It’s happened to the best of us -- the United States Patent and Trademark Office ("PTO") suspends action on an application based on a potential likelihood of confusion with a prior filed/pending application, essentially leaving your application in limbo until the cited application registers or abandons, perhaps years down the road. Unless addressed proactively, the suspended application will typically be returned to the Examining Attorney for a status check every six months until the prior-filed mark (1) registers, (2) is withdrawn/abandoned, or (3) is no longer relevant to the refusal.
Instead of sitting back and waiting for the PTO to decide the fate of your application, there are four proactive steps to consider to help register your mark sooner.
I. Respond with Arguments and Amendments
First, suspensions are essentially potential refusals, based on the (often) incomplete record of a pending third-party application. If an applicant is able to respond to the suspension with arguments and relevant evidence, the PTO will consider that information and may withdraw the suspension. At the very least, a response will prompt the PTO to provide further insight as to the reasons for the suspension and what might be needed to allow the suspension to be withdrawn.
The PTO does not issue suspensions where the distinctions between marks and goods/services are obvious.Typically, a suspension is issued because of broadly identified goods/services in one of the applications at issue. For example, the wording "medical services" is acceptable under PTO guidelines, but in practice could encompass many distinct activities. In many cases, a simple amendment to the goods or services may be sufficient for the Examining Attorney to withdraw the suspension and allow the mark to proceed to publication.
To help avoid unnecessary suspensions and refusals, understand the landscape of the Register before drafting an identification, particularly for marks solely comprised of a word that may not be unique to the particular industry.
II. Respond with Arguments and Information
Second, it may also be possible to overcome a suspension during pendency of the cited application by providing additional information about the filed-for goods/services to illustrate the differences in how the goods/services are used or travel in trade. The Examining Attorney, in trying to determine how closely related the goods/services are, will look to any specimens of record and may even conduct a cursory internet search. However, the parties at issue will be privy to more specific information as to trade channels and methods of sale, all of which can be useful in overcoming 2(d) refusals.
III. Seek Consent
Third, the suspension period may provide time in which to seek consent to register from the prior applicant -- particularly in cases where the second-filer owns prior common law rights, or where the parties are familiar enough with one another through business channels to know that actual confusion is not likely. Provided the agreement passes muster with the PTO, consents can be an efficient way to allow for registration of two marks that the owners believe would not create confusion as actually used in the marketplace.
IV. Wait and Monitor
The final strategy for dealing with suspensions is to do nothing but monitor the status of the cited prior filed application. Assuming the cited application is still in the examination phase, it may be amended to sufficiently narrow or distinguish the goods/services, or the channels of trade in which they travel. It may also go abandoned for failure to submit a Statement of Use, or comply with other PTO requirements. Monitoring the status of the cited application may provide an opportunity to remove the suspension earlier than when the PTO would otherwise revisit the suspended application.
This article appeared in the June 2017 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.