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

Tue Jan 28 17:55:56 UTC 2025

That makes sense with those facts, but that's not the case here. I get the
reasoning for an automatic suspension when the grace period is in effect or
maybe even just imminent because it's a strong indicator that the cited mark
isn't going to renew. But in this case the cited mark still had close to 11
months before the grace period even began at the time of suspension. So the
deadline for the prior-filed app to respond to a final refusal with an extension
or even a subsequent petition to revive would both have been before the cited
app's grace period even began. And the only reason the prior-filed app even got
into the §8 window to begin with is that they bungled an earlier response to a
non-final OA (which effectively bought them an add'l six months by raising a new
issue to generate a non-final OA instead of the final OA they should have
received).
Anyway, not much we can do about it now, but I just wish there was as clear of a
rule here as there is when the grace period is in effect. Given how inconsistent
examiners are, I think assuming they're typically going to grant a requested
suspension is not always going to pan out.
On Mon, Jan 27, 2025 at 9:20 PM Alex Butterman via E-trademarks
<e-trademarks at oppedahl-lists.com> wrote:
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. 

Alex Butterman

Partner                   

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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.

Michael Brown
Michael J Brown Law Office

354 Eisenhower Parkway

Plaza I, 2nd Floor, Suite 2025

Livingston, NJ  07039

michaeljbrownlaw at gmail.com

michael at mjbrownlaw.com

www.mjbrownlaw.com
+1 973-577-6300  fax +1 973-577-6301

Google Voice +1 973-637-0358

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

--------------------------------------------------------------------------------

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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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
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