To:
`Subject:
`Sent:
`Sent As:
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`Somya Kaushik(skaushik@chenowethlaw.com)
`U.S. Trademark Application Serial No. 97028870 - ADORN SUPPLY CO.
`January 23, 2023 07:07:07 AM EST
`tmng.notices@uspto.gov
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`Attachments
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`U.S. Application Serial No.  97028870
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`Mark:   ADORN SUPPLY CO.
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`Correspondence Address:  
`Somya Kaushik
`CHENOWETH LAW GROUP, PC
`510 SW FIFTH AVENUE, FOURTH FLOOR
`PORTLAND OR 97204 UNITED STATES
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`Applicant:   Sims, Allison
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`Reference/Docket No.  N/A
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`Correspondence Email Address:   skaushik@chenowethlaw.com
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`SUSPENSION NOTICE
`No Response Required
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`Issue date:   January 23, 2023
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`Pursuant to TMEP §716.01, applicant is advised of the following status of the application.  
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`In an Office Action issued on June 25, 2022, the following issues were outstanding with this
`application:
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`Section 2(d) - Likelihood of Confusion Refusal
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`Disclaimer Required
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`Amended Mark Description
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`On December 23, 2022, applicant responded to the Office Action.  In the Response, applicant:
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`Provided arguments against the Section 2(d) Refusal;
`Amended the identification; 
`Disclaimed SUPPLY CO; and
`Amended the mark description.
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`The trademark examining attorney has thoroughly reviewed applicant’s response and has
`determined the following:
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`1.
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`2.
`3.
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`Registration No. 4937571 has cancelled and no longer presents a bar to registration. The Section
`2(d) Refusal with respect to Registration No. 6610605 is withdrawn. Registration maintenance
`documents are or were due to be filed for Registration No. 5054467 and action on this
`application is suspended to await disposition of Registration No. 5054467.
`Applicant satisfied the disclaimer requirement; 
`Applicant satisfied the mark drawing requirement.
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`Preliminary Response to Applicant’s Arguments
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`Applicant asserts that, when considered as a whole, the marks contain additional terms that distinguish
`them from each other. Applicant further asserts that the services are significantly different. 
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`While marks must be compared in their entireties,  a trademark examining attorney may weigh the
`individual components of a mark to determine its overall commercial impression.  In this case, ADORN
`is the dominant wording in the applied-for mark and the registered mark. The additional wording is
`merely descriptive of applicant's and registrant's services, and therefore, is less significant in terms of
`affecting the commercial impression of the marks. Additionally, the services are related. In particular,
`wedding planners and event decorators often print 3D decorations for use at the event. Lastly, the fact
`that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that
`they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.
`Accordingly, applicant’s arguments are unpersuasive to overcome the refusal and the Section 2(d)
`Refusal is maintained and continued.
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`APPLICATION IS SUSPENDED
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`The application is suspended for the reason specified below.   See 37 C.F.R. §2.67; TMEP §§716 et
`seq.  
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`Application suspended until disposition of cited registration(s).  Registration maintenance
`documents are or were due to be filed for the registration cited against applicant in a refusal based on
`Trademark Act Section 2(d).  15 U.S.C. §1052(d).  If the maintenance documents are not timely filed
`and accepted by the USPTO, the cited registration will cancel and/or expire and will no longer bar
`registration of applicant's mark under Section 2(d).   See 15 U.S.C. §§1058, 1059, 1141k.  Action on this
`application is suspended for six months to await disposition of the cited registration; after which, the
`trademark examining attorney will determine whether to maintain or withdraw the Section 2(d) 
`refusal.   See 37 C.F.R. §2.67; TMEP §716.02(e).  
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`Suspension process.  The USPTO will periodically check this application to determine if it should
`remain suspended.   See TMEP §716.04.  As needed, the trademark examining attorney will issue a
`letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05.  
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`No response required.  Applicant may file a response, but is not required to do so.  
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`
`/Danielle Anderson/
`Danielle Anderson
`Trademark Examining Attorney
`Law Office 113
`(571) 272-6143
`Danielle.Anderson@uspto.gov
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`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on January 23, 2023 for
`U.S. Trademark Application Serial No.  97028870
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office
`action.  You may be required to respond to this Office action.  Follow the steps below.
`
`(1) Read the Office action.  This email is NOT the Office action.
`
`(2) Respond to the Office action, if a response is required. Respond by deadline using the
`Trademark Electronic Application System (TEAS). Your response must be received by the
`USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.
`Otherwise, your application will be abandoned. See the Office action itself regarding how to
`respond.
`
`(3) Direct general questions about using USPTO electronic forms, the USPTO website, the
`application process, the status of your application, and whether there are outstanding deadlines
`to the Trademark Assistance Center (TAC).
`
`After reading the Office action, address any question(s) regarding the specific content to the
`USPTO examining attorney identified in the Office action.
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`GENERAL GUIDANCE
`Check the status of your application periodically in the Trademark Status &
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`Document Retrieval (TSDR) database to avoid missing critical deadlines.
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`Update your correspondence email addressto ensure you receive important USPTO
`notices about your application.
`
`Beware of trademark-related scams. Protect yourself from people and companies that
`may try to take financial advantage of you. Private companies may call you and pretend
`to be the USPTO or may send you communications that resemble official USPTO
`documents to trick you. We will never request your credit card number or social security
`number over the phone. Verify the correspondence originated from us by using your
`Serial Number in our database, TSDR, to confirm that it appears under the “Documents”
`tab, or contact the Trademark Assistance Center.
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`Hiring a U.S.-licensed attorney. If you do not have an attorney and are not required to
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`have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney
`specializing in trademark law to help guide you through the registration process. The
`USPTO examining attorney is not your attorney and cannot give you legal advice, but
`rather works for and represents the USPTO in trademark matters.
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`