T.M.E.P. § 716.02
Circumstances Under Which Action May Be Suspended
Executive summary:
This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.
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716.02 Circumstances Under Which Action May Be Suspended
Under 37 C.F.R. 2.67, an examining attorney has the discretion to suspend an application "for good and sufficient cause." The most common reasons for suspension of an application are discussed below.
As a general rule, the USPTO will not suspend an application to give an applicant time to secure a consent agreement.
Any request to stay a deadline for responding to an Office action pending disposition of a petition to the Director should be directed to the Commissioner for Trademarks. If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Commissioner for Trademarks. The examining attorney should not suspend action on an application pending a decision on petition. See 37 C.F.R. 2.146(g); TMEP §1705.06.
716.02(a) Applicant's Petition to Cancel Cited Registration
If the examining attorney refuses registration under §2(d) of the Trademark Act in view of the mark in a prior registration, the applicant may file a petition to cancel the registration under 15 U.S.C. 1064 and, within a proper response period, inform the examining attorney that the petition to cancel has been filed. This will constitute a proper response to the §2(d) refusal, and may be done by phone, if there are no other outstanding issues that require a written response. The examining attorney will then suspend further action until the termination of the cancellation proceeding, if the application is otherwise in condition for approval or final refusal. The applicant should provide the number of the cancellation proceeding, if available; however, if the applicant does not provide the cancellation number, the examining attorney may ascertain it from Office records.
The examining attorney should suspend only if the applicant states that the cancellation proceeding has already been filed or is being filed concurrently with the response to the Office action.
Although the examining attorney will determine the status of the cancellation proceeding through a routine status check (see TMEP §716.04) , the applicant may call or e-mail to advise the examining attorney when the proceeding is terminated, in order to avoid any possible delay in removing the application from suspension.
See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 of the Act or expiration of a cited registration for failure to renew under §9 of the Act.
716.02(b) Submission of Copy of Foreign Registration in §44(d) Application
When an applicant who claims the benefit of a prior foreign application under 15 U.S.C. 1126(d) is required to submit a copy of a foreign registration, the applicant may respond to the requirement by stating that the foreign application is still pending. The examining attorney should then suspend further action pending receipt of a copy of the foreign certificate, if the application is otherwise in condition for approval or final refusal. See TMEP §1003.04.
If an applicant claims §44(d) in addition to another basis, before suspending the application, the examining attorney must inquire whether the applicant wishes to retain §44(e) as a second basis for registration (based on the foreign registration that will issue from the application on which the applicant relied for priority). This inquiry should be made in the first Office action, or by telephone if no Office action is issued. If the examining attorney is unable to reach the applicant by telephone, the examining attorney should issue an Office action requiring a copy of the foreign registration, advising applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquiring as to whether the applicant wishes to retain §44(e) as a second basis for registration. See 37 C.F.R. §§2.35(b)(3) and (4) and TMEP §§806.02(f) and 806.04(b).
If the applicant responds that it does want to assert a dual basis for registration and the application is otherwise in condition for publication or final refusal, then the examining attorney should suspend further action pending receipt of a copy of the foreign registration.
During the suspension period, the examining attorney will issue an Office action approximately every six months after suspension to inquire as to the status of the foreign application. If the applicant does not respond to the inquiry, the application will be abandoned. See TMEP §716.05.
The examining attorney may suspend pending receipt of a copy of a foreign registration only in a §44(d) application. In a §44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). TMEP §1004.01. However, the examining attorney may suspend a §44(e) application pending receipt of proof of renewal of the foreign registration. TMEP §1004.01(a).
716.02(c) Conflicting Marks in Pending Applications
When there are conflicting marks in pending applications, action on the application with the later effective filing date will be suspended (after examination on all other issues is concluded or the application is in condition for a final action) until the mark in the conflicting application with the earlier effective filing date is either registered or abandoned. 37 C.F.R. 2.83(c). See TMEP §§1208 et seq. for more information about conflicting marks in pending applications.
If the examining attorney has cited a prior-filed pending application, the applicant may respond by arguing that there is no likelihood of confusion between the marks. If the examining attorney is not persuaded by the applicant's arguments, the examining attorney should suspend the later-filed application pending disposition of the conflicting application. The suspension notice should include a statement that the applicant's arguments were not persuasive. It is not necessary to address the merits of the applicant's arguments prior to the initial suspension. See TMEP §716.03 regarding the applicant's request to remove an application from suspension.
If the examining attorney discovers that a prior-filed pending application was abandoned, but that a petition to revive is pending, the examining attorney should suspend the later-filed application pending disposition of the petition to revive. If the petition to revive is granted, the later-filed application will remain suspended until the mark in the earlier-filed application is registered or the earlier-filed application is again abandoned.
When an application is suspended pending the disposition of more than one earlier-filed conflicting application, and one of the conflicting applications matures into registration, the examining attorney will normally not issue a refusal of registration until the remaining conflicting application(s) are registered or abandoned, in order to avoid issuing piecemeal refusals. However, if deemed appropriate, the examining attorney does have the discretion to issue a refusal of registration under §2(d) in this situation.
716.02(d) Inter Partes or Court Proceeding
When an examining attorney learns that a proceeding relevant to the registrability of an applicant's mark is pending before the Trademark Trial and Appeal Board or a court, the examining attorney should call the proceeding to the applicant's attention. If the applicant is not a party to the inter partes or court proceeding, the examining attorney must explain why the proceeding is relevant to the registrability of the applicant's mark. If the examining attorney believes the proceeding may result in a decision that supports a refusal of registration of the applicant's mark, the examining attorney must issue the refusal and give the applicant an opportunity to respond before suspending the application.
An applicant may request suspension because a proceeding relevant to the registrability of the applicant's mark is pending before the Office or a court. The applicant must submit a copy of the relevant pleadings, the docket number of the proceeding, and a written explanation of why the proceeding is relevant to the registrability of the mark. Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is cancellation, abandonment, or amendment of a relevant application or registration. However, when resolution of the court action requires the court to consider questions of Office policy or procedure, the examining attorney should not assume that the court would prefer to decide such questions absent the Office's decision in the consideration of an application. In these instances, action on an application should generally not be suspended. It is important to review the relevant pleadings, including the complaint and answer, before determining whether suspension is appropriate. The Office of the Solicitor may be consulted if there is a question as to whether suspension of the application is appropriate.
Before an application is suspended, the applicant must respond to all outstanding issues raised in the examining attorney's Office action that are not related to the proceeding. The examining attorney should not suspend the application unless all matters not related to the proceeding are resolved or in condition for final action.
See TMEP §716.02(a) regarding suspension pending disposition of an applicant's petition to cancel a cited registration under 15 U.S.C. 1064, and TMEP §716.03 regarding the applicant's request to remove an application from suspension.
716.02(e) Suspension Pending Cancellation or Expiration of Cited Registration
When the applicant submits a timely affidavit or declaration of continued use or excusable nonuse under 15 U.S.C. 1058 ("§8 affidavit") and/or an application for renewal under 15 U.S.C. 1059, the USPTO's automated records are updated to indicate receipt of the paper and the action taken on the paper. The USPTO's automated records are updated three months after the grace period expires to indicate that a registration is cancelled or expired if:
(1) No §8 affidavit has been filed before the end of the six-month grace period following the sixth year after the date of registration or publication under §12(c) of the Trademark Act, 15 U.S.C. 1062(c); or
(2) No §8 affidavit has been filed before the end of the six-month grace period following the expiration of the previous term of registration; or
(3) No §9 renewal application has been filed before the end of the six-month grace period following the expiration of the previous term of registration.
See TMEP §§1602 et seq. regarding the duration of a registration, TMEP §1604.04 regarding the due dates for §8 affidavits, and TMEP §1606.03 regarding the due dates for §9 renewal applications.
The USPTO waits until three months after the expiration of the grace period for filing the §8 affidavit or renewal application before updating its records to show that the registration is cancelled or expired, to avoid inadvertent cancellation or expiration of a registration due to a delay in matching a timely filed §8 affidavit or renewal application with the registration file.
The examining attorney must confirm the status of the cited registration to ensure that it is still active before issuing any refusal of registration under Trademark Act §2(d), or filing a brief on appeal of a §2(d) refusal.
If the examining attorney is ready to issue a nonfinal refusal of registration under §2(d), and TRAM shows that the registration is still active, the examining attorney must issue the refusal even if the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed and TRAM does not indicate that the registrant has filed a §8 affidavit and/or renewal application. The examining attorney should not suspend the application, but should advise the applicant that the grace period for filing the §8 affidavit or renewal application has passed and that it appears that the registration may be subject to cancellation under §8 or expiration under §9.
If the examining attorney is ready to issue a final refusal of registration under §2(d), but the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed, the examining attorney should not issue a final refusal until the USPTO's automated records indicate that the registrant has filed the §8 affidavit or renewal application, and the USPTO has accepted the §8 affidavit or granted renewal. Instead, the examining attorney should suspend action for six months pending final disposition of the cited registration.
If the examining attorney is ready to write an appeal brief, but the grace period for filing a §8 affidavit and/or a §9 renewal application for the cited registration has passed, the examining attorney should request a remand so the application can be suspended pending final disposition of the cited registration. The Board will issue an order suspending the appeal and remanding the case to the examining attorney. If the cited registration is cancelled or expires, the examining attorney should withdraw the §2(d) refusal and notify the applicant that it has been withdrawn. If an appropriate affidavit or renewal application is filed for the cited registration, the examining attorney should notify the Board and return the file to the Board; the Board will resume proceedings and reset the time for filing the examining attorney's appeal brief. Similarly, if the cited registration is cancelled or expires, but the §2(d) refusal is only one of the issues on appeal, the examining attorney should notify the Board of the status of the cited registration and return the file to the Board. The Board will resume proceedings and reset the time for filing a brief. See TBMP §1213 regarding the suspension of an ex parte appeal pending cancellation of the cited registration under §8 or §9 of the Act.
The examining attorney cannot withdraw a refusal of registration under §2(d) until the TRAM system shows that the registration has actually been cancelled or expired.
See TMEP §1611 for information about how a registrant who has not timely filed a §8 affidavit or §9 renewal application may expedite the cancellation or expiration of its own registration.