1213    Suspension of Appeal

Prior to the issuance of the Board’s decision in an ex parte appeal, proceedings with respect to the appeal may be suspended by the Board upon written request by the applicant showing good cause for the requested suspension. [ Note 1.] Cf. TBMP § 510. Examples of situations in which the Board may suspend proceedings in an appeal, at the request of the applicant, are listed below:

  • (1) The applicant is involved in a civil action or a Board inter partes proceeding, that may be dispositive of the issue(s) involved in the appeal, or the applicant has filed a Petition to the Director that may have a bearing on the appeal—the Board may suspend pending final determination of the civil action or Board inter partes proceeding.
  • (2) Another application that involves the same issue is also on appeal to the Board—the Board may suspend pending final determination of the appeal in the other application.
  • (3) A registration cited as a reference, under Trademark Act § 2(d), 15 U.S.C. § 1052(d), against applicant’s mark is due, or will soon be due, for an affidavit of continued use (or excusable nonuse) under Trademark Act § 8 or Trademark Act § 71, 15 U.S.C. § 1058  or 15 U.S.C. § 1141k, [ Note 2.] or for an application for renewal under Trademark Act § 9 or Trademark Act § 70, 15 U.S.C. § 1059  or 15 U.S.C. § 1141j. [ Note 3.] The Board may suspend the appeal pending determination of whether the registration will continue in existence or will, instead, be cancelled or expire. If an applicant requests suspension based on the possibility that the cited registration may be cancelled for failure to file an affidavit of continued use, the Board will grant such request if the Board acts on the request after the 5th anniversary of the issue date of the registration. If an applicant requests suspension based on the possibility that the cited registration will expire for failure to renew it, the Board will grant such request if the Board acts on the request after the 9th anniversary of the issue date or the renewal date for the registration.

If it comes to the attention of the examining attorney, in the case of a refusal based on likelihood of confusion with a registered mark (Trademark Act § 2(d), 15 U.S.C. § 1052(d) ), that the grace period for filing an affidavit of continued use or an application for renewal for the cited registration has passed, and Office records do not indicate that such items have been submitted, the examining attorney may request remand so the application can be suspended pending final disposition of the cited registration. [ Note 4.] In that situation, 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, and that registration forms the only basis for refusal, the examining attorney will approve the application for publication (or for registration in the case of a Supplemental Register application), and the appeal will be moot. The examining attorney should so notify the applicant and the Board by telephone or email. If the Trademark Act § 2(d), 15 U.S.C. § 1052(d)  refusal is only one of the issues of the appeal, the examining attorney should notify the Board that the refusal with respect to that registration has been withdrawn, and the Board will then resume proceedings in the appeal. If it is determined that an appropriate affidavit or renewal application was timely filed for the cited registration and has been accepted, the examining attorney should notify the Board, and return the application to the Board. The Board will then resume proceedings in the appeal.

If the grace period for filing the appropriate affidavit or renewal application for the cited registration has not yet expired, the examining attorney may request that the Board suspend proceedings in the appeal. In that case, the Board will issue an order advising the applicant the Board is suspending proceedings in the appeal, and giving the applicant the opportunity to inform the Board if it wishes the appeal to proceed without waiting for a determination as to whether the cited registration will be cancelled or will expire. If the applicant wishes the appeal to proceed, the cited registration will be treated as existing and valid. If the appeal is suspended, and if an appropriate affidavit or renewal application is filed and accepted for the cited registration, the examining attorney should notify the Board. The Board will then resume proceedings in the appeal.

The examining attorney may also request suspension if it comes to his or her attention that another application that involves the same issue is on appeal to the Board. In that circumstance, the examining attorney may also request that the appeals be consolidated. See TBMP § 1214.

A request by either the applicant or the examining attorney for suspension of proceedings before the Board in an ex parte appeal must be filed prior to the issuance of the Board’s final decision in the case. For example, an applicant that has appealed a refusal to register under Trademark Act § 2(d), 15 U.S.C. § 1052(d)  (i.e., a refusal to register on the ground that the applicant’s mark so resembles a registered mark as to be likely to cause confusion) may not wait until it receives the Board’s decision on appeal and then, if the decision is adverse, file a petition to cancel the cited registration and request suspension of proceedings in the appeal pending the final determination of the cancellation proceeding. [ Note 5.]

When proceedings have been suspended at the request of the applicant in an ex parte appeal to the Board, and the event for which proceedings have been suspended occurs, as, for example, when a civil action for which proceedings have been suspended has been finally determined, the applicant should file a submission notifying the Board thereof as soon as that knowledge comes to the applicant’s attention. When an appeal has been suspended pending a determination of whether a cited registration will be cancelled or will expire, the applicant should monitor the status of the cited registration on a monthly basis and should advise the Board as soon as it ascertains either that the registration has been cancelled or has expired, or that the required document has been accepted by the USPTO.

The Board will then resume proceedings and take further appropriate action in the appeal. If the cited registration has been cancelled or has expired, and it was the only bar to registration, the appeal will be dismissed as moot. If the cited registration formed only one basis of the refusals or requirements on appeal, the Board will resume proceedings in the appeal with respect to the remaining issues.

In addition, the Board may sua sponte suspend action in the appeal. For example, when the refusal of registration, or one of the grounds of refusal, is based on Trademark Act § 2(d), 15 U.S.C. § 1052(d), and it appears that the cited registration will be cancelled for failure to file an affidavit of continued use or will expire for failure to renew, the Board will suspend action when an ex parte appeal has been assigned to a judge for final decision, and the due date for filing an affidavit or application for renewal of the cited registration falls on or before the date the case is assigned for decision. The due date is the anniversary date of the registration, and does not include the grace period. In this situation, the applicant will be advised that the Board is suspending proceedings in the appeal, and will be given the opportunity to inform the Board if it wishes the Board to render a decision without waiting to determine whether the cited registration will be cancelled or will expire. If the applicant wishes the Board to proceed with a decision, the cited registration will be treated as existing and valid.

The Board may also sua sponte suspend proceedings if the Board is aware of a pending civil action, an appeal of a Board decision, or a Board inter partes proceeding or another appeal that may be dispositive of or have a direct bearing on the issues in the appeal.

Proceedings in an ex parte appeal may also be suspended by the Board if the application is remanded to the examining attorney, as, for example, for (1) consideration of an amendment to the application, or (2) consideration of a request for reconsideration of a final action, or (3) assertion of a new ground of refusal, or (4) submission of additional evidence or (5) to consider the effect of a decision in another Board proceeding, appeal or civil action that may have a direct bearing on the issues in the appeal. See TBMP § 1202.02, TBMP § 1203.02(a), TBMP § 1203.02(b), TBMP § 1204, TBMP § 1205, TBMP § 1206.01, TBMP § 1207.02, TBMP § 1207.06, and TBMP § 1209. However, proceedings will not be suspended for consideration of a request for review under the USPTO Consistency Initiative. See TBMP § 1204.

NOTES:

 1.   Cf. 37 C.F.R. § 2.117.

 2.   A Trademark Act § 66(a), 15 U.S.C. § 1141f(a), registration is subject to the Trademark Act § 71 requirements for affidavits of continued use (or excusable nonuse). A Trademark Act § 71 affidavit is filed with the USPTO.

 3.   A renewal under Trademark Act § 70, 15 U.S.C. § 1141j refers to a renewal of the international registration underlying a Trademark Act § 66(a), 15 U.S.C. § 1141f(a)  registration. A Trademark Act § 66(a) registration will be cancelled under Trademark Act § 70 for failure to renew the international registration on which it is based. Renewals of international registrations are filed directly with the International Bureau, not the USPTO. If the underlying international registration is not renewed, the International Bureau will notify the USPTO that the international registration has expired. The corresponding extension of protection to the United States will expire as of the expiration date of the international registration and the Trademark Act § 66(a) registration will be cancelled by the USPTO. See Trademark Act § 70, 15 U.S.C. § 1141j.

 4.   See TMEP § 716.02(e).

 5.   See In re Vycom Electronics Ltd., 21 USPQ2d 1799, 1800 (Comm’r 1986).