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

Mon Jan 27 23:19:13 UTC 2025

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.
Yeah, painfully aware of that. Mostly just asking to confirm/correct my
understanding in order to properly advise clients moving forward.

On Mon, Jan 27, 2025 at 2:49 PM Kevin Grierson <kgrierson at cm.law> wrote:
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.

Kevin Grierson

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Partner

757-726-7799

866-521-5663

kgrierson at cm.law

Please note: Culhane Meadowsis now CM Law

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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spencer at counselforcreators.com

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SPENCER CROSS
Attorney

680 E. Colorado Blvd. Ste. 180Pasadena, CA 91101Main: (323) 657-3380
http://counselforcreators.com
spencer at counselforcreators.com

Click here to schedule a call with me.

Please direct general inquiries about billing, subscriptions, etc. to 
hello at counselforcreators.com

CONFIDENTIALITY NOTICE: The information contained in this e-mail and any
accompanying attachment(s) is intended only for the use of the intended
recipient and may be confidential and/or privileged. If you are not the intended
recipient, unauthorized use, disclosure or copying is strictly prohibited and
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