Because there aren’t enough variables in the trademark application process, I want to discuss an important aspect many people don’t know about. This blog post focuses on when and why you might have your trademark application suspended at the USPTO. Let’s start by discussing what “suspension” means exactly.
What Does It Mean to Have Your Trademark Application Suspended?
After filing your trademark application, the first step of the application process is that your application will be reviewed by an Examining Attorney. These attorneys look for issues/problems with your application. Hopefully they will approve your application straightaway. However, they may suspend your application or bring up an issue where it benefits you to request that your application be suspended.
Suspension essentially means that your application is temporarily stuck. It will not move forward in the application process. However, there are no pending deadlines like if you had to respond to an office action. Once suspended, your application will not be able to move forward until it is removed from suspension. To better understand how this plays out, let’s take a look at the most common reasons one might have an application suspended.
When/Why Do Applications Go Into Suspension?
In general, an application is suspended when there is some other issue that must be resolved before it can be decided what should happen with the application. Although there are additional reasons, most of the time we are looking at one of the following situations:
- Prior Pending Application – The USPTO operates on a first-to-file basis. That means that if two applications for similar trademarks are filed, the USPTO will only allow the one filed first to move forward. However, a pending application for a similar mark isn’t used as a basis for rejection. Only a trademark that has gone through the application process and become a registration can be used to reject an application. So when an application is filed and there is an application for a similar trademark in front of it, it can be suspended. If the first application goes abandoned, then the suspended application can move forward. If the first application registers though, it may be formally cited as a basis for rejecting the suspended application. This can be a waiting game, but if you suspend you may still end up getting your registration. Without suspension, you either have to argue against the potential rejection, or your application will go abandoned if you do not respond to the office action.
- Registration in Grace Period – If your trademark is rejected for being too similar to a trademark that is already registered, you may still be able to have your application suspended in some cases. Trademark registrations have to be renewed on a regular basis, or they go abandoned. If a registration is cited against you but was not renewed on time, you can request suspension to see if it gets renewed in its “grace period.” If not, the registration will be cancelled, and no longer will stand in the way of your application.
- Cancellation Proceeding – Sometimes when an applicant receives a rejection based on an existing registration, they may seek to have that registration cancelled. When that happens, they will also want their pending application suspended, as it allows them to await the outcome of the cancellation proceeding. If the cancellation is successful and the registration cancelled, they can remove their application from suspension and it can proceed.
Suspensions can be used strategically to try and give your application the best timing for the possibility of registration. And while suspension is often available, it is not something that Examining Attorneys usually do unless prompted by the applicant. This is where having an experienced attorney on your side can really help.
Could Your Pending Trademark Application Be Helped By Suspension?
An application can be suspended for years at a time. While waiting may not be the most exciting option, it may be the best chance you have of getting your registration. If you would like for me to review your application to see whether this is a potential option, please feel free to call me at (480) 360-3499, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.