Occasionally, a company develops and uses a trademark but does not find the time to register it with the United States Patent and Trademark Office (USPTO). A trademark owner in this position may find that when they try to register their mark to acquire federal protection, a similar registration or application already exists, leading the USPTO to issue a suspension notice. Learn about what a notice of suspension means in the context of pending trademark applications and discover how a Washington, D.C. trademark lawyer from War IP Law PLLC may be able to aid individuals and businesses with their IP concerns by calling (202) 952-4004.

Pending Trademark Applications Explained

Pending applications for trademarks are requests to register particular marks that prospective trademark owners have submitted but are yet to obtain approval from the USPTO. After a trademark application is submitted, the following steps take place:

  • An examining attorney reviews the filing, and they issue an office action if they require further information to progress the application.
  • If the applicant addresses the office action and is able to satisfy the legal concerns raised, the USPTO may publish the proposed trademark to allow possible opponents of the application to contest it.
  • The USPTO issues an allowance notice if there is no opposition.
  • Finally, if the applicant submits a valid statement of use within the six-month specified deadline, the USPTO officially registers the mark. If the applicant fails to submit the statement of use and does not request an extension, the USPTO considers it abandoned.

Per the USPTO, it is possible to search for a pending application of a mark via the Trademark Electronic Search System (TESS).

What Is a Notice of Suspension?

In terms of a pending application for a trademark, a suspension notice refers to a specific type of office action issued by the USPTO to an applicant. A suspension notice ceases any additional progress on the trademark application but is not a rejection. A USPTO examining attorney typically issues a notice of suspension if, after searching for pending and registered marks, they determine that an already filed and pending application might prevent the registration of the applicant’s trademark. They may also issue this notice if they are waiting for a foreign registration to be issued from another country.

What Does It Mean if Your Application Is Suspended?

A suspended trademark application does not impact its viability or validity; the application stays active, but it does not proceed until the applicant and USPTO can resolve the issue causing the suspension. The examining attorney for that particular application reviews it every six months to determine if the suspension is still appropriate or if the issue has been resolved. Depending on the nature of the problem that led to the suspension, the suspension notice may remain active for a period between a couple of months and several years. Understand more about what a notice of suspension is for pending trademark applications and learn how a seasoned Washington, D.C. intellectual property lawyer may be able to assist those looking to register a trademark by reaching out to War IP Law PLLC. 

What Is a Suspension Letter in a Trademark?

A trademark applicant could receive a suspension letter, which is a formal document that places an application for a trademark on hold, for one of these reasons:

  • The trademark reviewer thinks there is a possibility for confusion between the applicant’s mark and the trademark related to an already submitted application, with the suspension remaining active until the pending application achieves registration or the pending applicant abandons it.
  • A potential for confusion between the applicant’s trademark and a mark linked to a currently registered trademark exists, according to the examining attorney. In this scenario, the suspension notice remains until the USPTO cancels the existing registration or the registrant files the necessary renewal documentation (in which case the application is likely to be unsuccessful).
  • A foreign country may be issuing a registration. If the application is based on a foreign application for the same trademark, the USPTO will wait for that country to issue the registration certificate before moving forward with the application.

Can You Request the Suspension of a Trademark Application?

Ultimately, an examining attorney determines whether suspending a trademark application is appropriate, meaning that for parties with ongoing trademark applications, requesting a suspension for a recent, similar application is usually unnecessary. However, if the applicant is relying on a foreign trademark registration and has not received such registration when the examiner reviews the suspension, the applicant will need to respond to that office action with a request for another six-month suspension. 

Responding to Suspension Notices

Applicants are not required to respond to suspension notices. They are not, however, prohibited from responding. After receiving a suspension letter from an examining attorney, consider the following tips:

  • Responding to these notices is typically unnecessary; however, sometimes, doing so can be beneficial, such as when the notice concerns a previously filed application that has either progressed to the registered or abandoned status. In this scenario, the applicant could ask the trademark reviewer to take action, or they could just wait until they perform a periodic check on the suspension notice.
  • If the examining attorney suspended a mark’s application because of a current registration that is due for renewal, and the registrant fails to provide the maintenance documentation on time, or the USPTO cancels the registration, the applicant could respond to the suspension letter asking the trademark reviewer to remove the suspension. Alternatively, the applicant could just wait until the examining attorney completes their own checks.

How Do I Know if My Trademark Has Been Approved?

Applicants can check the status of their pending applications via the USPTO’s Trademark Status & Document Retrieval (TSDR) service. Within an applicant’s filing receipt, they can locate a serial number that gives them access to the TSDR system; from here, applicants may see upcoming deadlines for certain documentation and can view, download, and print the documents within their file. Via the TSDR service, and following successful registration, applicants can also review a mark’s registration status and documents by entering their registration or serial number.

Trademark applicants can view current processing times to understand roughly how long it could take to progress their applications by visiting the USPTO’s application timeline web page. To avoid delays to the application process, be sure to complete any documentation associated with the mark’s application as accurately as possible.

Contact a Washington, D.C. Intellectual Property Lawyer Today

When the USPTO initiates suspension inquiries, the applicant who received the suspension notice may need to evaluate the rights of the prior applicant and take certain action before a specified deadline. Consider reaching out to an attorney to get help with overcoming the challenges associated with these notices. Learn about a notice of suspension in greater detail and its significance for pending trademark applications and identify how a Washington, D.C. intellectual property lawyer may be able to assist prospective and current trademark owners by contacting War IP Law PLLC at (202) 952-4004.