716.02(k)    Pending Disposition of Post Registration Audit

The USPTO conducts random audits of §8 and §71 affidavits or declarations in which the mark is registered for more than one good or service per class under 37 C.F.R §2.161(b). TMEP §1604.22 and §1613.22. When a registration that is the subject of a post registration audit forms the basis for a §2(d) refusal as to a pending trademark application, the application may be suspended pending the disposition of the audit.

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 post registration audit:

  • If the examining attorney is ready to issue a nonfinal refusal of registration under §2(d), the examining attorney must not suspend the application, but must issue the refusal under §2(d). The applicant may state in a timely filed response to the Office action that the cited registration is the subject of an ongoing post registration audit that may render the §2(d) refusal moot, and may request suspension of the application pending acceptance of the post registration maintenance document or cancellation of the registration in full or in part.
  • If the examining attorney is ready to issue a final refusal of registration under §2(d), and the Trademark database shows that the cited registration is the subject of an ongoing post registration audit, the examining attorney must suspend action pending acceptance of the post registration maintenance document or cancellation of the registration in full or in part.
  • 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 the cited registration is the subject of an ongoing post registration audit, the examining attorney must suspend action pending acceptance of the post registration maintenance document or cancellation of the registration in full or in part. If the maintenance document is accepted and the grounds for refusal remain operative, the examining attorney will remove the application from suspension and issue a "Subsequent Final Action," as appropriate, thereby giving the applicant a new response period 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," as appropriate, and the Trademark Trial and Appeal Board will be notified to resume the appeal. See TMEP §716.06 regarding removing an application from suspension after a final Office action is issued.