716.02(d) Inter Partes or Court Proceeding
If an examining attorney learns of a proceeding pending before the Trademark Trial and Appeal Board or a court that may result in a decision that supports a refusal of registration of an applicant’s mark, the examining attorney must issue the refusal and give the applicant an opportunity to respond before suspending the application. If the applicant is not a party to the inter partes or court proceeding, the examining attorney must explain why the proceeding is relevant to the registrability of the applicant’s mark.
When an applicant requests suspension because a proceeding relevant to the registrability of the applicant’s mark is pending before the Board or a court, the applicant must submit a copy of the relevant pleadings, the docket number of the proceeding, and a written explanation of why the proceeding is relevant to the registrability of the mark. Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is cancellation, abandonment, or amendment of a relevant application or registration. However, when resolution of the court action requires the court to consider questions of USPTO policy or procedure, the examining attorney should not assume that the court would prefer to decide such questions absent the USPTO’s decision in the consideration of an application. In these instances, action on an application should generally not be suspended. It is important to review the relevant pleadings, including the complaint and answer, before determining whether suspension is appropriate. The Office of the Solicitor may be consulted if there is a question as to whether suspension of the application is appropriate.
A third party who wishes to request suspension of a pending application because a proceeding relevant to the registrability of the mark is pending before a court must do so by filing a letter of protest. See TMEP §1715–1715.06. The litigation must be specifically identified and a copy of the relevant pleadings must be enclosed. The litigation must involve a federally registered mark or prior pending application, and the protestor must allege that there is a likelihood of confusion between this mark and the mark in the application that is the subject of the letter of protest. Normally, a court proceeding is not considered relevant to the registrability of a mark unless the remedy requested in the proceeding is abandonment or amendment of the application that is the subject of the letter of protest. If the letter of protest is granted, the examining attorney is informed that a request for suspension has been received based on an alleged likelihood of confusion with a registered mark or prior pending application that is the subject of pending litigation.
Before an application is suspended, the applicant must respond to all outstanding issues raised in the examining attorney’s Office action that are not related to the proceeding. The examining attorney should not suspend the application unless all matters not related to the proceeding are resolved or in condition for final action.
See TMEP §716.02(a) regarding suspension pending disposition of an applicant’s petition to cancel a cited registration under 15 U.S.C. §1064, TMEP §716.02(c) regarding suspension of later-filed conflicting marks, TMEP §716.03 regarding the applicant’s request to remove an application from suspension, and TBMP §605.03(c) regarding filing an amendment or consent agreement in a pending application owned by the plaintiff pursuant to a settlement agreement between the parties in an ex parte proceeding before the Board.