Suspension Letter

Application suspended until disposition of cited registration. 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).

Refusals resolved and maintained and continued. The following refusal and is withdrawn:

• Section 2(d) likelihood of confusion with U.S. Application Serial No. 87757321 (“WINTER WONDERLAND”)

See TMEP §713.02.

The following refusal is maintained and continued:

• Section 2(d) likelihood of confusion with the mark in U.S. Registration No. 4312614

See id. This refusal will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.

Applicant argues that the marks are not similar as Applicant’s mark is a “[…] fanciful mark that gives no indication of the nature or type of goods covered by Applicant’s trademark” whereas “[…] the Registrant’s Mark, ONEDER-FLOOR is primarily descriptive of the goods it covers […]”. See, July 22, 2019 Response p1.

However, both marks begin with and contain the identical word, “ONEDER”, in connection with types of floor coverings, thereby resulting in an impression of an association between the marks.

Further, the registered mark has not be determined to be descriptive and maintains a registration on the principal register. Therefore, while the term “FLOOR” may indicate Registrant’s goods, the registered mark is not “primarily descriptive”. A trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods. See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

Additionally, the word “FLOOR” does not obviate the similarity between the marks as Applicant is offering types of flooring products, such as “FLOOR” mats, door mats and carpets, thereby the use of the identical term, “ONEDER”, in connection with types of flooring goods results in the impression of an association between the marks.

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.

No response required. Applicant may file a response, but is not required to do so.

/Jennifer O'Brien/

Examining Attorney

Law Office 120

(571)272-4579

Jennifer.O'Brien@uspto.gov