TMEP 1208.02(c): Suspension of Later-Filed Application

October 2017 Edition of the TMEP

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1208.02(c)    Suspension of Later-Filed Application

When the later-filed application is in condition for publication or issue except for the conflicting mark in an earlier-filed application, either because no action was necessary on the application as filed or because examination on other matters has been brought to a conclusion, the examining attorney must suspend the later-filed application until the mark in the earlier-filed application is registered or the earlier-filed application is abandoned. 37 C.F.R. §2.83(c); see In re Direct Access Commc’ns (M.C.G.) Inc., 30 USPQ2d 1393, 1394 (Comm’r Pats. 1993). If the examining attorney discovers that a previously filed pending application was abandoned, but that a petition to revive is pending, the examining attorney should suspend the later-filed application pending disposition of the petition to revive.

Action on the later-filed application must also be suspended when the application is in condition for a final action but for the conflict with the earlier-filed application. The letter of suspension should repeat any outstanding issues, but these issues should not be made final. See TMEP §716.02(c) for further information about suspension and removal from suspension in this situation.

If the Office action informing the applicant of the suspension is the first action in the case, the examining attorney should include an electronic copy or a printout from the USPTO’s automated search system of the information for the mark in each earlier-filed conflicting application.