Suspensions in Trademark Applications

Introduction

Imagine that you are starting a new brand. You decide to name it DINOSAUR SHIRTS because you love dinosaurs. You decide to file applications with the USPTO for your name and corresponding logo. You hire a trademark attorney to help you through the process. Your attorney gives you a helpful overview such as the one described in this short video. Your attorney warns you of one or more prior applications/registrations that could come up in the application process. You move forward with the applications and later receive office actions. Among other things, the office actions cite at least one of the prior pending applications. Each office action gives you an opportunity to submit evidence and/or arguments why there is no likelihood of confusion between your mark and the prior pending application. Alternatively, you are allowed to wait while the USPTO addresses the prior pending application. You take the second option and your application is suspended.

Suspensions arise in several scenarios with trademark applications filed at the USPTO. This blog post describes two common scenarios: prior pending applications; and pending cancellation proceedings.

Situation 1: Prior Pending Application(s)

The first situation identified above is where the examining attorney identifies one or more prior pending applications. Consider two illustrations. In the first illustration, you filed an application for DINOSAUR SHIRTS and a trademark examining attorney (i.e., examiner) issues an office action, which includes, in relevant part, a section entitled “Advisory – Prior Pending Application.” The examiner says that a pending application for the mark DINOSAUR SOCKS (also used to identify several clothing items in Class 25) was filed before yours. You are given the option to present arguments and evidence why you do not believe there is a likelihood of confusion. Alternatively, you can wait for the prior application to be resolved and your application will be suspended in the meantime. The application for DINOSAUR SOCKS might not register (e.g., failing to respond to an office action; failing to satisfy one or more issues in an office action; failing to submit a statement of use if the application was filed on an intent-to-use basis; etc.). If the application for DINOSAUR SOCKS does not register, your application will move up in line and advance to publication (assuming there are no other issues).

Consider a second illustration. You filed an application for DINOSAUR SHIRTS and an examiner issues an office action, which includes in relevant part, a refusal under Section 2(d) for likelihood of confusion with a prior registration and a section entitled “Advisory – Prior Pending Application.” The refusal is based on a prior registration for the mark DINO SOCKS. The advisory is based on multiple prior pending applications for the marks DINOSAUR SOCKS, DINOSAUR, and DINOSAUR #3. As with the illustration above, you can choose whether to argue over the advisory (albeit, in this illustration, there are three prior pending applications) or allow the application to suspend while the prior pending applications get sorted out. However, you are required to respond to the refusal based on the DINO SOCKS registration. If the examiner is not persuaded by your response to that refusal, your application will be suspended.

In this second illustration, your application could be suspended for several years based on the prior pending applications. Assuming that the examiners in each of those three prior pending applications cited the DINO SOCKS registration along with the relative prior pending applications, if any, against the relevant application (e.g., the registration was cited against the application for DINOSAUR SOCKS; the registration and the DINOSAUR SOCKS application were cited against the DINOSAUR application; and the registration and the DINOSAUR SOCKS and DINOSAUR applications were cited against the application for DINOSAUR #3), they will be reviewed one at a time (starting with the earliest filed application) which could involve multiple office actions and arguments—and even ex parte appeals. Additionally, and assuming one or more of the applications are allowed but were filed on an intent-to-use (ITU) basis, it could take up to three years for each ITU applicant(s) to submit a statement of use.

Your specific situation and branding strategy will dictate whether you submit arguments early versus wait on the suspension (among other options).

Situation 2: Pending TTAB Proceeding(s)

Suspensions are also common when you become involved in a TTAB proceeding during the pendency of your application. Assume that you filed an application for DINOSAUR SOCKS and the examiner refuses your application under Section 2(d) for likelihood of confusion with the prior registration for DINO SOCKS. After receiving the office action, you or your attorney investigate. You do not find any evidence of the registrant using DINO SOCKS on the web. It seems the registrant stopped (i.e., abandoned) use of that mark. You discuss your options with your trademark attorney and you decide to file a petition for cancellation. In particular, you want to cancel the DINO SOCKS registration based on abandonment. It will probably take you and your attorney more time to work through the cancellation process than the time you have to respond to the office action. Have no fear: you can notify the examiner that a cancellation proceeding is pending with the USPTO for the DINO SOCKS registration and request a suspension until that the cancellation proceeding is completed.

Conclusion

Few trademark applicants, if any, file applications wanting their applications to suspend. Rather, they want their applications to register. However, suspensions are an important component of the trademark application process. Knowing when to expect suspensions and how to factor them into your strategy is important.

If you would like to file a trademark application or discuss a suspension with an experienced trademark attorney, please click here.