A trademark that falsely suggests a connection with individuals (living or dead), institutions, beliefs, or national symbols is ineligible for registration with the United States Patent and Trademark Office (USPTO). The Lanham Act (which is the federal law that governs trademark registration in the U.S.) requires the USPTO to refuse registration of a trademark if it concludes that a false suggestion of a connection exists. Unlike other types of rejections (such as merely descriptive and surname refusals), a showing of acquired distinctiveness cannot overcome a false suggestion of a connection refusal under any circumstances.
You’ll receive a trademark specimen refusal if the specimens you submitted to the United States Patent and Trademark Office (USPTO) are inappropriate or insufficient to demonstrate use of your trademark in connection with the products and/or services listed in your trademark application. If the specimens don’t meet the USPTO’s strict requirements, the examining attorney will issue a trademark office action explaining why the specimens cannot be accepted.
A USPTO Suspension Inquiry is a written communication from the United States Patent and Trademark Office (USPTO) inquiring about the status of the event that caused the suspension of your trademark application. For example:
- The examining attorney may have previously suspended action on your application pending the outcome of a trademark opposition you filed against a conflicting trademark in a prior-filed application. In that case, you may periodically receive a Suspension Inquiry asking whether the opposition is still ongoing or whether it has been terminated.
- The examining attorney may have previously suspended action on your application pending the resolution of a trademark cancellation you filed against a conflicting trademark registration. In that case, you may periodically receive a Suspension Inquiry asking whether the cancellation is still ongoing or whether it has been terminated.
- If you filed your trademark application under Section 44(d) (U.S. application based on ownership of a foreign trademark application), and the examining attorney previously suspended action on your application, you’ll periodically receive a Suspension Inquiry asking whether the foreign trademark application has either become a registration or gone abandoned.
Simply put, a Letter of Suspension means that a trademark application has been put on hold for a particular reason. It’s not unusual to receive a Letter of Suspension from the United States Patent and Trademark Office (USPTO) a few months after filing a trademark application or a response to a trademark office action. Of course, many people who file their own trademark applications, or choose to use a do-it-yourself trademark service such as Trademark Engine, LegalZoom, or Trademarkia, are surprised to receive a Letter of Suspension and understandably have no idea what it means or whether it requires any kind of response. This article explains why trademark applications are sometimes suspended and what you should do if your application is suspended.
Potential clients frequently ask me if they can trademark a phrase. Well, whether you can register a phrase with the United States Patent and Trademark Office (USPTO) essentially depends on (1) the nature of the phrase itself, and (2) the manner in which the phrase is used. If the phrase doesn’t indicate the source of your products/services, or doesn’t identify and distinguish your products/services from those offered by your competitors, then it cannot be protected as a trademark. In other words, you cannot trademark a phrase unless it serves a branding purpose (i.e. it functions as a slogan or tagline). If the USPTO determines that your phase fails to function as a trademark, it will send you a trademark office action explaining why your phrase is being refused registration.