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

Tue Jan 28 05:02:01 UTC 2025

Well, that makes sense because I had a case where the examiner refused to suspend my client’s application because the cited registration still had about 6 weeks to go until the Section 8 deadline so after those 6 weeks, we just filed a request for reconsideration requesting the suspension. Your examiner was more efficient by saving him or herself an extra transaction in the application.

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Michael Brown via E-trademarks
Sent: Monday, January 27, 2025 8:36 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Michael Brown <michaeljbrownlaw at gmail.com>
Subject: [EXT] Re: [E-trademarks] Clarification on Suspending Action Pending Renewal of a Cited App

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.

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On Mon, Jan 27, 2025 at 6:58 PM Katherine Markert via E-trademarks <e-trademarks at oppedahl-lists.com<mailto: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

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com<mailto:e-trademarks-bounces at oppedahl-lists.com>> on behalf of Spencer Cross via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>>
Sent: Monday, January 27, 2025 5:35:14 PM
To: Carl Oppedahl <E-trademarks at oppedahl-lists.com<mailto:E-trademarks at oppedahl-lists.com>>
Cc: Spencer Cross <spencer at counselforcreators.com<mailto: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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