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).