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A Suspension Notice is issued when there are matters outside the application itself that need to be resolved before the actual review. An examining attorney will suspend all actions on an application until all other affairs are settled. There is a variety of reasons why an application may be suspended. We will take a look at some of the most common suspensions below.
Prior-filed Application Conflict
One of the most common reasons for receiving a suspension notice is when there may exist a possible conflict between your application and prior filed application(s). Although at the time of filing, there was no registered mark similar to yours in the USPTO’s database, the examiner could still see a likelihood of confusion between your application and prior-filed pending application(s). If any of the pending marks registers, your application will likely be refused under Section 2(d) due to a likelihood of confusion. As a result, actions on your application are suspended until the referenced marks are either registered or abandoned.
This type of suspension typically does not require a response; however, you can respond to a Suspension Notice using the “Response to Suspension Inquiry” form online on the USPTO website. By filing this response, you are trying to convince the trademark examiner that the potential of a confusingly-similar application is unlikely. If the examiner is convinced, your application will go to the next stage of the application process independent of whether the prior-filed trademarks are registered.
Foreign Filing Suspension
This type of suspension is issued when the trademark application is based on a foreign application and was filed under Section 44(d). In such cases, applicants usually receive two suspension letters.
The first one is the Suspension Notice which does not require a response and is issued after the examiner completed the application review process.
Once the application is suspended, the applicant has 6 months until the USPTO issues the second suspension letter “Suspension Inquiry” requesting information about the status of the foreign registration.
During the second 6-month period, all actions on this application remains suspended and the USPTO examiner will inquire every 6 months until a copy of foreign registration certificate or proof of its renewal is received. If your foreign application is still pending at the time of inquiry, you can submit a statement to request for another 6-month suspension so that more time is acquired to prepare the proper foreign registration proof that will be in force when the US registration issues. If the applicant fails to respond, the trademark application will automatically be abandoned.
Change of Trademark Ownership Suspension
Another reason an applicant may receive a Suspension Notice is the applicant is waiting for an assignment of ownership to be recorded. An assignment is the transfer of ownership of the trademark right to another person or business. At times, trademark applicant might sell or transfer the exclusive right to use a trademark during the application process. Failure to record an assignment may result in an application to be refused by USPTO and a delay in the trademark renewal process under the new owner’s name.
Out-of-date ownership information may also cause the new trademark owner not receiving important USPTO communications; and consequently, losing the ability to timely respond and submit amendments to the application.
Difference between a Suspension and Suspension Inquiry Letter
A Suspension Letter is sent to an applicant when USPTO examiner stops action on an application. The applicant does not have to respond to this letter, and the USPTO attorney reviews the cases at least every 6 months to decide if further suspension is necessary. Applicant can notify the attorney if he/she finds the suspension is no longer applicable to the application.
On the other hand, a Suspension Inquiry Letter is sent when an examiner inquiries about the status of the matter that caused the suspension of an application. This letter is usually issued after an application has been suspended for 6 months or more and requires a response to the USPTO. If the applicant does not respond before the deadline, the trademark application will be abandoned, and the application fee will not be refunded.
In general, a response to a Suspension Inquiry must be received 6 months from the issuing date stated in the letter. To file a response, you can submit your response to the Suspension Inquiry electronically at http://teasroa.uspto.gov/rsi/rsi through TEAS or by regular mail.
In conclusion, suspension conveys actions suspended on an application by the USPTO for a period as there are outside issues that need to be addressed prior to application review. A pending proceeding, foreign trademark application or registration, and recordation of an ownership assignment are common causes for a suspension. Although receiving a suspension generally causes considerable delays and uncertainty in the application process, it might not be as bad as it sounds because now the application is given more time, rather than having to receive an outright Office Action or Refusal. One downside for suspension though is that the application can be stuck in limbo until the potential conflict is resolved, but applicants always have the choice to respond to a Suspension Notice earlier when the listed concerns are ironed out.
Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change.
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