Trademark applicants often want to know how long the process will take from filing to registration. They are sometimes quite surprised to learn that the application process can, itself, be suspended. Typically, suspensions last at least six months unless the applicant intervenes. Suspensions can also be renewed (or "continued" in the USPTO's terms) and may last years. Some suspensions are automatically issued by the USPTO examining attorney, and some will only be granted at the applicant’s request. Why would anyone request a suspension? Well, although some suspensions feel like purgatory for the applicant (for example, #1 below), other suspensions may be to the applicant's strategic advantage. While the USPTO has various reasons for suspending an application, here are three of the most common.
1. Conflicting Marks in Prior Pending Applications
Sometimes another applicant beats you in the race to the Register. If someone else files an application with the USPTO to register your mark or one confusingly similar to it before you file, their application is called a “prior pending” application. And even if they filed only a few MINUTES earlier, they may still block your path to registration. (I saw that exact thing happen several times in my years of reviewing applications.)
If there are no other problems with your application, it will be suspended immediately. If there are other problems with your application, it will be suspended only after those other problems either have been (a) resolved or (b) argued over by process of Office Action and Response such that the examining attorney is ready to issue a final refusal. Your application is suspended until the mark in the prior pending application either registers or abandons. This could delay processing for only a few months or for years. The more prior pending applications identified, the greater the likelihood of a longer wait.
If the prior pending application is abandoned, the issue is “obviated” – meaning this no longer prevents registration of your mark. But if their mark registers, your application will be refused under Section 2(d) due to likelihood of confusion with one or more registered mark(s).
2. Failure to Provide A Copy of A Foreign Registration
If you file under Section 44(d) with intent to perfect under Section 44(e) but do not include a copy of your foreign registration with the application, you may face suspension. If there are no other problems with your application, it will be suspended immediately. If there are other problems with your application, it will be suspended only after those other problems either have been (a) resolved or (b) argued over by process of Office Action and Response such that the examining attorney is ready to issue a final refusal. Your application is suspended until you submit a copy of the foreign registration.
Approximately once every six months, the USPTO examining attorney will contact you to ask whether the foreign registration has issued. EVEN IF the foreign registration has not issued, you MUST respond to this inquiry. If not, your application will be abandoned. I have seen this happen to applicants, and it is such as sad, easily-avoidable fate.
Generally, examining attorneys will not suspend Section 44(e) applications to allow the applicant time to get and submit a copy of the foreign registration. There are a few exceptions. For example, suspension might be granted if the foreign registration cannot be obtained because war or natural disaster has disrupted the functioning of the trademark office in the foreign country of registration.
3. Applicant Petitions to Cancel A Cited Registration
If the USPTO examining attorney refuses your application under Section 2(d) due to likelihood of confusion with one or more registered mark(s), you might choose to file a petition with the Trademark Trial and Appeal Board to cancel the registration that is blocking your path. After you have filed the petition, you can ask the examining attorney to suspend your application until the cancellation proceedings are resolved. You must inform the examining attorney that you have filed the petition, and you should provide them with the number of the cancellation proceeding.
NOTE: Be aware of the limitations on the examining attorney. They CANNOT suspend your application until you file the petition to cancel. Merely informing the examining attorney that you intend to file a petition to cancel is not enough; their hands are tied, and they cannot take action at that point. Also, if your petition to cancel is successful, you may want to expedite removal of your application from suspension. You can do this by contacting the examining attorney to inform them of the results of the proceedings. But be aware that they CANNOT remove your application from suspension and officially designate the Section 2(d) refusal as “obviated” until the USPTO trademark database shows the status of the registration as “cancelled” or “expired.” The examining attorney cannot change that status and cannot speed up the process of changing that status. Exercise patience and courtesy.
This information was posted on December 15, 2020 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.