Trademark Suspended - what can I do about it?

Trademark Suspended - what can I do about it?

  • 05 April, 2024
  • Nyall Engfield

What is a Trademark Suspension?

In the context of trademarks, suspension refers to the temporary halting or pausing of the examination process for a trademark application by the relevant trademark office.

Your mark is not invalidated during suspension, rather the examination and procedure is temporarily on-hold. Once the suspension is removed, you will have a chance to address the issues.

Reasons for Suspension

Trademark applications can be suspended for various reasons:

  1. Office Action Suspension If the trademark examiner issues an office action raising objections or refusals to register the mark based on a similar mark that has not yet registered, or a registration that is awaiting renewal under Section 8, the application is typically suspended for a period to allow the Prior pending to register or abandon, or the Registration to be renewed or abandoned.
  2. Conflicts with Prior Applications: If there's a potentially conflicting trademark application filed before yours, the USPTO might suspend your application to see how the earlier application proceeds. If the prior application is registered or abandoned, it will affect the outcome of your suspension.
  3. Similarity with Registered Marks: If there's a likelihood of confusion with a registered mark, especially if that registration is within its grace period for renewal, your application might be suspended to await the outcome of the renewal process. To be suspended the registration must be close to the grace period.
  4. Opposition Suspension If a third party opposes the registration of the applied-for trademark, the application is suspended pending the outcome of the opposition proceeding.
  5. Inter Partes Proceedings If there are other concurrent proceedings involving the same or confusingly similar marks, like an opposition or cancellation proceeding, the application may be suspended until those are resolved.
  6. Request for Suspension An applicant can voluntarily request a suspension of their trademark application for various reasons, such as to allow time to secure consent from another mark owner, to develop evidence of use, or to put applications in the same condition for potential consolidation. This is often requested where another Prior pending application is similar, and may be cited as confusing, but at the same time may not register. The trademark application can be suspended to wait out the Prior pending mark's resolution.
  7. Foreign Registration: For applications based on foreign registrations, the USPTO may suspend the process until the foreign trademark is registered and a copy of the registration is submitted to the USPTO. This is because the registration is required for the registration basis of the goods/services.
  8. Court Action Suspension If there is litigation pending in a court that is relevant to the registrability of the applied-for mark, the trademark office may suspend action until the outcome of the court case, especially because the Court decision is superior in the hierarchy and provides insight to the Examiner. .

The main purpose of suspending an application is to temporarily remove it from the regular examination process until an outstanding issue is resolved. This avoids premature refusal and allows the applicant to address objections or awaits the resolution of a conflicting proceeding.

Suspensions provide flexibility in the trademark prosecution process and prevent premature abandonment when the applicant needs more time to put the application in condition for approval and registration.

How to Avoid Suspension

  • Conducting comprehensive searches before filing can identify potential conflicts with existing trademarks or applications.
  • Choosing a distinctive mark can reduce the likelihood of confusion and, consequently, suspension.
  • Basing the application on use in the US (1b intent-to-use or 1a in-use basis) rather than using international treaties, either Madrid 66a or 44e basis (foreign registration already issued). If you have a pending application in a long-duration prosecution country like Canada (48 months to registration in some cases) then the mark may be suspended for a while.
  • Consulting with a trademark attorney to respond to the suspension can provide valuable insights and strategies, potentially avoiding common pitfalls that lead to suspension.

Handling a Suspension

  • Response: Although not required, responding to a Letter of Suspension, especially if the circumstances that led to the suspension have changed, can help move the application forward. For instance, if the conflicting application has been resolved or the foreign registration has been obtained, notifying the USPTO can lift the suspension. Arguing against the cited application can avoid that mark and have the suspension removed.
  • Changing the Filing Basis: The filing basis for the goods/services may be changed to something more easily satisfied, like 1a in-use.
  • Strategic Waiting: Sometimes, the best action is strategic patience, especially if the suspension is due to a prior pending application or a registration in its grace period. Monitoring these situations closely can inform the best time to act. We can check the status of your application for free.
  • Resolving the lawsuit or Opposition/Cancellation: Settling the inter-partes proceeding or lawsuit can result in a lift of the suspension.

Impact on Timeline

Suspensions can significantly delay the trademark registration process, sometimes for a few months to several years, depending on the complexity and nature of the issue that led to the suspension.

Once a suspension is lifted, the application process resumes. Keeping a close eye on the developments that led to the suspension and maintaining communication with the USPTO can minimize these delays. Sometimes, suspended application fall between the cracks and an attorney can reach out to the USPTO to request a status update.

For detailed insights and assistance, it's advisable to consult directly with a trademark attorney who can guide you through the specific challenges of your case and help strategize the best path forward through suspension or to avoid it altogether​ 

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