[E-trademarks] Clarification on Suspending Action Pending Renewal of a Cited App

Mon Jan 27 22:49:01 UTC 2025

Interesting—never had that happen, as the TMEP only requires them to suspend when the prior registration is in or past the grace period.

The problem is that I don’t think there’s anything you can do about it.  You can’t insert yourself into the third party’s application process before the opposition period, even if the examiner didn’t have the authority to suspend the application, and it appears from the language of 37 CFR 2.67 gives the examiner some discretion to suspend in any event.

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Spencer Cross via E-trademarks
Sent: Monday, January 27, 2025 5:35 PM
To: Carl Oppedahl <E-trademarks at oppedahl-lists.com>
Cc: Spencer Cross <spencer at counselforcreators.com>
Subject: [E-trademarks] Clarification on Suspending Action Pending Renewal of a Cited App

EXTERNAL EMAIL
Hi all,

My understanding based on TMEP § 716.02(e) and previous experience is that if an EA is ready to issue a final 2(d) refusal and the cited mark in the OA has a pending renewal, the EA should only suspend action on the application if the cited app is in the grace period for its §8. If the cited app is just within the one-year §8 filing window, not the grace period, the EA has always issued the final refusal in my experience.

We're watching a prior-filed app that was in position to receive a final 2(d) refusal and the cited mark's first §8 deadline isn't until 10/25. The applicant didn't respond to the 2(d) but instead requested suspension and the EA granted it instead of issuing the final refusal even though the cited app is not within its §8 grace period.

In rereading TMEP § 716.02(e), I see now that it only addresses what an EA must do if they're ready to issue a final 2(d) and the cited app is within its grace period or the grace period has passed. But it doesn't explicitly address what they must do if the cited app is just within its one-year §8 window, NOT the grace period. That leads me to believe that it's up to the EA to decide whether applicant expressly requesting suspension constitutes "good and sufficient cause" , but can anybody confirm?

Thanks for any insight,
Spencer

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