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.