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) 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.
What Does a Letter of Suspension Mean for My Trademark Application?
A Letter of Suspension doesn’t affect the validity or viability of your trademark application. Your trademark application remains active, live, and “in line,” but no further action will be taken on your application until the situation that occasioned the suspension is resolved. In other words, your trademark application just sits at the USPTO and nothing else happens until the examining attorney determines that removal of your application from suspension is appropriate. Sometimes, action on your application may only be suspended for a few months. But, in some cases, your application could be suspended for many years.
When Does the USPTO Issue a Letter of Suspension?
The USPTO will generally issue a Letter of Suspension under one of the following three circumstances:
- The examining attorney believes there could be a likelihood of confusion between your mark and another mark in a trademark application that was filed before yours. The examining attorney will suspend action on your application until the prior-filed application either becomes a trademark registration or goes abandoned.
- The examining attorney believes there is a likelihood of confusion between your mark and another mark in an existing trademark registration. If the trademark registration is in its grace period for the owner to file a Section 8 Declaration of Use, Section 71 Declaration of Use, or Section 8 and 9 Renewal, the examining attorney will suspend action on your application until the registration is either maintained/renewed or is canceled by the USPTO.
- If you filed your trademark application under Section 44(d) (U.S. application based on ownership of a foreign trademark application), the examining attorney will suspend action on your application until the foreign trademark application becomes a registration and you submit a copy of the foreign registration to the USPTO.
How Do I Respond to a Letter of Suspension?
Although you’re not required to respond to a Letter of Suspension, you may choose to do so in some cases. For example, if action on your trademark application was suspended due to a prior-filed application, and you now see that the prior-filed application has either matured into a registration or has gone abandoned, you could file a response to the Letter of Suspension requesting that the examining attorney remove your application from suspension and to take appropriate action on it. If you don’t file a response, your application will simply remain suspended until the USPTO conducts its own periodic check (which happens about every six months) and sees that your application should be removed from suspension.
Similarly, if action on your trademark application was suspended due to an existing registration that was in its grace period, and you now see that the registration has either been maintained/renewed or has been canceled, you could file a response to the Letter of Suspension requesting that the examining attorney remove your application from suspension and to take further action on it. Again, if you choose not to file a response, your application will remain suspended until the USPTO performs its own periodic check.
Finally, if action on your application was suspended pending the issuance of a foreign trademark registration, you could respond to the Letter of Suspension by submitting a copy of the foreign trademark registration once you receive it. If you don’t, the examining attorney will periodically send you what is called a Suspension Inquiry, which is essentially a document requesting that you inform the USPTO as to whether the foreign trademark registration has issued or not. If you fail to properly respond to the Suspension Inquiry by the deadline, your application will go abandoned.
Do You Have Questions or Concerns?
I’m experienced US trademark attorney Morris Turek. If you’ve received a Letter of Suspension from the USPTO and perhaps need some help understanding what it means for your trademark application, please don’t hesitate to contact me for your free consultation. You can call me at (314) 749-4059, send an email to morris@yourtrademarkattorney.com, or submit a brief message using my contact form located below. I look forward to hearing from you soon.