According to the United States Department of Commerce, the average trademark application was pending for nine and a half months in the year 2020. Receiving a United States Patent and Trademark Office (USPTO) trademark suspension letter can mean that a trademark application will take longer than average – sometimes considerably longer than average – to process to completion. It does not mean applicants are completely helpless, though. Learn why the USPTO issues trademark suspension letters, steps to consider taking after receiving a trademark suspension letter, and some options for responding. If you have received a USPTO trademark suspension letter or have other questions regarding the trademark application process, consider speaking with a knowledgeable trademark attorney at War IP Law, PLLC at (202) 800-3754 to understand how we may be able to assist you with your intellectual property needs.
What Does a USPTO Trademark Suspension Letter Mean?
Receiving a USPTO trademark suspension letter sounds like a bad thing, but that is not necessarily the case. The most common reason USPTO examiners send trademark suspension letters is that the examining attorney performed a search of USPTO’s database, and found a prior-filed pending application with a similar mark that could bar registration of the mark on the application in question. The trademark suspension letter includes the serial number of the prior-filed pending application which necessitated the suspension.
The USPTO prioritizes applications on a first-in, first-reviewed basis, so the prior-filed pending application must be processed to determine whether the trademark will register before any subsequent applications can be reviewed. If the mark does not register, subsequent applications by other parties will be considered in the order they were received.
USPTO examiners review suspended trademark applications periodically, approximately every six months. If the suspension is no longer appropriate or the USPTO examiner needs additional information, such as for determining first use, they will contact the applicant who received the USPTO trademark suspension letter.
What To Do After Receiving a USPTO Trademark Suspension Letter
Receiving a USPTO trademark suspension letter can be misleading because it includes a statement that no response is necessary. However, there are several steps applicants can take proactively to investigate the situation and make informed decisions regarding further pursuit of trademark registration.
First, applicants can review the prior-filed pending application using the USPTO’s Trademark Status And Document Retrieval database, or TSDR. Reviewing the application may help applicants determine whether they have grounds to:
- Oppose the prior-filed pending application, or
- File a Petition to Cancel, if the opposition period has expired
Applicants can review the application for relevant information such as:
- The priority date and first-use dates
- Submitted specimens
- Any alleged use
- Trademark ownership records
Determining legal grounds for opposing or petitioning a prior-filed application requires a detailed understanding of trademark law and the ability to anticipate and plan for many potential legal outcomes. The dedicated and knowledgeable trademark attorneys at War IP Law, PLLC may be able to assist with determining whether you have legal grounds for opposition or provide input on other strategic decisions throughout the trademark application process.
Possible Responses To a USPTO Trademark Suspension Letter
There are several options for responding to a USPTO trademark suspension letter, and the appropriate response for each situation depends on the legal strategy employed by the applicant and their intellectual property attorney. Each option listed below is highly dependent on circumstances and specific to unique situations, and applicants should strongly consider seeking the advice of legal counsel before determining their response to a trademark suspension letter.
The first option is to do nothing. As indicated above, the USPTO trademark suspension letter includes a statement that no response is necessary, and sometimes not responding is the best option. If the marks are very similar, it may be a good idea to wait and see if the prior filed pending application is abandoned. If so, it will not register, and the next filed pending application will be considered.
Applicants also have the option to file a response to the trademark suspension letter. Here are a few possible reasons to file a response:
- The prior-filed pending application has either matured into registration or abandoned. Applicants may request that the USPTO examiner take action on their previously suspended application. Otherwise, the examiner will revisit the suspended application at the next scheduled six-month review point.
- The prior-filed pending application is within the opposition period, and the suspended applicant believes they have grounds for opposition.
- The suspended applicant wishes to make arguments against the likelihood of confusion or similarities between the two marks.
How To Avoid a USPTO Trademark Suspension Letter
While a USPTO trademark suspension letter is not always avoidable, the most important step in avoiding one begins before the application is filed. Applicants should perform a thorough, detailed search of USPTO’s database of registered trademarks, as well as pending trademark applications. Doing so helps to minimize the risk of an application being suspended due to a likelihood of confusion with a similar mark on a prior-filed pending application.
A comprehensive trademark search performed by a trademark attorney can help identify potential legal hazards before an application is filed, reducing risk and allowing applicants to plan an informed legal strategy from the start of the application process. Opposing a prior-filed pending application or filing a Petition to Cancel a registered trademark can quickly become expensive and time-consuming. A comprehensive trademark search performed before filing the application often prevents these problems from occurring.
Legal Assistance With a USPTO Trademark Suspension Letter
Receiving a USPTO trademark suspension letter can be confusing, and the wrong move can put trademark applicants at a legal disadvantage. A seasoned trademark attorney can help to mitigate risk and optimize chances of successful trademark registration by:
- Performing a comprehensive trademark search before the application filing
- Providing a legal opinion regarding barriers to registration
- Advising on strategic decisions and positioning
- Preparing the trademark application
- Responding to USPTO examiners’ questions and requests
- Providing legal advice at each step of the trademark application process
If you have received a USPTO trademark suspension letter or have other questions about the trademark application process, consider speaking with a knowledgeable trademark attorney at War IP Law, PLLC at (202) 800-3754 to understand how we may be able to assist you with your trademark application.