What is the difference between a suspension and an extension of trademark opposition deadlines?
Each trademark opposition will have deadlines set by the TTAB. When a party believes that an extension or suspension may be warranted given certain circumstances, a party may file a motion to extend or motion to suspend. If the nonmoving party consents to such a motion, then a consented motion may be filed which typically will be promptly granted by the Board.
An extension pushes back deadlines, but does not necessarily put the case on hold. The parties may still be actively pursuing the trademark opposition even with a pending motion to extend.
A suspension not only pushes back deadlines, but also puts the case on hold. There is typically a contingent event that will trigger the resumption of a suspended trademark opposition, such as the outcome of another relevant case or the conclusion of settlement negotiations.
How long are the time periods for a motion to extend?
The time periods for a consented motion to extend are 30 days, 60 days or 90 days. Grounds that may support a request for extension include settlement discussions or the need for more time to complete discovery or testimony during an assigned period.
What is a motion to suspend trademark opposition deadlines?
A motion to suspend has similar effects as a motion to extend. One difference is that a suspension technically means that the trademark opposition proceeding is on hold pending a certain matter, such as settlement negotiations or awaiting the outcome of another civil proceeding which would have ramifications on the trademark opposition. For example, the parties generally would not be engaging in discovery during a suspension, whereas they might do so if the TTAB proceeding were merely extended.
The timeframes for a consented motion to suspend are 30 days, 60 days, 90 days or 180 days. So one big difference in a motion to suspend is the much longer 180-day option that does not exist for an extension request.
How to save money by effectively using extensions and suspension
It generally makes sense to explore settlement earlier in the earlier stages of a trademark opposition proceeding. If the other side is willing to offer what you care about most, or is at least willing to compromise, then extending or suspending the trademark opposition deadlines will give both parties some time to resolve the dispute in an amicable manner. Pushing back the deadlines will offer both sides some breathing room and potential cost savings by avoiding the work that would otherwise be required to meet the near-term due dates.
As implied in the name, a “consent” motion means that the nonmoving party has agreed to what the moving party is requesting. So a consent motion is available only when both sides are on the same page with respect to a desired extension or suspension of deadlines.
Make sure to track new deadlines set by the TTAB
Whether an extension or suspension is granted, it is important to calendar the new deadlines set by the TTAB. If you are negotiating a settlement that has not yet been reached by the time the next reset deadline approaches, you may want to file another motion to push back the deadlines once again.