An office action suspending further action ...

[Ovicide]

I've been watching a trademark application at uspto.gov for several months:

Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

When I click the "Check Status" button:

Current Status: An office action suspending further action on the application has been mailed.

... snip ...

PROSECUTION HISTORY

--------------------------------------------------
2004-05-03 - Letter of suspension mailed

2004-03-23 - Communication received from applicant

2004-03-23 - PAPER RECEIVED

2003-10-01 - Non-final action mailed

2003-09-26 - Case file assigned to examining attorney

This doesn't look good for the trademark application. What does it usually mean?

[jberryhill]

Most likely it has been provisionally refused registration on the basis of a prior-filed, but not allowed application. Either the prior application will be allowed, and the refusal in this application will be made on the basis of the issued registration; or the prior application will reach final refusal and proceedings in this application will restart.

For a real boneheaded UDRP complaint based on a suspended application, this one is a veritable laugh track (depending on your sense of humor):

http://www.arb-forum.com/domains/decisions/192249.htm

[Ovicide]

Originally Posted by jberryhill

Most likely it has been provisionally refused registration on the basis of a prior-filed, but not allowed application. Either the prior application will be allowed, and the refusal in this application will be made on the basis of the issued registration; or the prior application will reach final refusal and proceedings in this application will restart.

:huh:

[jberryhill]

Okay, I'll try again.

One basis for refusing registration of an application is that it is confusingly similar to an existing registration.

What sometimes happens is that the USPTO will determine that your application *would be* confusingly similar to a mark that someone else has applied for, but which has not been registered yet.

Now, it may or may not turn out that the other person's earlier application will end up being registered. Maybe there is some basis for refusing registration of that earlier application and maybe there is not. The point is, we don't know yet, because it is a pending application.

So, then the question is what do we do with YOUR application for registration?

The answer is that we suspend processing of your application for the time being, until the question of registrability is answered in the earlier filed application.

When this happens, the USPTO will issue a "provisional refusal" of your application. It is "provisional" because it is contingent on whether or not the earlier application reaches registration. At the same time, further processing of your application will be suspended.

[Ovicide]

Originally Posted by jberryhill

Okay, I'll try again.

Thanks, John.

I understand now.

[jberryhill]

What you might want to do is to attempt to determine whether there is such an earlier pending application that may be the basis for the suspension.

...or obtain a copy of the file.

[Ovicide]

Originally Posted by jberryhill

What you might want to do is to attempt to determine whether there is such an earlier pending application that may be the basis for the suspension.

This morning, I searched for similar live trademarks which have not been assigned a registration number (those are pending applications, I believe).

I saw nothing which is really similar, and certainly nothing which is confusingly similar.

Maybe I've overlooked something, or maybe there's another reason for the suspension.

I'll probably wait a while to see what develops before ordering a copy of the file.

[jberryhill]

"maybe there's another reason for the suspension"

http://www.bitlaw.com/source/tmep/1108_01.html

[Ovicide]

Originally Posted by jberryhill

http://www.bitlaw.com/source/tmep/1108_01.html

Well, there is a foreign trademark, which was registered last December. Maybe the suspension is related to that.

The mark is generic/descriptive, so my first thought upon reading the suspension action is that the application is being rejected for genericness or descriptiveness.

Your suggestion to order a copy of the file seems the best way to solve the mystery.

[jberryhill]

"The mark is generic/descriptive, so my first thought upon reading the suspension action is that the application is being rejected for genericness or descriptiveness."

An application can be refused for multiple reasons. If you look at the case I cited above, you'll see that the application was provisionally refused on the basis of a prior application, and was also refused for genericness. Because of the provisional refusal, the application was suspended. In the UDRP, the Complainant had the cojones to argue, "But our application is only suspended, not finally refused". That argument won laughs all around.

If you do order the file, I recommend these guys:
http://www.patentec.com/

I have no affiliation with them, but I have always gotten great service from them.

[Ovicide]

Originally Posted by jberryhill

If you do order the file, I recommend these guys:
http://www.patentec.com/

All right. Thanks for your help.

Also, congratulations to you and Greg for the "couponsinc.com" decision. I enjoy reading your UDRPs.