Following a change in practice at the Trademark Office, appears likely that requests to keep an applied trademark in abeyance will no longer be granted.
For years now, where the Trademark Office (“TMO”) has issued an Office Action (objection) against an applied trademark, the TMO has been accepting requests to keep the applied mark in abeyance while the applicant takes steps to deal with a cited mark. These abeyances have usually been for periods of three months, and the understood practice was that the TMO would grant up to three requests (i.e. 9 months in total) as long as the applicant updated the TMO on progress with each supplementary request.
Recently, we learned that an applied mark was rejected one month after a first request for abeyance was filed. We raised this in a meeting with the Director of Trademarks, and were advised that the TMO will no longer accept requests for abeyance.
Grant of a period of abeyance has always at the TMO’s discretion, and there has therefore always been a risk of rejection of the relevant applied mark. However, it appears that with this new change of practice, it is likely that requests will be refused regardless of the merits.
There is no official announcement of this practice change, and the Trademark Office does not publish examination guidelines. News of this change in practice is informal (as was the practice itself!), and it may be that some examiners continue to grant requests. Applicants should be aware of the significant risk that a request will not be granted.