Before we begin talking about Suspension Notices that specify a prior pending application, remember that one of the most common refusals is a Section 2(d) Refusal – Likelihood of Confusion.  

A Section 2(d) Refusal - Likelihood of Confusion means that the USPTO believes that another registered trademark for related goods or services is confusingly similar to your trademark.  Note that this refusal is based on a REGISTERED trademark.

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But what happens if somebody applied earlier than you, and their trademark might be confusingly similar to your trademark, but their application hasn’t yet registered?

In other words, suppose you submitted the trademark JUBILEE for t-shirts on June 1, 2021.  But one month earlier, another applicant submitted the trademark JUBILEE for t-shirts on May 1, 2021.  That applicant filed their trademark before you, and it is clearly confusingly similar to your trademark, but it hasn’t yet registered into a trademark.

What that means is that the USPTO has identified a pending application that may be confusingly similar to yours.  However, it is only when that application actually registers that the USPTO will decide whether to issue a Section 2(d) Refusal based on that trademark.

A suspension notice that specifies a prior pending application does not automatically mean that this prior pending application will eventually become a Section 2(d) Refusal!

Applications are refused for MANY reasons, so it is possible that the prior application might become abandoned.

Or, the pending application might register, and the USPTO might determine then that a Section 2(d) Refusal shouldn’t be issued because the trademarks are not confusingly similar.

Or, the pending application could register, and the USPTO might determine that the now-registered trademark is confusingly similar to yours, and it will then issue a Section 2(d) Refusal.  In that case, you will receive a formal correspondence from the USPTO as a Non-Final Office Action that explains this refusal.

When you receive a Suspension Notice regarding a prior pending application, it means that the USPTO is awaiting the outcome of that prior pending application before it makes the decision on whether it is confusingly similar to your trademark.

Think of it like a “pause”.

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‍So, what do you do when you receive a Suspension for a Prior Pending Application?

Well, you can choose whether or not to respond to this Suspension Notice.

You may simply choose not to respond to this Suspension Novice.  Why? Because if and when that application DOES register, and it becomes an actual Section 2(d) Refusal, the USPTO will issue another Non-final office action.  At that point, the prior pending application will become a Section 2(d) Refusal, and you’d have the opportunity to provide a Response then.  So, no response is necessary for you to provide at this point.

However, if you do want to respond, you can by selecting  “Response to Suspension Inquiry or Letter of Suspension”.  Here, you could make arguments about why you do not believe the prior pending trademark is confusingly similar to your trademark.  You can review the Section 2(d) Refusal - Likelihood of Confusion video in the Trademarks Classroom for more information on submitting responses for confusingly similar trademarks.

So, to recap, a Suspension Notice with a Prior Pending Application is simply the USPTO stating that it has determined that there is a trademark that was filed before yours – but has not yet registered – that MIGHT be confusingly similar to yours.  BUT an actual determination will be made if and when that prior pending application becomes registered.  No response is required from you at this point.

If that prior pending application becomes registered at a later date, and the USPTO argues that it is confusingly similar to yours, you will receive ANOTHER Non-final office action with that Section 2(d) Refusal.  At that point, you’d have the opportunity to respond to that Non-Final Office Action with why you don’t believe the trademarks are confusingly similar.

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