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

Photo of Jan Buza

Written by Jan Buza

Co-founder of Trama

If you received an office action from the USPTO citing a prior pending application as a reason for the suspension of your trademark, you can consider the following options:

  • Respond to the office action right away and provide arguments why the two marks shouldn't be viewed as conflictingly similar,
  • Monitor the status of the other application for the time being. Here, two outcomes can happen:
    • If the other application faces issues resulting in its abandonment, your registration will resume.
    • If the other mark registers, you'll likely receive another office action stating the "likelihood of confusion" as the reason for dismissal, to which you can then respond. Likelihood-of-confusion refusals can be addressed in multiple ways - you can use the strategy mentioned above and refute the examiner's concern about the perceived similarity, approach the other party to sign a co-existence agreement or try limiting your classes to reduce the "overlap" of the two marks.

Since the status of your application depends on the ruling about another mark, if you choose not to respond right away, it won't limit your rights to address the issue later.

Your chances of overcoming this office action depend on multiple factors, including the similarity between your and the other mark. Therefore, it's advisable to consult a trademark attorney about the best course of action.

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