Trademark Blog

What is a USPTO Suspension Inquiry?

USPTO Suspension Inquiry

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.
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What is a USPTO Letter of Suspension (a/k/a Suspension Notice)?

USPTO Letter of Suspension

Simply put, a Letter of Suspension (a/k/a Suspension Notice) 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) 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.

Who is the Applicant of a Trademark Application?

applicant of a trademark

Understanding who should be listed as the applicant of a trademark application in the USPTO is absolutely critical. Naming the wrong applicant is one of the most common errors made by people who choose to file their own trademark applications. The worst part is that you generally don’t even know you made the error until you try to enforce your trademark registration against an alleged infringer and, in response, the infringer files a trademark cancellation against your registration on the basis that it’s void. That’s one nasty surprise you don’t want. The good news is that this mistake is easily avoidable if you spend some time carefully considering which individual or entity should be named as the applicant.

Can I Trademark a Name and Logo Together in One Application?

Potential clients frequently ask me whether they should trademark a name and logo together in one application. Well, here’s the answer. If the name of your product/service is distinctive (i.e. a name that’s eligible for registration on the Principal Register and not only on the Supplemental Register), there’s almost no benefit to applying to register your name and logo together. In fact, the only benefit is that you’ll save money by filing one trademark application with the United States Patent and Trademark Office (USPTO) rather than two. But, is saving a few hundred dollars really a good enough reason to seek registration of your name and logo together rather than separately?

What is the Discovery Conference in a Trademark Opposition?

discovery conference

The discovery conference is the first thing the parties must do in a trademark opposition after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties discuss specific matters related to the opposition prior to the opening of the discovery period. The discovery conference may be conducted between the parties in-person, but it’s almost always done over the phone. Generally speaking, the TTAB doesn’t participate in the discovery conference. However, one or both of the parties may request that a TTAB representative help facilitate the conference, which could be especially useful if at least one of the parties isn’t represented by an attorney.