r. zingerman/
`11/22/2010
`
`Proceeding
`Applicant
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`SERIAL NO.: 77/0 19,085
`FILING DATE: 10/11/06
`MARK: Design Only
`APPLICANT: CHAD W. MOODY, P.C.
`DOCKET NO.: OKC01238
`LAW OFFICE: 111
`EXAMINING ATTORNEY: LINDA ORNDORFF
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1451
`Alexandria, VA 223 13-1451
`
`APPLICANT’S SUPPLEMENTAL APPEAL BRIEF
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`Chad Moody, P.C. (Applicant/Appellant) hereby submits its supplemental appeal brief in
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`relation to the Examiner’s refusal
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`to register the above-identified mark as set out
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`in the
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`Examiner’s Final Rejection dated September 4, 2009, and respectfully requests that
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`the
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`Trademark Trial and Appeal Board reverse the Examiner’s decision. This brief supplements
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`Applicant’s appeal brief filed on December 22, 2008.
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`INDEX OF REFERENCES CITED
`
`Cases
`In re Hines, 32 USPQ2d 1376 (TTAB 1994)
`In re In Over Our Heads, Inc., 16 USPQ2d 1653, 1654-55 (TTAB 1990)
`In re Mavely Media Group Ltd, 33 F.3d 1367, 1371, 31 USPQ2d 1923 (Fed. Cir. 1994)
`
`Statutes
`15 U.S.C. § 1052(a)
`15 U.S.C. § 1052(e)
`
`Treatises
`McCarthy on Trademarks and Unfair Competition, § 19:77, Vol. 3 (Thomson Reuters/West
`2010)
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`1
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`

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`FACTS
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`Appellant filed an intent-to-use application on October 11, 2006 to register a design mark
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`depicting a stylized marijuana or hemp plant leaf on the Principal Register for “Pharmaceuticals,
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`namely, psychotropics for Adult ADD, Aggressive disorders, AIDS, AIDS wasting syndrome,
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`Alcoholism, Alzheime?s disease, Analgesic, Antibiotic, Anti-depressant, Anti-epileptic or
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`epilepsy/seizures, Anti-inflammatory, Anti-spasmodic (muscle spasms), Anti-tumor effects,
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`Anti-tussive, Appetite stimulation, Arthritis, Asthmalbreathing disorders, Brain injury/stroke,
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`Cancer chemotherapy, Child birth, Chronic pain, Chron’s disease, Depression, Dementia,
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`Diabetic gastroparesis, Dystonias, Eating disorders, Epilepsy, Eye disorders, Gastrointestinal
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`sedative, General pain, Glaucoma, Hepatitis A, B and C, Herbal remedies, Hypertension,
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`Immune system disorders and dysfunction, Insomnia, Labor pains, Menstrual cramps, Migraine,
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`Multiple sclerosis, Muscular dystrophy, Nausea, Neurological and movement disorders,
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`Oxytocic, Pain relief, Paraplegia, Phantom limb pain, PMT, Pruritus, Psuedotumour cerebri,
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`Psychological conditions, PTSD, Quadriplegia, Rheumatic diseases, Schizophrenia, Severe
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`nausea, Systemic sclerosis, Tinnitus, Topical anesthetic, Tranquilizer, Terminally ill, Tumors,
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`Vomiting, and Withdrawal agent for opiate and alcohol addiction” in International Class 005.
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`The Trademark Examining Attorney issued a final refusal to register under Sections 2(a) and
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`2(e)(l) of the Trademark Act, 15 U.S.C. § 1052(a) and 1052(e).
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`Applicant appealed on March 23, 2008. Prior to filing a response brief, the Examining
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`Attorney requested remand of the application. On February 5, 2009, the Board remanded the
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`application. The Examining Attorney again issued a final refusal
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`to register on the same
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`previous grounds. On September 21, 2010, the Board entered its order resuming the appeal.
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`Applicant hereby adopts and incorporates its opening appeal brief and supplements it as set forth
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`herein.
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`2
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`

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`A.
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`Applicant’s Mark is Not Scandalous.
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`ARGUMENT
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`The Examining Attorney has again refused registration of Applicant’s design mark
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`because, as contended by the Examining Attorney, the “proposed mark, contains a representation
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`of a marijuana leaf and is scandalous, within the meaning of the term.” The Examining Attorney
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`offers nothing new in the office action to support her position.
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`Contrary to the Examining Attorney’s position, there is nothing about Applicant’s design
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`mark for a plant leaf which is obscene, vulgar or scandalous.
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`Indeed, the Examining Attorney
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`has submitted nothing which demonstrates that Applicant’s design mark or any other plant leaf,
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`irrespective of the species of plant,
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`is “shocking the sense of truth, decency or propriety;
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`disgraceful; offensive; disreputable .
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`. giving offense to the conscience or moral feelings;
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`.
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`[or] calling out [for] condemnation.” In re Mavely Media Group Ltd., 33 F.3d 1367, 1371, 31
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`USPQ2d 1923 (Fed. Cir. 1994) (additional citations omitted).
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`The Examining Attorney’s office action provides only a few Internet definitions for the
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`word “cannabis” which, according the Examining Attorney, refers to an illicit or illegal drug.
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`The Examining Attorney has repeatedly ignored the facts that, as pointed out in Applicant’s
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`responses to office actions, numerous states have enacted laws which allow for legal use of
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`cannabis for medical purposes. As of November 15, 2010, Arizona became the fifteenth state,
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`along with the District of Columbia, to have passed medical marijuana laws since 1996.1
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`As detailed in Applicant’s responses to office actions and its opening appeal brief, the
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`fact that many pharmaceutical products may require a prescription or otherwise be regulated
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`1 Likewise, the Department of Justice has reversed its prior policy and has directed that the
`Justice Department’s efforts and resources not be directed toward individuals whose actions are
`in compliance with state laws providing for medical use of marijuana. See, e.g., Memorandum
`from David W. Ogden, Deputy Attorney General dated October 19, 2009
`(blogs.usdoj .gov/blog/archives/1 92).
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`3
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`

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`such that
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`their possession may not be lawful without appropriate permission from a
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`governmental authority, does
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`render a depiction of such goods to be scandalous.2 These facts
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`are not subject to reasonable dispute and are either generally known or capable of accurate and
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`ready determination via sources whose accuracy cannot reasonably be questioned. The Board
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`may therefore take judicial notice of such facts.
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`Even if the Board determines that the issue is not free from doubt or subject to some
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`ambiguity, the Board should follow its policy of passing the mark to publication to give others
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`the opportunity to object. As the Board explained in In re In Over Our Heads, Inc., 16 USPQ2d
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`1653, 1654-55 (TTAB 1990),
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`We recognize that this is a close case, and in making our determination that
`applicant’s mark is not scandalous or disparaging, we are not free of doubt.
`However,
`the guidelines for determining whether a mark is scandalous or
`disparaging are “somewhat vague” and the “determination [of whether] a mark is
`scandalous [or disparaging] is necessarily a highly subjective one.” Because the
`guidelines are somewhat vague and because the determination is so highly
`subjective, we are inclined to resolve doubts on the issue of whether a mark is
`scandalous or disparaging in favor of applicant and pass the mark for publication
`with the knowledge that if a group does find the mark to be scandalous or
`disparaging, an opposition proceeding can be brought and a more complete record
`can be established. (Citations omitted).
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`See In re Mavety Media Group Ltd. at 1371, (“today’s scandal can be tomorrow’s vogue” -
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`Federal Circuit adopts policy of the Board in cases of doubt to pass the mark to publication to
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`give others the opportunity to oppose to registration); In re Hines, 32 USPQ2d 1376 (TTAB
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`1994) (in case of doubt as to offensiveness, the Board will pass the application for publication).
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`See also, McCarthy on Trademarks and Unfair Competition,
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`§ 19:77, Vol.
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`3 (Thomson
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`Reuters/West 2010).
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`2 As the definitions attached to the Examining Attorney’s office action state, the term “cannabis”
`may refer to preparations or chemicals such as THC that are derived from hemp. See Merriam
`Webster ‘s Medical Dictionary. The U.S. Food and Drug Administration has approved drugs for
`therapeutic uses in the U.S., including Marinol and Cesamet, which contain the same active
`ingredients in a natural or synthetic form, such as THC, which are present in botanical marijuana.
`4
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`

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`Further, numerous marks and/or applications which include a stylized design of a
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`marijuana or hemp plant leaf have registered or have been approved for registration. Examples
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`of such were previously submitted with Applicant’s responses to office actions.
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`B.
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`Applicant’s Design Mark Is At Least Suggestive.
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`It does not appear that the Examining Attorney has included any new argument or
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`evidence in the final refusal that the mark is merely descriptive. Multiple definitions of the word
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`“marijuana” are referenced from www.dictionary.com in the final refusal.
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`In addition to the fact that these definitions are for the word “marijuana” and not for any
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`leaf design,
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`the dictionary definitions of the word “marijuana” submitted by the Examining
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`Attorney each recite “dried leaves (and flowers)” of the hemp or cannabis plant which when
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`prepared may have hallucinogenic or euphoric properties. However,
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`the leaf depicted in
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`Applicant’s design mark is not of a dried leaf but instead depicts a live or fresh leaf. Thus, the
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`dictionary definitions submitted by the Examining Attorney do not describe Applicant’s design.
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`Accordingly, the dictionary definition test indicates that the mark is at least suggestive.
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`As a result, the dictionary definition of the word “marijuana” further supports the fact
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`that a consumer must undergo a multi-step mental process if that consumer were to connect
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`Applicant’s design with the goods recited in the application under the imagination test.
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`The consumer confronted with Applicant’s design mark must first mentally recognize
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`that the plant leaf design is a leaf from a cannabis plant. Then, as stated above, the definitions of
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`the word “marijuana” all require the leaves to be dried and prepared. A consumer must apply
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`that definition and reason that the leaf depicted in Applicant’s design mark must be dried and
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`prepared (in some fashion). The next mental step is for the consumer to process the fact that the
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`dried marijuana leaf contains cannabinoids, and specifically TCH (delta-9-tetrahydrocannibinol),
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`which is defined to have hallucinogenic or euphoric effects on humans. An additional mental
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`5
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`

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`___
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`step is for the consumer to evaluate the fact that Applicant’s goods, pharmaceuticals, may
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`include these cannabinoids. A final mental step is required to reach a conclusion regarding the
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`use and/or applicability of pharmaceuticals which may include cannabinoids (which may induce
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`hallucinations or euphoria) for the ailments listed in Applicant’s identification of goods. This
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`conclusion is not
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`immediately apparent from Applicant’s design mark.
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`Since substantial
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`imagination, thought and/or perception is required, Applicant’s mark is at least suggestive rather
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`than merely descriptive of its goods.
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`CONCLUSION
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`For the reasons set forth above and in its opening appeal brief, Appellant submits that the
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`Trademark Examining Attorney’s refusal should be reversed and the Application to register this
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`mark should be passed to publication.
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`Dated: tbbr z2
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`Respe tfully submitted,
`Th
`
`L.
`
`Scott R. Zingermani7 ‘j
`Reg.No.: 35,422 ---J
`FELLERS, SNIDER, BLANKENSHIP,
`BAILEY & TIPPENS, P.C.
`321 South Boston, Suite 800
`Tulsa, OK 74103-33 18
`Phone: (918) 599-0621
`
`Certificate of Electronic Transmission
`
`I hereby certify that this paper is being electronically transmitted to the United States Pateni and Trademark Office
`on: 1, - a z -
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`Date
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`#548552
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`Signature
`
`Carol Welch
`(Typed or printed name ofperson signing certflcate)
`
`6