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.

716.01    Form of Suspension Notice

In a suspension notice, the examining attorney must specifically state that action is suspended and must omit any reference to a six-month response period. If the application is in condition for a final action but for the matter necessitating suspension, the notice of suspension must clearly indicate which refusals or requirements have been resolved, if any, and which will be made final when the application is removed from suspension, assuming that no new issues have arisen. When the application is removed from suspension, the examining attorney must promptly issue a final action, if appropriate. 

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 Deputy Commissioner for Trademark Examination Policy.  If such a request is sent to the examining attorney, the examining attorney should forward it to the Office of the Deputy Commissioner for Trademark Examination Policy.  The examining attorney should not suspend action on an application pending a decision on petition to the Director except upon express permission from the Office of the Deputy Commissioner for Trademark Examination Policy.   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 telephone, 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 USPTO records.

The examining attorney should suspend further action 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 email to advise the examining attorney when the registration has been cancelled, in order to avoid a delay in removing the application from suspension.  The examining attorney must not remove the application from suspension and withdraw the §2(d) refusal until the Trademark database shows that the registration is cancelled or expired.

When an application is suspended pending resolution of a cancellation proceeding, it is possible that a settlement agreement filed in the proceeding may be contingent upon the approval of an amendment or acceptance of a consent agreement filed in the suspended application, and the consequent approval of the application for publication.  The Board has no jurisdiction over the application that is pending before the examining attorney.  Thus, the applicant must file the amendment or consent agreement with the examining attorney, not with the Board.  The examining attorney must consider the amendment or agreement and take appropriate action, including approving the application for publication, if appropriate.  See TBMP §605.03(c).

In rare circumstances, the examining attorney may issue an Office action advising an applicant of a conflicting mark in an earlier-filed application and, during the response period, the mark registers and the applicant files a petition to cancel the registration.  Although the applicant may respond to the Office action by informing the examining attorney that the petition to cancel has been filed, the examining attorney may not suspend under these circumstances because the application would not be in condition for final refusal if the registration is not cancelled.  The examining attorney must first issue a non-final Office action refusing registration.  The applicant may then respond by requesting suspension pending the outcome of the cancellation proceeding.

See TMEP §716.02(e) regarding suspension pending cancellation of a cited registration under §8 or §71 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 §44(d) of the Act, 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 registration, if the application is otherwise in condition for approval for publication, allowance for registration on the Supplemental Register, or final action.   See TMEP §1003.04(a).

If an applicant asserts a claim of priority under §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 foreign application on which the applicant relied for priority).  However, if the application is filed via TEAS and indicates that the applicant is not relying on §44(e) as an additional basis for registration and is only asserting §44(d) to receive a priority filing date, the examining attorney will not inquire and will not suspend further action, but must ensure that the Trademark database is updated accordingly. See TMEP §1003.04(b) for further information.

If the applicant responds that it intends to assert a dual basis for registration and the application is otherwise in condition for approval for publication, allowance for registration on the Supplemental Register, or final action, the examining attorney should suspend further action pending receipt 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 the application pending receipt of the foreign registration only in a §44(d) application before issuance of the Notice of Allowance.  In a §44(e) application, the examining attorney will not suspend the application pending submission 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 (if the application appears to be otherwise in condition for publication or issue or 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 §§1208–1208.02(f) for more information about conflicting marks in pending applications.

If the examining attorney has cited an earlier-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 earlier-filed 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 an earlier-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. See TMEP §§718.07 and 1208.01(d) for information on conducting a new search for conflicting marks when an abandoned application is revived or reinstated.

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 all 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.  

Sometimes, the applicant will file an opposition to the registration of the earlier-filed conflicting mark.  In this situation, it is possible that a settlement agreement filed in the Board proceeding may be contingent upon the approval of an amendment or acceptance of a consent agreement filed in the suspended application, and the consequent approval of the application for publication.  The Board has no jurisdiction over the application that is pending before the examining attorney.  Thus, the applicant must file the amendment or consent agreement with the examining attorney, not with the Board.  The examining attorney must consider the amendment or agreement and take appropriate action.   See TBMP §605.03(c).

716.02(d)    Inter Partes or Court Proceeding

If an examining attorney learns of a proceeding pending before the Trademark Trial and Appeal Board (Board) or a court that may result in a decision that supports a refusal of registration of an applicant’s mark, the examining attorney must issue the refusal and give the applicant an opportunity to respond before suspending the application. 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.

When an applicant requests suspension because a proceeding relevant to the registrability of the applicant’s mark is pending before the Board 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 USPTO policy or procedure, the examining attorney should not assume that the court would prefer to decide such questions absent the USPTO’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.

A third party who wishes to request suspension of a pending application because a proceeding relevant to the registrability of the mark is pending before a court must do so by filing a letter of protest.   See TMEP §1715–1715.06.  The litigation must be specifically identified and a copy of the relevant pleadings must be enclosed.  The litigation must involve a federally registered mark or prior pending application, and the protestor must allege that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest.  Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is abandonment or amendment of the application that is the subject of the letter of protest.  If the letter of protest is granted, the examining attorney is informed that a request for suspension has been received based on an alleged likelihood of confusion with a registered mark or prior pending application that is the subject of pending litigation.

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.

When an application has been suspended for a Board or court proceeding, the suspension normally will be maintained while the proceeding remains pending and until the proceeding has been finally determined. A Board or court proceeding is not considered to have been finally determined until an order or ruling that ends litigation has been rendered and the time for any review has expired with no further review sought. The expiration of any further review includes the time for appeal, petitioning for rehearing, or U.S. Supreme Court review. Thus, the suspension normally will not be lifted until after the time for seeking such review has expired, a decision denying or granting such review has been rendered, and any further review has been completed. The Office retains discretion to condition approval of continued suspension on the applicant providing information about the status of the Board or court proceeding.

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, TMEP §716.02(c) regarding suspension of later-filed conflicting marks, TMEP §716.03 regarding the applicant’s request to remove an application from suspension, and TBMP §605.03(c)  regarding filing an amendment or consent agreement in a pending application owned by the plaintiff pursuant to a settlement agreement between the parties in an ex parte proceeding before the Board.

716.02(e)    Pending Cancellation or Expiration of Cited Registration

When the owner of a registration submits a timely affidavit or declaration of continued use or excusable nonuse under 15 U.S.C. §1058  (§8 affidavit) or §1141k  (§71 affidavit) or an application for renewal under 15 U.S.C. §1059, the USPTO’s automated records are updated to indicate receipt of the document and the action taken on the document. The USPTO waits until 30 days after the expiration of the grace period for filing the §8 or §71 affidavit or §9 renewal application before updating its records to show that the registration is cancelled or expired.

The USPTO’s automated records are updated approximately 10 days after the grace period expires to indicate that a registration is cancelled or expired if:

  • (1) No §8 or §71 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), for §8 affidavits);
  • (2) No §8 or §71 affidavit has been filed before the end of the six-month grace period following the end of any ten-year period after the date 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 §§1602–1602.04 regarding the duration of a registration, §1604.04 regarding the due dates for §8 affidavits, §1606.03 regarding the due dates for §9 renewal applications, and §1613.04 regarding the due dates for §71 affidavits.

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 the Trademark database shows that the registration is still active, the examining attorney must issue the refusal even if the grace period for filing a §8 or §71 affidavit or §9 renewal application for the cited registration has passed and the Trademark database does not indicate that the owner has filed a §8 or §71 affidavit or §9 renewal application.  The examining attorney must not suspend the application, but must advise the applicant that the grace period for filing the §8 or §71 affidavit or §9 renewal application has passed and that it appears that the registration may be subject to cancellation under §8 or §71 and/or expiration under §9.

If the examining attorney is ready to issue a final refusal of registration under §2(d), and the cited registration is in the grace period for filing a §8 or §71 affidavit or §9 renewal application, the examining attorney must suspend action pending a determination of whether the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or whether the registration is renewed. If the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or the cited registration is renewed, the examining attorney will remove the application from suspension and issue the final refusal.  

Similarly, if the examining attorney is ready to issue a denial of a request for reconsideration of a final refusal of registration under §2(d), and the cited registration is in the grace period for filing a §8 or §71 affidavit or §9 renewal application, the examining attorney must suspend action. If the registrant timely files, and the USPTO accepts, the §8 or §71 affidavit and/or the cited registration is renewed, and the applicant has not filed an appeal, the examining attorney will remove the application from suspension and issue an "Examiner’s Subsequent Final Refusal," thereby giving the applicant six months in which to file an appeal. If the applicant filed the request for reconsideration in conjunction with a notice of appeal, the examining attorney will remove the application from suspension and issue a "Request for Reconsideration Denied – Return to TTAB."

If the grace period for filing a §8 or §71 affidavit or §9 renewal application for the cited registration has passed, and the examining attorney is ready to issue a final refusal of registration under §2(d), or a denial of a request for reconsideration of a final refusal of registration under §2(d), the examining attorney must not issue the action until the USPTO’s automated records indicate that the owner has filed the §8 or §71 affidavit or §9 renewal application, and the USPTO has accepted the §8 or §71 affidavit or granted renewal.  Instead, the examining attorney must suspend action for six months pending final disposition of the cited registration.

If the grace period for filing a §8 or §71 affidavit or §9 renewal application for the cited registration has passed, and the examining attorney is ready to write an appeal brief, the examining attorney must request a remand so that 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 must 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 must notify 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 must notify the Board of the status of the cited registration.  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, §9, or §71 of the Act.

The examining attorney cannot withdraw a refusal of registration under §2(d) until the Trademark database shows that the registration is cancelled or expired.  If the examining attorney determines that 30 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration has been cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired.

See TMEP §1611 for information about how the owner of a registration who has not timely filed a §8 or §71 affidavit or §9 renewal application may expedite the cancellation or expiration of its own registration.

716.02(f)    Pending Expiration of "Insurance" Extension Request

When the applicant files a timely "insurance" extension request (i.e., in conjunction with the statement of use or within the same six-month period that the statement of use is filed; see TMEP §§1108.03–1108.03(a), 1109.16(c)), there are rare instances when the six-month period for response to a final Office action may expire before the statutory period for filing the statement of use. If the applicant can overcome any grounds for refusal and/or comply with any requirement raised in the final action before expiration of the time for filing the statement of use, but not within the time for responding to the final Office action, the applicant must still file a timely response to the Office action. The response must state that the applicant intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period and request suspension of the application. The examining attorney should then suspend the application for only the amount of time remaining in the statutory period for filing the statement of use. The applicant will then have until the end of the extension period to overcome any grounds for refusal and/or comply with any requirement.

Example: The notice of allowance issues on September 30, 2010 and a statement of use and/or extension request is due on or before March 30, 2011. The applicant files a statement of use on October 15, 2010. On November 5, 2010, the examining attorney issues an Office action regarding the acceptability of the specimen and the applicant responds on November 8, 2010 but does not correct the specimen deficiency. The examining attorney then issues a final Office action on November 29, 2010 regarding the specimen issue. If the applicant files a timely "insurance" extension request on or before March 30, 2011, this would extend the time to perfect the statement of use to September 30, 2011. However, the applicant must still respond to the final Office action by May 29, 2011 (i.e., within six months of issuance of the final Office action). The response must include a request to suspend the application or the application will be abandoned for failure to respond. The examining attorney would then suspend the application until September 30, 2011, which is the date of expiration of the extension period and the deadline for complying with the statutory requirements for a statement of use.

If the applicant files a response to the final Office action prior to the expiration of the statutory period for filing a statement of use, and the response overcomes the grounds for refusal and/or complies with any requirement, the examining attorney will remove the application from suspension and withdraw the refusal.

If the applicant files a response to the final Office action prior to expiration of the deadline for filing the statement of use, but the response does not overcome the grounds for refusal and/or comply with any requirement, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," thereby reissuing the final refusal, and the applicant will have six months to respond. See TMEP §§716.06, 1109.16(d).

716.02(g)    Pending Receipt of a Correction, Limitation, Assignment, or other Change to the International Record from the International Bureau

All changes to the international registration (e.g., corrections to the international registration, assignments, cancellations, and changes to the holder’s name and mailing address) must be filed directly with the International Bureau (IB). See Regs Rules 25 and 28; TMEP §1906.01. Moreover, the Madrid System provides an optional procedure for holders to file limitations to the listing of goods and services in a request for extension of protection and changes to a juristic entity’s entity type and citizenship through the IB.

In a §66(a) application, if the applicant states in a timely filed response to an Office action that it has filed a request with the IB that will affect the prosecution of the application, but the USPTO has not been notified by the IB of the change, the applicant should request suspension of the application pending receipt of the filing from the IB. The applicant must support the request to suspend the application with a copy of the filing submitted to the IB.

For example, if it appears that there is an error in the classification of the goods/services in the underlying international registration, the applicant may contact the International Bureau (IB) to request correction of the international registration or to request recordation of a limitation of the list of goods and services for the request for extension of protection. In such cases, the USPTO will suspend prosecution of the §66(a) application if the applicant requests suspension in a timely response to an Office action requiring amendment of the identification, or any other matter, and supports the suspension request with a copy of the request for correction or request to record a limitation, a cancellation, a change of ownership, a change in the name or mailing address of the holder, a change to the entity information for a juristic entity, or any other relevant request filed with the IB. See TMEP §1904.02(c)(iv).

716.02(h)    Pending Recordation of an Assignment Document

During initial examination, the examining attorney should not suspend action or delay issuance of a final action to await recordation of a document. However, in an application under §1 or §44, if the applicant states that a request to record a change of ownership has been filed with the Assignment Recordation Branch but is not yet recorded, and the application is in condition to be approved for publication or registration on the Supplemental Register, the examining attorney should suspend the application until the document has been recorded and the information regarding the assignment or the change of name has been entered into the Trademark database. In an application under §66(a), if the applicant states that a request to record a change of ownership has been filed with the IB but is not yet recorded, and the application is in condition to be approved for publication, the examining attorney should suspend action pending recordation of the document and entry of the information into the Trademark database. See TMEP §§502.02(a)-(c).

Similarly, during examination of the statement of use in an application under §1(b), the examining attorney should withhold final approval for registration until the relevant document has been recorded and the information regarding the assignment or the applicant’s new name has been entered in the Trademark database. See TMEP §502.02(c).

716.02(i)    Pending Registry Agreement with ICANN for Marks Comprised Solely of gTLDs for Domain Registry Operator and Domain Name Registrar Services

With regard to an application for a mark composed solely of a gTLD for domain registry operator and domain name registrar services, the examining attorney may issue an information request under Trademark Rule 2.61(b), 37 C.F.R. 2.61(b), that requires the applicant to submit a verified statement indicating whether the applicant has in place, or has applied for, a Registry Agreement with the Internet Corporation for Assigned Names and Numbers (ICANN) designating the applicant as the Registry Operator for the gTLD identified by its mark. If, in response, the applicant indicates that it has a currently pending application before ICANN for a Registry Agreement for the gTLD identified by its mark, and the applicant has otherwise demonstrated that the mark consisting of the gTLD could function as a mark, the examining attorney may suspend the application until the resolution of the applicant’s pending application with ICANN. See TMEP §§1215.02(d)─1215.02(d)(iv) regarding examination of marks comprised solely of gTLDs for domain registry operator and domain name registrar services.

716.02(j)    Pending Disposition of Expungement or Reexamination Proceedings

A pending trademark application may be suspended pending the disposition of an expungement or reexamination proceeding. See 37 C.F.R §§2.67, 2.117(a). The fact that an expungement or reexamination proceeding is pending before the USPTO that is relevant to the issue of initial or continued registrability of a mark, and that proceeding has not been finally determined, will be considered prima facie good and sufficient cause for suspension. 37 C.F.R §2.67.

The following suspension guidelines apply when an examining attorney has cited, or will cite, a registration under §2(d) of the Trademark Act that is the subject of a petition for expungement or reexamination or an expungement or reexamination proceeding:

  • If the examining attorney is ready to issue a nonfinal refusal of registration under §2(d), and the Trademark database shows that a petition for expungement or reexamination was filed and has not been acted upon, or that an expungement or reexamination proceeding was instituted, the examining attorney must not suspend the application, but must issue the refusal under §2(d). The Office action may include an advisory that, after receipt of a timely response, the application may be suspended pending a determination of whether the expungement or reexamination proceeding will be instituted and/or upon a final determination regarding such a proceeding.
  • If the examining attorney is ready to issue a final refusal of registration under §2(d), and the Trademark database shows that a petition for expungement or reexamination was filed and has not been acted upon, or that an expungement or reexamination proceeding was instituted and has not been terminated, the examining attorney must suspend action pending a determination of whether the expungement or reexamination proceeding will be instituted and/or upon a final determination regarding such a proceeding. If a proceeding is not instituted at the petition stage, or the proceeding was instituted but has been terminated, the examining attorney will remove the application from suspension and issue a final refusal, as appropriate.
  • If the examining attorney is ready to issue a denial of a request for reconsideration of a final refusal of registration under §2(d), and the Trademark database shows that a petition for expungement or reexamination was filed and has not been acted upon, or that an expungement or reexamination proceeding was instituted and has not been terminated, the examining attorney must suspend action pending a determination of whether the expungement or reexamination proceeding will be instituted and/or upon a final determination regarding such a proceeding. If the petition to institute a proceeding is not granted, or the proceeding was instituted but has been terminated, and the applicant has not filed an appeal, the examining attorney will remove the application from suspension and issue an "Examiner’s Subsequent Final Refusal," as appropriate, thereby giving the applicant six months in which to file an appeal. If the applicant filed the request for reconsideration in conjunction with a notice of appeal, the examining attorney will remove the application from suspension and issue a "Request for Reconsideration Denied – Return to TTAB," as appropriate. See TMEP §716.06 regarding removing an application from suspension after a final Office action is issued.

An applicant may, within the proper response period set forth in 37 C.F.R §2.62(a), inform the examining attorney of the filing of a petition for expungement or reexamination regarding a cited registration, or the institution of a proceeding resulting from such a petition, and request suspension of the pending application. See 37 C.F.R §§2.67. This request will constitute a proper response to the §2(d) refusal and may also be done by telephone or email if there are no other issues that require a written response. The examining attorney must confirm that the petition or the notice of institution is in the record of the cited registration, and that the petition has not been acted upon or the proceeding is ongoing, prior to suspending the application, if appropriate. However, the mere filing of a petition to institute an expungement or reexamination proceeding with respect to a cited registration does not constitute a response to an outstanding Office action.

A USPTO or court proceeding is not considered finally determined until an order or ruling that ends the proceeding or litigation has been rendered and noticed, and the time for any appeal or other further review has expired with no further review sought. Id. Accordingly, an expungement or reexamination proceeding is considered to end when a notice of termination under 37 C.F.R §2.94  has been issued. See TMEP §1716.04(e) regarding notice of termination. If a registration subject to an expungement or reexamination proceeding is cited in a refusal under §2(d) against a pending application, and is not withdrawn for other reasons, the refusal cannot be withdrawn until the Trademark database shows that the proceeding is terminated and the registration is cancelled. Cf. TMEP §1716.02(e).

716.03    Applicant’s Arguments Against Suspension

If an examining attorney suspends action on an application, and the applicant believes the suspension is improper, the applicant may file a request to remove the application from suspension.  The applicant should state the reasons for the belief that the suspension is improper and attach any relevant evidence.

If persuaded by the request, the examining attorney should remove the application from suspension, resume examination of the application, and take appropriate action.

If not persuaded by the request, the examining attorney must issue a new suspension action that addresses the applicant’s arguments and explains the reasons why the request is not granted.  The applicant’s recourse is to file a petition to the Director to review the examining attorney’s action continuing the suspension.  The Director will reverse the examining attorney’s action only where there has been clear error or an abuse of discretion.  See TMEP Chapter 1700 for information about petitions.

If an applicant argues preemptively against suspension based on a conflicting mark in a prior-filed application, and the examining attorney finds the arguments unpersuasive, the examining attorney must include a statement to that effect in the suspension notice. The recommended practice is to briefly address the merits of the unpersuasive arguments prior to an initial suspension.

716.04    Suspended Docket Checked

A legal instruments examiner (LIE) will review each case in the suspended docket at least every six months to determine whether continued suspension is appropriate.  If the LIE determines that the application should remain suspended, he or she should report the suspension check in the Trademark database.  If suspension is no longer necessary, the LIE will notify the examining attorney and the examining attorney will take the appropriate action.

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. Upon receipt of such a proper response to such a suspension inquiry, the examining attorney must issue a new suspension letter.

If the applicant does not respond to the suspension inquiry, the application will be abandoned for failure to respond.

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).

716.06    Suspension After Final Action

If the examining attorney determines that action on an application should be suspended after issuance of a final refusal, the examining attorney must issue a suspension notice.  This may occur, for example, when the applicant files a petition to cancel a cited registration or in the limited circumstance in a Section 1(b) application when the applicant files a timely "insurance" extension request but the six-month response period may expire before the end of the extension period.  See TMEP §§716.02(a) and (f), 1109.16(d).  The examining attorney should not "withdraw the finality" of the refusal in order to suspend; however, in the suspension notice, the examining attorney should inform the applicant that the refusal of registration is continued but that it is not necessary to respond to the final refusal until the application is removed from suspension.

If the application is eventually removed from suspension and the grounds for refusal remain operative, the examining attorney should issue an "Examiner’s Subsequent Final Refusal," thereby reissuing the final refusal, and the applicant will have six months to respond.  It is inappropriate to remove the case from suspension and immediately declare the application abandoned.