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

[Michael Brown]

I was successful in requesting suspension of a client's application before
the cited reg hit the section 8 deadline, but that deadline was, as I
recall, one or two months after my OA response deadline. I was pleasantly
surprised that the suspension was granted.

Michael Brown
Michael J Brown Law Office
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On Mon, Jan 27, 2025 at 6:58 PM Katherine Markert via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
>
> --
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