Back to Office actions

The USPTO lists "Prior pending application" as the reason for issuing an office action. What should I do?

Written by Jan Buza

Co-founder of Trama

A prior pending application suspension is largely a waiting situation. Your application is on hold while the earlier application is assessed; no immediate action is typically required from you unless the office action specifically requests a response.

Monitoring the status of the earlier application through the USPTO's TSDR database is advisable. If it is ultimately refused or abandoned, your suspension should be lifted automatically. If you have strong arguments for why the two marks are not confusingly similar, you can proactively submit those arguments in a response to the suspension notice, which can sometimes prompt the examiner to reconsider the suspension or assess the conflict earlier.

If the earlier application proceeds to registration, prepare a response to the likely confusion refusal that will follow by gathering arguments and evidence now.

Related questions

Hugo Boss trademark challenge turned into PR nightmare

What happens when an internationally well-known luxury fashion house goes against a small family-owned Welsh brewery? As it turns out, a lot of unexpected things.

12 good reasons for advertising companies to register a trademark

There is a myriad of reasons why trademark registration is of a crucial importance for advertising companies. This article presents a concise summary of 12 key reasons why every creative that sheds light on others should think about registering for a trademark.

Stories of our clients: Mooday Memos

Have you ever had a day at work that just didn’t seem to end? Mooday Memos can help brighten your mood with the colourful and sassy stationery sold under this brand! Together with Nita Ukkonen, the founder of Mooday Memos, we explore the origins of this remarkable idea as well as the importance of brand protection.