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

[Katherine Markert]

Hi Spencer,

The EA has the discretion to suspend when the cited reference is in a maintenance or renewal window.  I don't know the precise TMEP section off the top of my head but the word "discretion" may be in the relevant TMEP section, if you run a search.

Best,
Katie

Get Outlook for Android<https://aka.ms/AAb9ysg>
________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Spencer Cross via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Monday, January 27, 2025 5:35:14 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

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


--
SPENCER CROSS
Attorney

[https://docs.google.com/uc?export=download&id=1oTFCmcwnPvSVb4Qy2jVbxBBoQBHc4IeZ&revid=0B-bTqxvfE4lxSGIzU3pWV05RblpUK0JKV3lReFlBQWRleHJBPQ]
680 E. Colorado Blvd. Ste. 180
Pasadena, CA 91101
Main: (323) 657-3380
http://counselforcreators.com
spencer at counselforcreators.com<mailto:spencer at counselforcreators.com>

Click here to schedule a call with me<https://counselforcreators.com/consult/clients/sc/>.

[X][X][Facebook]<https://www.facebook.com/counselforcreators/> [Instagram] <https://www.instagram.com/counselforcreators/>  [Yelp] <https://www.yelp.com/biz/counsel-for-creators-los-angeles-10>  [LinkedIn] <https://www.linkedin.com/in/spencercross/> [X]

Please direct general inquiries about billing, subscriptions, etc. to hello at counselforcreators.com<mailto: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 may be unlawful. If you have received this communication in error, please immediately notify the sender spencer at counselforcreators.com<mailto:spencer at counselforcreators.com> and delete the original message and all copies from your system. Thank you.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250127/2f864ce2/attachment.html>