Suspended trademark application: What should you do?

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:

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.

Want to avoid a suspended trademark application?

Contact US patent and trademark attorney Vic Lin by email at vlin@icaplaw.com or call (949) 223-9623 to see how we can promptly file your trademark application and beat others to the USPTO.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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