Why does the USPTO suspend trademark applications?

Trademark applications filed with the USPTO are processed in the order they were filed, and not according to the dates of first use alleged in the applications. If an application for a similar trademark was filed prior to your trademark application, your application may be suspended pending the outcome of the prior-filed application.

The USPTO may also suspend the trademark application when its owner is involved in a trademark dispute (“inter partes”) with a conflicting trademark filing.

What are the possible outcomes of the prior-pending application?

Checking the status of the prior-pending application should be your first task in determining how your application may turn out. Here are likely results of the prior-pending application:

a) Registration

The prior pending application may mature into a registration, which will likely result in a rejection of your mark based on the likelihood of confusion.

b) Abandonment

If the prior-filed application is ultimately abandoned, then it will no longer be an obstacle to the registration of your mark. The examining attorney may resume examination of your application, or you can file a request to remove suspension [see TMEP 716.03].

c) Prior-filed application is also suspended

It is also possible for the prior-filed application to be suspended pending the outcome of an even earlier-filed application. If that’s the case, then you may need to wait it out to see where the dust settles for these prior-pending applications.

Can suspension be avoided or argued against?

It is possible file arguments against a potential suspension. For example, if the basis for suspension is the likelihood of confusion with a prior-pending application, the applicant may submit arguments as to why there is no likelihood of confusion.

Another option is to explore the possibility of a coexistence agreement with the owner of the prior-filed application.

Suspension pending submission of foreign registration

If your US application included a priority claim to an earlier foreign application, then the USPTO may suspend your US application pending receipt of a copy of your foreign registration.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com
Vic Lin

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