In approximately 7-9 months after you have applied for trademark registration, you may receive either a Registration Certificate or Notice of Allowance (depending on whether this trademark application is filed as already in use or only intends to be used). But you might also receive an Office Action or trademark suspension letter. In case you receive Office Action and are interested in ways to overcome it, check the relevant article by Ortynska Law: Trademark Office Action: What Does It Mean & How to Overcome It.
In this article, Managing Attorney Mariya Ortynska covers the question of when a trademark can be suspended, what is the possible course of events regarding the examination of this application, and provides recommendations to applicants on further communication with the USPTO.
Status suspended trademark and the respective reasons
A suspension letter is a document from USPTO, according to which your application won’t be examined for a certain period. The most common reason is the presence of an earlier trademark application, and, in the opinion of an expert, there is a possibility of confusing your trademark with the previously applied conflicting trademark (conflicting TM). In such case, the expert will wait to update on the status of the conflicting trademark and will consider your application after this. If a third-party conflicting trademark is to be registered, you will receive a non-final office action. If a third-party earlier filed trademark is abandoned, then, accordingly, obstacles to the registration of your TM will disappear.
You can receive a Suspension letter in case you filed the application in the U.S. with a priority claim for an application filed in another country as well. In this case, the USPTO examiner will require confirmation of registration and only then will consider your application.
Approaches to Suspended Trademark Applications
Approach 1. Expecting communication from the examiner
If your trademark is suspended, you may leave the examiner’s letter without a response. In such a case, the examiner will independently monitor the status of a conflicting trademark application. For instance, when a previously filed TM is abandoned, the examiner will terminate the suspension of your TM and start examining your application.
You can often read in the suspension letter that no response to such a letter is required. However, such a reactive wait-and-see approach is not always an effective strategy and might lead to delays in the processing of your application, as the examiner reviews this status approximately once every 6 months.
Approach 2. Proactive actions to monitor and inform the examiner
Even though the suspension letter states that a response to it is not required, this does not mean that it is prohibited to submit a response. You can independently monitor conflicting applications and registrations and inform the examiner when the status of such registrations changes.
Approach 3. Argumentation of the absence of grounds for trademark suspension
If your TM has been suspended because there is a previously filed similar TM, you can provide the examiner with a response that there is no similarity and identity between these trademarks, and as a result, there is no conflict.
There are also other grounds for receiving a suspension letter, about which you can consult with a trademark attorney who will be able to help you develop the right strategy in your case.
Need Help Responding to a Suspension Letter?
If you receive a trademark Suspension Letter and need legal guidance in overcoming it, contact Ortynska Law to get tailored advice:
Email: [email protected]
Phone: +1 (914) 703-5632