TMEP 716.05: Inquiry by Examining Attorney Regarding Suspended Application

This is the October 2015 Edition of the TMEP

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716.05    Inquiry by Examining Attorney Regarding Suspended Application

In certain circumstances, if the application has been suspended for six months or more, the examining attorney will issue an Office action inquiring as to the status of the matter on which suspension was based. For example, if action is suspended pending the receipt of a copy of a foreign registration or proof of renewal of a foreign registration, the examining attorney will inquire every six months during the suspension period as to the status of the foreign application or registration. Similarly, for applications that are suspended pending the outcome of a civil action, the examining attorney will inquire every six months as to the status of the proceeding. If the foreign application or the civil action is still pending, a statement by the applicant to this effect is a proper response.

If the applicant does not respond to the suspension inquiry, the application will be abandoned for failure to respond. To expedite processing, the USPTO recommends that the applicant’s response to a suspension inquiry be filed through TEAS, at http://www.uspto.gov/trademarks/teas/index.jsp, using the “Response to Suspension Inquiry or Letter of Suspension” form.

The examining attorney should not issue any inquiry if the relevant information is available in the USPTO databases, including information regarding the status of a proceeding pending in the USPTO (e.g., an inter partes proceeding).