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Trademark Application Suspension Notices - What to Do Next
Trademark Application Suspension Notices - What to Do Next

Trademark suspension notices raise a number of legal and strategic uncertainties. Discuss next steps with your trademark attorney.

Updated over a week ago

A trademark suspension notice is a communication from the U.S. Patent and Trademark Office (USPTO) indicating that the examination of your trademark application is temporarily paused. This pause does not mean your application has been denied. Instead, it signifies that there are pending matters or unresolved questions that must be addressed before your application can proceed.

Reasons for Suspension

Suspensions can occur for several reasons. One common cause is the existence of a prior-pending application for a similar mark applied for related goods or services. The USPTO must determine which application has priority, often waiting for the earlier-filed application to either register or be abandoned.

Another reason for suspension might involve waiting for the resolution of a trademark opposition proceeding or litigation related to the mark in question. Essentially, the USPTO is holding off on making a decision about your application until these external uncertainties are resolved.

Suspension notices should not be ignored. What happens if, after waiting three or more years in suspension (in the worst case scenario), you have to rebrand? Make a plan now.

Downsides of Extended Suspension

An extended suspension period, which can last up to three years or more, carries several downsides:

- Market Uncertainty: During suspension, the legal protection of your mark is unclear, which can lead to market uncertainty and potentially embolden competitors.

- Planning Difficulties: Without trademark registration, long-term branding and marketing strategies can be difficult to finalize, affecting business planning and growth.

- Financial Implications: There are significant financial risks if you invest in a brand for several years or more and ultimately can't keep it. Imagine having to have to rebrand to avoid trademark infringement issues after three or more years of marketing activities.

Strategies to Address a Suspension Notice

When reviewing a suspension notice, there are several strategies you should consider:

1. Do Nothing and Wait: In some cases, it may look like the issue with the other trademark blocking yours may be resolved in a reasonable amount of time (3 or 4 months). If so, the best approach in this type of situation simply just to wait and see what happens.

2. Consider Negotiation (if appropriate): If the conflict involves another party's rights, consider reaching out to negotiate a coexistence agreement. Such agreements can often resolve the issues that led to the suspension.

Note coexistence agreements are usually only an effective approach if you have been using your trademark longer than the other party you are seeking an agreement with. These agreements are time consuming and typically require attorney review and so the other party will need to incur legal expenses to enter into an agreement with you.

3. Cut Your Losses and Rebrand: Given that you could be waiting for three years or more to find out if you can ultimately keep your trademark, it may make sense to start the rebranding process now if that is feasible. Find another trademark, secure its registration at the USPTO, and slowly phase out your old brand. This removes the grey cloud of uncertainly over your business and keeps you in control of the outcomes.

4. Seek Legal Advice: Navigating a trademark suspension can be complex. Your rights in your mark are now caught up in the legal status of another company's mark. An experienced trademark attorney can provide invaluable advice on the best course of action, considering the specific circumstances of your case.

Because of the downsides involved having a mark on suspension, the worst possible approach is to do nothing and simply wait it out without seeking out advice first.

When Will My Suspension End?

This question will require speaking with your attorney as the answer requires evaluating the procedural status of the applications blocking yours. In some cases it may just be a few months. In other cases, it could be three or more years, with actions taken by the other party determining when your suspension will end.

Note your trademark examining attorney at the USPTO periodically reviews the status of the trademarks that are blocking your trademark application. When something changes, your trademark examiner will take your trademark off of suspension.

If there is still an issue, they will issue an Office Action that you and your attorney will be notified of automatically.

If the issue has resolved itself, for example where a blocking trademark has been canceled because they can't fix their own application, then your application will simply resume being processed. You will typically receive a notice that your application has been Published for Opposition, which indicates that your application is no longer suspended.

Conclusion

Receiving a trademark suspension notice can be a challenging hurdle in the process of securing your brand's trademark. However, with the right strategies and legal advice, you can navigate through this period more effectively. Understanding the reasons behind the suspension and actively managing the situation can ultimately lead to a successful resolution. Remember, a suspension is not the end of the road—it's a detour that, with careful navigation, can still lead to your desired destination: the registration of your trademark.

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