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Trademark Application Suspended due to prior filing of another applicant.

Los Angeles, CA |

I received a notice of suspension pending a prior filing. I researched the prior filing and the other company does have a prior application date, by about a year, they did not apply for a drawing/text logo only a text logo and we only share one similar word mine is "Optimum" theirs is "Optimize". Their application is also suspended due to an opposition from a Canadian company . My company and the US company with prior filing are in the same industry, so I understand a possible conflict due to same industry, however there is significant distinction in the logos, specifically mine includes a drawing, theirs do not. Additionally we have an earlier "first use in commerce" date claim. Are there any suggestion how I may approach a response that is successful in lifting the suspension?

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Attorney answers 4

Best Answer
Posted

You have a choice here, to respond immediately, or to sit, watch and wait.

(1) The examiner very probably sees a likelihood of consumer confusion between your chosen mark and the prior filed mark application pursuant to Lanham Act Section 2(d) -- if so, the letter should actually state this somewhere. Representative language taken from similar letters reads:

"If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). ... Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned[.]" [citations omitted]

The suspension letter should also give you the express option of either waiting or responding immediately. Again, representative wording will typically say something like the following:

"No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.uspto.gov/rsi/rsi."

If If you so choose, you can immediately have a trademark attorney prepare and file a response to the suspension letter, in an attempt to convince the examiner that there is in fact no potential for consumer confusion. And if successful, the examiner will then lift the suspension and permit your application to proceed to the next stage of the process, independently of whether the prior cited application is granted or denied.

(2) However, you can instead opt to wait and see whether the prior application cited in your suspension is denied or abandoned, whether due to the opposition that has been filed against it, or for some other reason. If you choose to wait and see, this should not prejudice your application in any way.

If the prior application is thereafter denied or abandoned, this will clear the way for your suspension to be lifted, and for your application to proceed, hopefully culminating in allowance/registration. [NOTE - Of course, the same third party who filed an opposition against the prior applicant's mark might ALSO step in to oppose your own registration, for the same or similar reasons, in which case you will have to defend against these claims.]

On the other hand, if the prior application is allowed/registered, then at that point the examiner should issue an office action denying your application for registration, citing confusing similarity with the prior filed mark just granted, on which your suspension was based. You will then have the standard 6 months to respond with arguments and evidence as to why no likelihood of confusion actually exists.

* * * * *

My typical advice in a situation such as yours is to follow path (2), i.e. wait and see what happens, absent some compelling reason to short-circuit the process. Responses to Section 2(d) denials (or to suspensions issues citing Section 2(d), which amount to almost the same thing) can be costly, and would be an avoidable expense should the prior filing be denied, cancelled or abandoned, etc. The one clear downside to this approach is that your application will be in limbo until the potential conflict is resolved, causing considerable delays and uncertainty in your overall branding/marketing plan, which you may or may not be able to live with until the denouement.

Note that even were the prior application to be granted, you might have obtained some "common law" trademark rights based on actual use of your mark in commerce, which would be grandfathered in and would likely permit you to continue conducting your business as it existed when the prior application was filed. However, your ability to expand, either geographically, or in terms of new markets and product/service offerings, could be circumscribed. And while admittedly better than nothing, such common law rights are generally inferior to registration on the Principal Register.

THIS POST DOES NOT CONSTITUTE LEGAL ADVICE, DOES NOT IMPLY ANY ATTORNEY-CLIENT RELATIONSHIP, AND IS PROVIDED FOR GENERAL INFORMATIONAL PURPOSES ONLY.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Fighting over who's entitled to register the mark is not the only skirmish that may need to be fought - and is likely not the most important. Either the U.S. or the Canadian company or both may just sue the Questioner for using what they believe to be their trademark. The Questioner, in my opinion, needs a trademark attorney to immediately assess his risk of being sued.

Asker

Posted

Terry I am much obliged for your comprehensive and quick response. I analyzed the situation to great length and came similar conclusions as you, however you have mentioned several extras that are very helpful. Funny I had successfully registered another mark two years before for a 501(c)(3) where I am on the board, which I thought was gone be more difficult than this present one due to the nature of the wording. It goes to show you! :) Once again thank you.

Terry Lynn Thomas

Terry Lynn Thomas

Posted

You're welcome, please let me know if I can be of other assistance. Incidentally, I agree with Mr. Ballard's comment, that you MIGHT ultimately be facing a lawsuit for infringement, even should your application ultimately ripens into a registration. A court of general jurisdiction would not be BOUND by the USPTO's administrative findings, though of course they might be given substantial weight in subsequent proceedings. A couple of things lead me to believe that the Canadian company would probably FIRST attempt to handle this through the opposition process, however: (i) because they already have a record of administrative opposition against the earlier applicant; (ii) because much of the work done in opposing the earlier applicant's filing might easily and be repurposed in opposing your own mark; and (iii) because if your suspension has been lifted, it will likely mean that their opposition against the prior applicant was successful (or that the prior application failed for some related reason), which may very well encourage them to take similar administrative action against your filing as well. That said, just because they may succeed in opposing the prior filing, does not guarantee that they will also succeed in also opposing your own filing: you will have an opportunity to separately file a response championing the merits of your own case. I also reiterate the possibility (mentioned in the context of the prior applicant's filing) that you may be able to assert and stand on certain common law rights, even if your federal registration is ultimately unsuccessful. Whether these rights would be available against the Canadian opposer is a fact-specific question, and would hinge in substantial part on whether those rights came into being prior to the Canadian company's own filing(s). Again, common law rights aren't ideal, but are better than nothing. Mr. Ballard is correct in observing that you probably have not seen the last of this, and likely will need the services of an experienced trademark attorney at some point in the near future. Alas.

G. Todd Winter

G. Todd Winter

Posted

I'm glad to see the threat of litigation after success was discussed here in the comments, as that was part of the reason I clicked on Comments. The other comments I had were not really legal, but practical business advice. Candidly speaking, this is a no win situation for you. If Canadian company wins the administrative proceeding they will likely do the same to you. If Canadian company loses, "Optimize" proceeds to registration and you then have to overcome confusingly similar arguments with the examining attorney, which may ve very difficult to overcome. And further to that point, do you really want a similar brand as a competitor in the same industry? Your last option may be to attempt a cancellation proceeding based on your prior use of your mark in commerce. In all of these scenarios, however, you have spent a great deal of time and money without any real business advantage, i.e. your two brands are already similar. So without knowing the value of your current brand, or marketing dollars spent to promote it, etc., it seems to me a re-branding strategy session would yield much more positive results than any of the legal maneuvering you could do in this unfortunate situation. We are WINTER LLP. We provide Flat Fee Trademark Packages with 30 minutes of attorney time included. Please visit us at WinterLLP.com or TrademarkLawAttorneys.com.

Posted

You should consult a TM attorney. It is possible to argue the suspension. If successful, you would also remove the prior application as a bar to registration.

Posted

Hi,

The problem I think you have is that it appears no proper due diligence was done. We would have to understand the marks in question, the class of good/services they describe as well as the all the dates each claim to have begun use in commerce in order to even begin to offer insights on your application and position.

At present, while you reserve the right to respond now this will more than likely be a waste of time. The Examiner will not take action until the other mark is either registered, abandoned or rejected. You should monitor carefully because many times you will have to follow up if for example the other mark holder did not send in their statement of use and the mark went abandoned.

That said and to be clear, you should discuss this in more detail with your own TM lawyer and have a proper clearance conducted. I will link you to some general info on this below and most of us here, including myself, offer a free phone consult.

Best regards,
Frank
Natoli-Lapin, LLC
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Posted

The answers provided are exemplary and informative, but do not clearly spell out how you should "approach a response that is successful in lifting the suspension"

The answer is to select any one of the experienced attorneys here in AVVO or your network recommends, hire them to evaluate the marks in question, and IF (that's a big if) the facts are as you stated, there should be no problem lifting the suspension.

Good luck

My disclaimer is simply that Avvo already has an adequate disclaimer.