What is a prior-filed application?
A prior-filed application is a trademark application with an earlier filing date than yours. If the USPTO trademark examining attorney sees a potential likelihood of confusion between your mark and that of the earlier-filed application, the examining attorney will note the prior-pending application in an Office Action [see TMEP 716.02(c)].
If other issues are raised by the examining attorney, you will receive a trademark Office Action that identifies the earlier-filed application as well as the outstanding issues requiring a response. While you must address the other issues raised in the Office Action by the non-extendable 6-month deadline, any arguments regarding the prior-filed application are optional. You can simply choose to refrain from any remarks regarding the prior-pending application and wait to see the final outcome of that application.
What is a notice of suspension?
If there are no other issues with your trademark application, you may simply receive a Notice of Suspension stating that your application is suspended pending final disposition of the earlier-filed application. This means examination of your application will be put on hold until the final result of the other application is determined (e.g., registration or abandonment).
While a suspension notice does not mean that your trademark application is being rejected, it does give you a heads up on what the examining attorney is thinking. The examining attorney is waiting to see the final outcome of the prior-filed application before deciding on whether to reject your mark on the basis of a likelihood of confusion.
Should you argue against the prior-filed application now or later?
We generally recommend deferring any arguments against an earlier-filed application for at least two reasons:
- Costs: By avoiding arguments now, you preserve cash flow and live to fight another day.
- Efficiency: The final disposition, or outcome, of the third party application will help guide your arguments. At best, the earlier-filed application may be ultimately abandoned, in which case you will not need to submit arguments. Should the prior-filed application mature into a registration, it may still help to see what goods or services remain in the registration which may create more options in your arguments.
- Risk of admissions: By arguing that there is no likelihood of confusion between your mark and the prior-filed mark, you will lock yourself into a position that could subsequently hinder your chances of success in opposing or canceling the earlier-filed mark. For example, suppose the examining attorney disagrees with your arguments of no likelihood of confusion and maintains the suspension and the prior-filed application is allowed. You must now oppose the other application or, if it’s too late, petition to cancel the registration. However, you have left a written record arguing that there was no likelihood of confusion between your mark and theirs.
What if you have trademark priority?
You will want to check the alleged dates of first use identified in the prior-filed application as well as any priority claims to an even earlier foreign application. Then compare those dates to your date of first use of the mark in commerce or any earlier usage that would be considered analogous to trademark use [see TBMP 309.03(c)(2); Dexas International, Ltd. v. Ideavillage Products Corp.]. The goal is to see if you have trademark priority.
If so, then plan ahead to file an opposition if and when the third party application is published. You will need to be diligent in monitoring the status of the other application, or engage a firm or trademark watch service to do it for you. If the publication period has already passed, you will still have the option to file a cancellation.
How long can a suspension take?
A suspension could take a few months or possibly a couple of years. Where an outstanding Office Action has been issued in the other case, suspension of your application may be shorter if the third party fails to respond to the action. If the prior-pending application was based on an Intent-To-Use and the applicant has filed extensions of time to file a Statement of Use, then it could take years before that application reaches a final outcome.
What if the earlier-filed application is abandoned or significantly narrowed?
If the prior-filed application is ultimately abandoned, you save yourself the expense of having to file any arguments against likelihood of confusion. The USPTO is supposed to regularly check the status of the other trademark cases causing the suspension, but you would do yourself a favor by requesting that your application be resumed due to the abandonment of the earlier-filed mark.
It is possible that the prior-filed mark may have been approved, but with significant reductions in the goods or services identified therein. The subsequent deletion of any products from the earlier-filed application may open the door for you to submit arguments that could carry more weight. A strategic decision to remove certain goods or services from your application should be considered in conjunction with your arguments.