The Trademark Suspension Situation
Our Company has been using our Trademark for Years. Our General Counsel filed an In-Use Federal Trademark Application. We just received a Suspension Notice from the Trademark Examiner.
- During the Application phase, regardless of your Company’s alleged prior use, the Examiner can suspend your Company’s Trademark Application
- With regard to Trademark Applications filed in the USPTO, until the subsequent Applicant proves otherwise, the first Applicant to file has superior procedural rights, and potentially, superior substantive rights
- When a Trademark Application is suspended, the Examiner takes no further action on the suspended Application until proof of certain evidentiary conditions cause the Examiner to resume examination of the suspended Application
- In some situations, multiple Applicants’ Applications can be suspended for a period of years
Receiving a Trademark Suspension Notice
A United States Patent and Trademark Office (USPTO) Suspension Notice of a pending Trademark Application looks something like the following:
No Response Required
Issue date: December 15, 2020
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
USPTO database searched; prior-filed potentially conflicting pending application(s) found. The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02. However, a mark(s) in a prior-filed pending application(s) may bar registration of applicant’s mark.
The pending application(s) below has an earlier filing date or effective filing date than applicant’s application. If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application(s) below is provided in this letter.
– U.S. Application Serial No(s). ????????
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
What can our Company do to Advance our Application?
- Accumulate evidence about the Applications involved with the suspension
- Seek competent intellectual property counsel
- Determine best options for success in advancing the Company’s Application toward a Federal Registration
- In the United States, before the USPTO grants a Registration, the Applicant must provide evidence of either interstate or international use of the Mark
- Trademark Suspension Notices can create a convoluted path to federal Registration
Need More Help?
Business Patent Law, PLLC represents and has represented clients owning suspended Trademark Applications before the USPTO. If you need legal assistance in preparing and prosecuting and Patent and Trademark Applications, please contact Business Patent Law, PLLC.
Business Patent Law, PLLC provides intellectual property and business counsel for businesses, companies and individuals.
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