Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA753078
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`Filing date:
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`06/17/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`86479070
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`Ultra Trimmer, L.L.C.
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`Applied for Mark
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`ULTRA TRIMMER
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`Correspondence
`Address
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`Submission
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`Attachments
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`Filer's Name
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`Filer's e-mail
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`Signature
`
`Date
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`JOSEPH W. HOLLAND
`HOLLAND LAW OFFICE P.L.L.C.
`PO BOX 1840
`BOISE, ID 83702
`UNITED STATES
`jwh@idahoip.com,admin@idahoip.com
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`Appeal Brief
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`APPEAL BRIEF.pdf(70034 bytes )
`
`Joseph W. Holland
`
`jwh@idahoip.com,admin@idahoip.com
`
`/Joseph W. Holland/
`
`06/17/2016
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK SECTION
`
`
`In re Application of: Ultra Trimmer, L.L.C.
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`
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`Mark: Ultra Trimmer
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`Examining Attorney: Lindsey H. Ben
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`Application Serial No.: 86479070
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`Law Office 108
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`
`
`
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`APPLICANT’S BRIEF IN SUPPORT OF THE APPEAL FROM THE FINAL ACTION
`DATED: 11/20/2015
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`
`TO: Assistant Commissioner for Trademarks
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`2900 Crystal Drive
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`Arlington, Virginia 20202-3513
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`Dear Sir:
`
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`Please enter the following Remarks in the Appeal of the above referenced matter as
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`Applicant’s Brief in Support of the Appeal from the Final Action dated November 20, 2015.
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`1.
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`Summary of Proceedings
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`The refusal to register the applied-for mark has been made final under Trademark Act
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`Sections 1 and 45, 15 U.S.C. §§1051 and 1127 in the Final Action of November 20, 2015. In
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`continuing the refusal, the Examining Attorney failed to address Applicant’s argument that the
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`proper legal test for use in commerce was not applied. Rather, the Final Office Action provides
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`simply and summarily that “the applied-for mark, as used in connection with the goods identified in
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`the application, is not in lawful use in commerce.” Final Office Action, November 20, 2015, page 2.
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`In like manner, Applicant’s argument that that the use of the applied-for mark in connection
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`with the sale of the described goods is a “lawful use” exempt from the prohibitions of the Controlled
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`Substances Act, under 21 USC 13, Subchapter I - Part D, § 863 (f) which provides that the
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`prohibitions of § 863 shall not apply to “(1) any person authorized by local, State, or Federal law to
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`
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 1 of 15
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`

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`manufacture, possess, or distribute such items, . . .” was dismissed simply and summarily as
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`“irrelevant.” Final Office Action, November 20, 2015, page 2.
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`Finally, Applicant’s argument that the “lawful use” test as a condition precedent to
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`registration is a rule that is not evenly applied was not addressed at all in the Final Action of
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`November 20, 2015. Applicant asserts that the promise of fair procedure guaranteed under the Fifth
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`Amendment has been overlooked in adopting a two tiered system of granting trademark
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`registrations.
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`2.
`The Plain Language of 15 U.S.C. § 1051 Requires Only Verification of “Use in
`Commerce.”
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`The legal test adopted and applied by the Trademark Office in support of the refusal -
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`
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`“lawful use in commerce,” is contrary to the plain language of 15 U.S.C. § 1051. Section 1 of the
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`Trademark Act requires that an application for use of a trademark shall be verified by the applicant
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`and specify that “the mark is in use in commerce.” 15 U.S.C. § 1051(a)(3)(C). Applicant contends
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`that all statutory requirements for registration of the applied-for trademark have been met including
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`verification by the applicant that “the mark is in use in commerce.”
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`The judicially created “use in lawful commerce” test was developed in a linage of cases,
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`through an exercise in strained logic1, each of the cases acknowledging In re Stellar Int’l, Inc., 159
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`USPQ 48 (TTAB 1968) as a seminal authority, an authority that manages to arrive at the remarkable
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`conclusion that “[i]t seems evident that the term “commerce” whenever and wherever used in the
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`trademark statute must necessarily refer to ‘lawful commerce’” . . . Id. at 51, (emphasis added). The
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`
`1
`“A valid application cannot be filed at all for registration of a mark without ‘lawful use in
`commerce’” Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir.
`1987), “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in
`commerce. . .’ Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982) and “[i]t has long
`been the policy of the PTO’s Trademark Trial and Appeal Board that use in commerce only creates
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`
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 2 of 15
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`courts have managed, through the cited lineage of cases to derive a number of variations of this test
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`which have redefined the plain language, “use in commerce,” of the Trademark Act and in particular
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`15 U.S.C. § 1051(a)(3)(C).
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`In In re Stellar Int’l, Inc., supra, the Examiner relied on Sections 1 and 41 of the Trademark
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`Act in amending the verification of “use in commerce” condition to registration to the “lawful use in
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`commerce” requirement. Although Section 41 of the Act of 1946 provides that: “[t]he
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`Commissioner shall make rules and regulations, “not inconsistent with the law,” (emphasis added),
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`the Stellar court redefined the term “commerce” so as to have a meaning and effect inconsistent with
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`legislated definition and intent and the Commissioner has adopted this test through the
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`implementation of 37 CFR 2.69 and TMEP §907.
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`
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`The adoption of the “lawful use in commerce” test is inconsistent with the plain language of
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`both 15 U.S.C. § 1051(a)(3)(C) which requires verification by the applicant that “the mark is in use
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`in commerce” and 15 U.S.C. § 1127 that defines the word “commerce” as “all commerce which may
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`lawfully be regulated by Congress.” In applying the “lawful use in commerce” test, the courts and
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`the Commissioner ignore the possibility that the sale of goods described by an applicant in an
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`application may comprise commerce that is already “lawfully regulated by Congress.” In so doing,
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`the Trademark Office places itself in the anomalous position of interpreting, enforcing and
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`implementing its own system of penalties for laws that fall under the direct authority of other
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`governmental agencies. This anomaly is apparent in the present circumstance where the Trademark
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`Office continues to apply a test or criteria for registration that is contrary in spirit to the directive of
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`Subchapter I - Part D, § 863, paragraph (f) of the Controlled Substances Act, (discussed below), and
`
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`trademark rights when the use is lawful.” CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630,
`81 USPQ2d 1592 (9th Cir. 2007).
`
`
`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 3 of 15
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`

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`the U.S. Attorney General and the Department of Justice in a memo dated August 29, 2013,
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`commonly referred to as the DAG Memo 8-29-13.
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`
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`In those circumstances, consistent with the traditional allocation of federal-state
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`efforts in this area, enforcement of state law by state and local law-enforcement and
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`regulatory bodies should remain the primary means of addressing marijuana related activity.
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`DAG Memo 8-29-13, page 3. (emphasis added)
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`
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`To the extent that the Trademark Office continues to penalize activity that the agency
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`primarily tasked with enforcement of the underlying legislation has waived enforcement activity is
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`not at all unlike insisting upon saluting a flag that has been already lowered. Applicant asserts that it
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`is clear that had the legislature intended that the Trademark Office penalize an Applicant for a matter
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`that is otherwise entrusted to another agency or authority it would have done so through the use of
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`clear and unequivocal language in outlining the statutory requirements for registration.
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`
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`[C]anons of construction are no more than rules of thumb that help courts determine
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`the meaning of legislation, and in interpreting a statute a court should always turn first to
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`one, cardinal canon before all others.... [C]ourts must presume that a legislature says in a
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`statute what it means and means in a statute what it says there. When the words of a statute
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`are unambiguous, then, this first canon is also the last: “judicial inquiry is complete.”
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`Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253-54 (1992) (citations omitted).
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`
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`See also Lucent Technologies, Inc. v. Microsoft Corp., 544 F.Supp.2d 1080, 1102 (D.S.D.
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`Cal. 2008) where that court in a patent infringement action declined to extend the intervening rights
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`doctrine based on 35 U.S.C. § 252 citing Connecticut Nat’l Bank, supra. See also Marvel
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`Characters, Inc. v. Simon, 310 F.3d 280 (2nd Cir. 2002). In Marvel Characters the Court of Appeals
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`for the Second Circuit observed in an action involving unfair competition, misappropriation and
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 4 of 15
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`

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`copyright issues that “[w]hen the language of a statute is unambiguous, “judicial inquiry is
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`complete.” See Novak v. Kasaks, 216 F.3d 300, 310 (2d Cir.2000).
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`To the extent that each of the decisions cited as a basis for refusing the present application
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`have failed to apply the primary and most basic tenant of statutory construction, that being to
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`“presume that a legislature says in a statute what it means,” each has disregarded the plain meaning
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`of the Trademark Act and has reached a conclusion or a ruling that is “inconsistent with the law.”
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`As previously noted Section 1 of the Trademark Act requires that an application for use of a
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`trademark shall be verified by the applicant and specify that “the mark is in use in commerce.” 15
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`U.S.C. § 1051(a)(3)(C). A plainer statement would be difficult to forge. Similarly Section 45 of the
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`Trademark Act defines the word “commerce” as “all commerce which may lawfully be regulated by
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`Congress.” 15 U.S. Code § 1127. A more perfect opportunity for the legislative branch to have
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`defined the term “commerce” as meaning “lawful commerce” could not be imagined. Yet with the
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`perfect opportunity staring the legislature in the face, the legislature chose not to define commerce as
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`“lawful use in commerce.” In presuming “that a legislature says in a statute what it means” one must
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`surmise that the legislature meant that “commerce” means “all commerce which may lawfully be
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`regulated by Congress.”
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`Applicant respectfully submits that the application for registration of the mark Ultra Trimmer
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`should be allowed as all statutory requirements for registration of the applied-for trademark have
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`been met including verification by the applicant that “the mark is in use in commerce.” Applicant
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`respectfully submits that the Board reverse the refusal to register under Sections 1 and 45, 15 U.S.C.
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`§§1051 and 1127.
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`
`
`
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 5 of 15
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`

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`Applicant’s Use of the Applied-For Mark in Connection with the Recited Goods is an
`3.
`Exempt Use and Therefore a “Lawful Use.”
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`The goods recited in the present Application consist of “Agricultural machines, namely, a
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`trimming machine for trimming leaves, plants, flowers and buds.”
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`The Office Action of April 14, 2015 explains the reasoning for refusal more fully:
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`The specimen of record and attached excerpt from applicant’s website plainly
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`indicates that applicant’s identified goods include items that are prohibited by the CSA,
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`namely, the applied-for goods are used for trimming cannabis/marijuana plants, leaves,
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`flowers, and buds. More specifically, the specimen shows an image of a marijuana leaf and
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`the applicant’s website refers to the goods as “The Ultra Trimmer Marijuana Trimming
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`Machine.”
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`
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`Because these goods are prohibited by the CSA, the applied-for mark, as used in
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`connection with such goods, is not in lawful use in commerce.
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`Office Action, April 14, 2015, page 2.
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` The Office Action of April 14, 2015 does not recite specifically which section of the CSA
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`the applicant’s goods are prohibited under. The “Controlled Substances Act,” (CSA), is found at
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`Title 21 of the U.S. Code.
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`
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`The applied for mark is used in connection with the sale of goods in International Class 7 as
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`set forth in the application. Arguably, the only Section of the CSA that the refusal might be based on
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`is the prohibition against the sale, use or importation of drug paraphernalia found at Subchapter I -
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`Part D, § 863, paragraph (a) which provides in part:
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`any equipment, product, or material of any kind which is primarily intended or
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`designed for use in manufacturing, compounding, converting, concealing, producing,
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`processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human
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`
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 6 of 15
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`

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`body a controlled substance, possession of which is unlawful under this subchapter. It
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`includes items primarily intended or designed for use in ingesting, inhaling, or otherwise
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`introducing marijuana, cocaine, hashish, hashish oil, PCP, or amphetamines into the human
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`body, . . . (emphasis added).
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`Id.
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`21 USC 13, Subchapter I - Part D, § 863 paragraph (d) of the Chapter 13 of the Controlled
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`Substances Act is entitled “Drug Abuse Prevention and Control” and provides in part:
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`
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`It is unlawful for any person—
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`(1) to sell or offer for sale drug paraphernalia;
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`(2) to use the mails or any other facility of interstate commerce to transport drug
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`paraphernalia; or
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`(3) to import or export drug paraphernalia.
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`Id.
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`Although not specifically stated in the Office Action, Applicant’s response was based, at
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`least in part, on the belief that the Examining Attorney is relying on the referenced section to support
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`the refusal. The Final Office Action did not reference or clarify this point so the Applicant continues
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`to rely on these assumptions.
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`Subchapter I - Part D, § 863, paragraph (f) of the Controlled Substances Act entitled
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`“Exemptions,” provides for certain exemptions to the prohibition set forth at Subchapter I - Part D, §
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`863 paragraph (a), supra. Specifically, paragraph (f) provides that the prohibitions of § 863 shall not
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`apply to: “(1) any person authorized by local, State, or Federal law to manufacture, possess, or
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`distribute such items; . . .” 21 USC 13, Subchapter I - Part D, § 863 (f), (emphasis added). The
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`noted exemption applies in the instant case as no fewer than 45 sovereign states and the District of
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 7 of 15
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`

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`Columbia, have provided a variety of conditions and scenarios under which the sale and use of
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`marijuana and “marijuana accessories” are deemed within the law.
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`Colorado has amended their state constitution making lawful the personal use of marijuana
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`and “marijuana accessories” by persons aged 21 and older.
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`Notwithstanding any other provision of law, the following acts are not unlawful and
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`shall not be an offense under Colorado law or the law of any locality within Colorado or be a
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`basis for seizure or forfeiture of assets under Colorado law for persons twenty‐one years of
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`age or older: (a) Possessing, using, displaying, purchasing, or transporting marijuana
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`accessories or one ounce or less of marijuana. (b) Possessing, growing, processing, or
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`transporting no more than six marijuana plants, with three or fewer being mature, flowering
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`plants, and possession of the marijuana produced by the plants on the premises where the
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`plants were grown, provided that the growing takes place in an enclosed, locked space, is not
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`conducted openly or publicly, and is not made available for sale. (emphasis added).
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`Colorado Constitution, Article XVIII, Section 16 entitled Personal Use and Regulation of
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`Marijuana, Paragraph 3.
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`The District of Columbia and twenty-five states2, Alaska, Arizona, California, Colorado,
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`Connecticut, Delaware, Hawaii, Illinois, Maine, Maryland, Massachusetts, Michigan, Minnesota,
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`Montana, Nevada, New Hampshire, New Jersey, New Mexico, New York, Ohio, Oregon,
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`Pennsylvania, Rhode Island, Vermont and Washington, have legalized or otherwise allow the use of
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`marijuana and its compounds and derivatives for medical purposes.
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`
`2
`Two states have legalized use of medicinal marijuana since the time of the Final Action in this
`matter. In Pennsylvania Senate Bill 3 was signed into law by Governor Tom Wolf on April 17, 2016 and
`in Ohio, House Bill 523 was signed into law by Governor John Kasich on June 8, 2016 legalizing the use
`of medicinal marijuana.
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 8 of 15
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`

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`In addition to the District of Columbia and the above listed 25 states, 17 states,
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`Alabama, Florida, Georgia, Iowa, Kentucky, Louisiana, Mississippi, Missouri, North Carolina,
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`Oklahoma, South Carolina, Tennessee, Texas, Utah, Virginia, Wisconsin and Wyoming, have
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`legalized or otherwise allow the use of cannabis products, typically oils or compounds, for use in
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`alleviating symptoms of specific conditions or disorders including among others seizure disorders,
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`end stage cancer, ALS, MS, Crohn's disease, mitochondrial disease, Parkinson's disease, Sickle Cell
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`disease, fibroymyalgia, Lennox-Gastaut Syndrome and Dravet Syndrome.
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`Additionally, four states, Alaska, Colorado, Oregon, Washington and the District of
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`Columbia have legalized or otherwise allow the use of marijuana for any personal use.
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`The use of marijuana including various cannabis based compounds and derivatives, and
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`therefore by rational extension, the use of equipment intended or designed for use in processing
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`marijuana, such as the agricultural goods defined in the present application, has been deemed lawful
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`to some extent in a total of forty-two states and the District of Columbia.
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`
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`In addition, but of no less significance, the “lawfulness” of the various “frameworks”
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`adopted by the noted sovereign states to regulate the sale and use of marijuana and “marijuana
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`accessories” has been recognized by the U.S. Attorney General and the Department of Justice in a
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`memo dated August 29, 2013, commonly referred to as the DAG Memo 8-29-13, supra. So long as a
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`state or local government’s adopted legal framework addresses the eight primary enforcement
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`objectives of the federal government, then such regulation is deemed acceptable to the federal law
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`enforcement chiefs and “should remain the primary means of addressing marijuana related activity.”
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`DAG Memo, supra, (emphasis added).
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`
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 9 of 15
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`

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`
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`Applicant respectfully submits that use of the applied-for mark in connection with the sale of
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`the described goods is a “lawful use” and as such use is in fact lawful under the laws forty-two states
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`and the District of Columbia.
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`
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`Alternately, because the prohibitions of § 863 do not apply to the sale of “marijuana
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`accessories” when the sale or use is authorized by local or State law, it only stands that the sale of
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`goods by the Applicant is exempt and therefore a “lawful use.”
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`Applicant’s use either as, a) deemed legal by various sovereign states, and/or b) as exempted
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`under Subchapter I, Part D, § 863, paragraph (f) of the CSA, as authorized by state law, should be
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`recognized as “lawful use in commerce” and satisfactory for the purpose of satisfying the “lawful
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`use” condition precedent to trademark registration. Applicant respectfully submits that the Board
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`reverse the refusal to register under Sections 1 and 45, 15 U.S.C. §§1051 and 1127.
`
`The Application of the “Lawful Use” Condition to Registration is a Rule Not Evenly
`4.
`Applied in Violation of the Guarantee of Fair Procedure Under the Fifth Amendment.
`
`Applicant’s search of the world-wide-web for products that contain the active ingredient of
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`
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`marijuana, THC, located at least three products that claim a federally registered trademark:
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`1.
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`Cesamet®, for a synthetic cannabinoid similar to the active ingredient found in
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`naturally occurring Cannabis sativa L. [Marijuana; delta-9-tetrahydrocannabinol (delta-9-
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`THC)]. See U.S. Trademark Registrations 3,177,756 and 3,325,766 and
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`http://www.rxlist.com/cesamet-drug.htm.
`
`2.
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`Sativex® for a cannabinoid medicine for treatment of spasticity due to multiple
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`sclerosis. See U.S. Trademark Registration 4,281,416 and http://www.gwpharm.com/
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`mechanism-action.aspx; and
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`3.
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`Marinol®, for a class of medications called cannabinoids. The active ingredient of
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`MARINOL Capsules is man-made dronabinol also chemically known as
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`
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 10 of 15
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`

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`tetrahydrocannabinol, or THC. THC is also a naturally occurring component of marijuana.
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`See U.S. Trademark Registration 4,097,562 and http://www.marinol.com/patient/about-
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`marinol and.
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`Applicant argues that the requirement of establishing “lawful use” as a condition precedent
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`to registration is a rule that is not evenly applied as pharmaceutical companies have been allowed to
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`lead the “rush to market.” Applicant is likewise concerned that the promise of fair procedure
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`guaranteed under the Fifth Amendment has been overlooked in what appears to be a two tiered
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`system of granting trademark registrations. "The very nature of due process negates any concept of
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`inflexible procedures universally applicable to every imaginable situation." Cafeteria & Restaurant
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`Workers Union v. McElroy, 367 U.S. 886, 894-95 (1961).
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`Marijuana has been deemed a Schedule I controlled substance under Subchapter I, Part B, §
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`812, paragraph (b) of the CSA Act which provides in part:
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`(b) . . . a drug or other substance may not be placed in any schedule unless the findings
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`required for such schedule are made with respect to such drug or other substance. The
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`findings required for each of the schedules are as follows:
`
`
`
`(1)
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`Schedule I.
`
`(A)
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`The drug or other substance has a high potential for abuse.
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`(B)
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`The drug or other substance has no currently accepted medical use in
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`treatment in the United States.
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`(C)
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`There is a lack of accepted safety for use of the drug or other
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`substance under medical supervision.
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`Controlled Substances Act, Subchapter I, Part B, § 812, paragraph (b).
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`
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 11 of 15
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`

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`By allowing select class of applicants, in this case pharmaceutical companies, to register
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`trademarks for products that contain the active ingredient of marijuana, THC, the Trademark Office
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`has selectively overlooked the guidelines of the Controlled Substance Act which it now seeks to
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`arbitrarily hold is a basis for the refusal of Applicant’s attempt to register its trademark.
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`In addition, and in so granting the above referenced trademark registrations, it seems clear
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`that the Trademark Office has admitted that marijuana and its active ingredients including THC do in
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`fact have currently accepted medical uses in treatment in the United States, thereby effectively
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`undermining and negating the rationale for classification of marijuana and its active ingredients
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`including THC as Schedule I controlled substances.
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`In any event Applicant argues that the arbitrary classification of the use by some applicants
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`of substances listed in Schedule I as presumably a “lawful use in commerce” while establishing that
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`the use of the Ultra Trimmer trademark by Applicant in connection with the sale of a device for
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`trimming plants is not a “lawful use in commerce” smacks of a breach of the promise of fair
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`procedure guaranteed under the Fifth Amendment.
`
`Applicant respectfully submits that the application for registration of the mark Ultra Trimmer
`
`should be allowed as all statutory requirements for registration of the applied-for trademark have
`
`been met including verification by the applicant that “the mark is in use in commerce.” Applicant
`
`respectfully submits that the Board reverse the refusal to register under Sections 1 and 45, 15 U.S.C.
`
`§§1051 and 1127.
`
`5.
`
`Summary and Conclusions.
`
`
`
`The Examining Attorney failed to “presume that a legislature says in a statute what it
`
`means,” and disregarded the plain meaning of the Trademark Act to support a refusal that is
`
`“inconsistent with the law.” As noted Section 1 of the Trademark Act requires that an application for
`
`
`
`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 12 of 15
`
`

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`use of a trademark shall be verified by the applicant and specify that “the mark is in use in
`
`commerce.” 15 U.S.C. § 1051(a)(3)(C). A plainer statement would be difficult to forge. Similarly
`
`Section 45 of the Trademark Act defines the word “commerce” as “all commerce which may
`
`lawfully be regulated by Congress.” 15 U.S. Code § 1127. In presuming “that a legislature says in a
`
`statute what it means” one must surmise that the legislature meant that “commerce” is “all
`
`commerce which may lawfully be regulated by Congress.”
`
`Applicant respectfully submits that the application for registration of the mark Ultra Trimmer
`
`should be allowed as all statutory requirements for registration of the applied-for trademark have
`
`been met including verification by the applicant that “the mark is in use in commerce.”
`
`Applicant respectfully submits that use of the applied-for mark in connection with the sale of
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`the described goods is a “lawful use.” The use of marijuana, various cannabis based compounds and
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`derivatives, as well as the use of “marijuana accessories” has been deemed lawful for a variety of
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`uses and conditions in no fewer that 40 states and the District of Columbia. There is no
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`proclamation, based on statute or case law that the use of a mark in commerce must not be
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`considered “unlawful” according to any existing law, only that the use be a “lawful use” subject to
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`regulation by Congress.
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`In the alternative, Applicant submits that the use of the applied-for mark in connection with
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`the sale of the described goods is a “lawful use” under Controlled Substances Act, 21 USC 13,
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`Subchapter I - Part D, § 863 (f) which provides that the prohibitions of § 863 shall not apply to “(1)
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`any person authorized by local, State, or Federal law to manufacture, possess, or distribute such
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`items; . . .” Inasmuch as such use is exempt from the prohibitions set forth at Subchapter I - Part D,
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`§ 863 paragraph (a), such use should be deemed “lawful use” for the purpose of satisfying the
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`requirement of use in commerce.
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 13 of 15
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`

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` Finally, Applicant argues that the requirement of establishing “lawful use” as a condition
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`precedent to registration is a rule that is not evenly applied as it appears pharmaceutical companies
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`have been allowed to lead the “rush to market” with their granted trademark applications and
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`resulting registrations. Applicant is likewise concerned that the promise of fair procedure guaranteed
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`under the Fifth Amendment has been overlooked in what appears to be a two tiered system of
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`granting trademark registrations.
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`For the foregoing reasons, applicant respectfully submits that the refusal to register the
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`Applicant’s trademark should be withdrawn as present application has met all statutory
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`requirements. Applicant respectfully submits that the Board reverse the refusal to register under
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`Sections 1 and 45, 15 U.S.C. §§1051 and 1127.
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`DATED This 17th day of June, 2016.
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`
`
`
`
` /Joseph W. Holland/
`Joseph W. Holland
`Attorney for Applicant
`(208) 336-1234
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`
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`
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 14 of 15
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`

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`Listing of Cited Cases
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`Cafeteria & Restaurant Workers Union v. McElroy, 367 U.S. 886, 894-95 (1961).
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`Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB 1982).
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`Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253-54 (1992).
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`CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 630, 81 USPQ2d 1592 (9th Cir. 2007).
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`Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987).
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`In re Stellar Int’l, Inc., 159 USPQ 48 (TTAB 1968).
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`Lucent Technologies, Inc. v. Microsoft Corp., 544 F.Supp.2d 1080, 1102 (D.S.D. Cal. 2008). Marvel
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`Characters, Inc. v. Simon, 310 F.3d 280 (2nd Cir. 2002).
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`Novak v. Kasaks, 216 F.3d 300, 310 (2nd Cir. 2000).
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`
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`Listing of Cited Acts, Statutes, Rules and State and Federal Constitutional Amendments
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`37 CFR 2.69.
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`Colorado Constitution, Article XVIII, Section 16 - Personal Use and Regulation of Marijuana.
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`Title 21 U.S.C. - Controlled Substances Act, Subchapter I, Part B, § 812, paragraph (b).
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`Title 21 U.S.C. - Controlled Substance Act - Subchapter I - Part D, § 863, paragraph (a).
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`Title 21 U.S.C. - Controlled Substance Act - Subchapter I - Part D, § 863, paragraph (d).
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`Title 21 U.S.C. - Controlled Substance Act - Subchapter I - Part D, § 863, paragraph (f).
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`TMEP §907.
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`Trademark Act §1, 15 U.S.C. §1051.
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`Trademark Act §45, 15 U.S.C. §1127.
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`Trademark Act §41, 15 U.S.C. §1123.
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`U.S. Constitution, Fifth Amendment.
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`
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`Listing of Miscellaneous Cited Authority
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`DAG Memo 8-29-13.
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`Application Serial No.: 86479070
`Applicant’s Appeal Brief
`Page 15 of 15