Trademarks are often a key part of growing and legitimizing a business. A cohesive and distinctive brand can help solidify a business’s presence in the market, as well as protect it from conflict with other similar businesses. One of the ways to protect this brand is through a trademark application, which can cover any relevant marks under intellectual property laws when approved.
However, the process of submitting a trademark application can be lengthy and complicated, often taking up to eighteen months to complete. In the meantime, several factors may need to be addressed for the application to progress. One of these challenges a nascent trademark may face is a USPTO trademark suspension letter, which can hinder the application process and even lead to sanctions if handled improperly.
For more information on trademark suspensions and how to address them, consider speaking with a skilled Chicago IP lawyer from Sullivan & Carter, LLP. Schedule a consultation by calling the office at (929) 724-7529.
The registration process for a trademark is rarely straightforward. While one can generally submit an application without too much effort, this application is considered pending until it is officially approved by the USPTO examining attorney. This process can take up to eighteen months, requiring a period for examination of the trademark, action from the applicant if there is insufficient information, and an additional period for the applicant to submit a statement of use.
If the applicant is unable to meet these requirements by the established deadlines, the application will be considered abandoned. This means that the USPTO is no longer reviewing or working to process the trademark, and you may need to submit the requisite forms and paperwork to revive the abandoned trademark. However, if the USPTO approves the application, it is registered and protected by intellectual property laws.
However, if the examining attorney discovers that there is a trademark conflict or incomplete application, they may suspend the application for investigation. In this case, the attorney will send a trademark suspension letter to notify the applicant of the change. This is technically, an office action issue, which will occur between the examination and publishing for opposition.
A trademark suspension letter, however, is not the same as an abandoned or dead application. Generally, there are several steps for the applicant to take to address the suspension and continue with the registration process.
For more information on trademark suspension letters, consider contacting an experienced intellectual property attorney from Sullivan & Carter, LLP.
A USPTO examining attorney may submit a trademark suspension letter for several reasons. These do not necessarily mean that the trademark cannot be registered, but they generally require some action on the part of the applicant.
The most common reason for a USPTO trademark suspension letter is confusion between a previously submitted trademark. If a similar trademark has priority over the applicant’s, their application may be considered first. Therefore, conflict with an existing trademark may be cause for suspension.
This conflict could be with a prior submitted application, in which case the applicant’s trademark will be suspended until the prior trademark is either registered or abandoned. If the prior application is registered, then others like it may be denied or sent back for their similarity to the existing trademark.
Applicants from outside the United States may need to contend with suspension due to a pending foreign application. Many foreign applicants use the Madrid Protocol to register a trademark internationally. However, the Madrid Protocol requires the trademark to be registered in the applicant’s home country already. If the trademark is still pending registration in the applicant’s home country, they may receive a trademark suspension letter, suspending their application until the original trademark is approved.
In addition, the applicant can request that their own trademark be suspended for a reason of their choosing. While the applicant themselves cannot suspend their own application, they can request their examining attorney. If the attorney agrees with the reason presented, they can suspend the application and dispense a trademark suspension letter.
Trademark suspension letters do not mean that the application has been abandoned or denied. Suspension is a common element of the process of registering a trademark. What trademark suspension means is that another factor has interfered with the process, and the examining attorney is waiting on further information to proceed. Depending on the circumstances surrounding the suspension, this status could remain for six months or even several years.
A USPTO trademark suspension letter may be misleading because it states that no response is necessary from the applicant. However, there are several proactive steps that an applicant can take to determine their personal next steps. While they may not be able to affect the suspension process of the USPTO, they can make choices regarding their personal trademark pursuit.
Firstly, the applicant can file an opposition while the prior trademark is listed in the Official Gazette. This could invalidate the prior trademark if certain criteria are met. If the opposition period has passed, however, the applicant could submit a Petition to Cancel to the USPTO.
While there is generally nothing to be done to avoid suspension once an application has been submitted, there are several steps to be taken to avoid suspension before submission. Making sure that your application is filed correctly and completely is generally the most effective way to avoid suspension. Being thorough beforehand can help increase the chances of a smooth trademark application process.
Listed below are several frequently asked questions regarding trademark law and trademark suspension letters.
A trademark suspension letter does not affect the viability of a trademark. It simply states that the process has been put on hold due to some form of conflict.
Protecting a brand can be time-consuming and difficult, especially when it requires making decisions on whether or not to pursue contested trademarks and how to navigate the legal landscape of the USPTO. In addition, trademark suspension letters can stall the process indefinitely, leaving your brand unprotected. The counsel of a skilled Chicago intellectual property lawyer from Sullivan & Carter, LLP can help clarify the process and present options for moving forward. Consider scheduling a consultation by calling the office at (929) 724-7529.
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