TMEP 716: Suspension of Action by USPTO

October 2017 Edition of the TMEP

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716    Suspension of Action by USPTO

37 C.F.R. §2.67  Suspension of action by the Patent and Trademark Office.

Action by the Patent and Trademark Office may be suspended for a reasonable time for good and sufficient cause.  The fact that a proceeding is pending before the Patent and Trademark Office or a court which is relevant to the issue of registrability of the applicant’s mark, or the fact that the basis for registration is, under the provisions of Section 44(e) of the Act, registration of the mark in a foreign country and the foreign application is still pending, will be considered prima facie good and sufficient cause.  An applicant’s request for a suspension of action under this section filed within the 6-month response period ( see §2.62) may be considered responsive to the previous Office action.  The first suspension is within the discretion of the Examiner of Trademarks and any subsequent suspension must be approved by the Director.

The term "suspension of action" means suspending action by the examining attorney.  It does not mean suspending or extending an applicant’s time to respond.  The Trademark Act requires that an applicant respond within six months of an examining attorney’s Office action, and the examining attorney has no discretion to suspend or extend the time for the applicant’s response. See 15 U.S.C. §1062(b). However, an applicant’s timely filed request for suspension for good cause may constitute a proper response to an Office action.

When an acceptable ground for suspension is immediately apparent (e.g., prior-filed applications for conflicting marks are pending), the examining attorney will suspend an application only when the application is in condition for approval or final action, except for the matter on which suspension is based. Otherwise, the applicant must request suspension. See TMEP §716.02 regarding the circumstances under which action may be suspended.