What is a suspended trademark application?
Certain circumstances may require that the examination of a trademark application be put on hold. A suspended trademark application is one where the trademark examiner (examining attorney) has issued a suspension notice. The notice of suspension will typically identify the reason for the suspension and the particular event that will cause examination to resume. In most cases, the USPTO is waiting for the outcome of another matter or filing that will bear directly on your trademark application.
Why does the USPTO suspend trademark applications?
The USPTO may also suspend the trademark application under the following circumstances.
- the applicant is involved in a trademark dispute (“inter partes”) with a conflicting trademark filing;
- the applicant is based on a foreign application for the same trademark and you are waiting for the foreign registration certificate;
- someone else applied for a similar mark before your filing date (i.e., “prior-filed application:).
How can you avoid or minimize the risk of a suspended trademark application?
Trademark applications filed with the USPTO are processed in the order they are received. This means that USPTO goes by the filing date of each application, and not by 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 earlier-filed application would be examined first even if you claim an earlier first use date. This is why it’s critical to file your trademark application as soon as possible. Being a few days late can lead to years of delay as you await the outcome of a prior-filed application.
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:
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.
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.