1001    In General

Trademark Act § 16, 15 U.S.C. § 1066  Upon petition showing extraordinary circumstances, the Director may declare that an interference exists when application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when used on or in connection with the goods or services of the applicant to cause confusion or mistake or to deceive. No interference shall be declared between an application and the registration of a mark the right to the use of which has become incontestable.

37 CFR § 2.83  Conflicting marks.

  • (a) Whenever an application is made for registration of a mark which so resembles another mark or marks pending registration as to be likely to cause confusion or mistake or to deceive, the mark with the earliest effective filing date will be published in the Official Gazette for opposition if eligible for the Principal Register, or issued a certificate of registration if eligible for the Supplemental Register.
  • (b) In situations in which conflicting applications have the same effective filing date, the application with the earliest date of execution will be published in the Official Gazette for opposition or issued on the Supplemental Register.
  • (c) Action on the conflicting application which is not published in the Official Gazette for opposition or not issued on the Supplemental Register will be suspended by the Examiner of Trademarks until the published or issued application is registered or abandoned.

37 CFR § 2.91  Declaration of interference.

  • (a) An interference will not be declared between two applications or between an application and a registration except upon petition to the Director. Interferences will be declared by the Director only upon a showing of extraordinary circumstances which would result in a party being unduly prejudiced without an interference. In ordinary circumstances, the availability of an opposition or cancellation proceeding to the party will be deemed to remove any undue prejudice.
  • (b) Registrations and applications to register on the Supplemental Register, registrations under the Act of 1920, and registrations of marks the right to use of which has become incontestable are not subject to interference.

An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict) is entitled to registration. [ Note 1.] A "conflict" exists, for interference purposes, whenever "application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when used on or in connection with the goods or services of the applicant to cause confusion or mistake or to deceive." [ Note 2.]

Ordinarily, when conflicting applications are pending, the application with the earliest effective filing date is approved for publication in the Official Gazette for opposition (if the mark is eligible for registration on the Principal Register), or is registered on the Supplemental Register (if the mark is eligible for registration on the Supplemental Register). Action on any later-filed conflicting application is suspended until the earlier-filed application is registered or abandoned. [ Note 3.]

If the owner of an application which conflicts with one or more pending applications wishes to have the Office set up an interference proceeding between the conflicting applications, rather than have the Office follow the procedure described in 37 CFR § 2.83, that applicant must file a petition to the Director to declare an interference. [ Note 4.] TBMP § 1002.

Please Note: Although the Director is authorized by Trademark Act § 16, 15 U.S.C. § 1066  to declare an interference between an application and a registration (except for registrations issued on the Supplemental Register, registrations issued under the Trademark Act of 1920, and registrations of marks the right to use of which has become incontestable), it is not the Director’s practice to do so, see TBMP § 1002.

NOTES:

 1.   See Trademark Act § 16, 15 U.S.C. § 1066  and Trademark Act § 18, 15 U.S.C. § 1068.

 2.   Trademark Act § 16, 15 U.S.C. § 1066. See also Trademark Act § 2(d), 15 U.S.C. § 1052(d); 37 CFR § 2.83; TMEP § 1208.03 et seq .; TMEP § 1507.

 3.   37 CFR § 2.83; TMEP § 1208.02(c).

 4.   See Trademark Act § 16, 15 U.S.C. § 1066; 37 CFR § 2.91(a).