1002    Declaration of Interference

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 use of which has become incontestable.

37 C.F.R. § 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.

Under Trademark Act § 16, 15 U.S.C. § 1066, the Director, upon petition showing extraordinary circumstances, may declare that an interference exists when an application conflicts with a registration issued to another, or with an application previously filed by another, that is, "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."

A petition for declaration of an interference will be granted by the Director only if the petition shows "extraordinary circumstances which would result in a party being unduly prejudiced without an interference." [ Note 1.] Ordinarily, the availability of an opposition or cancellation proceeding is deemed to prevent any undue prejudice from the unavailability of an interference proceeding. [ Note 2.] One such petition was granted where, without the ability to invoke an interference proceeding, multiple oppositions which would have both complicated and substantially delayed resolution of the dispute would have been necessary. [ Note 3.]

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) [ Note 4.], it is not the Director’s practice to do so. [ Note 5.] This is because a registration will not be cancelled as a result of a decision in an interference proceeding. A formal petition for cancellation must still be filed and granted, and the registration must be cancelled, before any registration will be issued to the applicant. [ Note 6.] The interference proceeding is superfluous, since the cancellation proceeding by itself will accomplish the same purpose as the two proceedings together.

A petition to the Director to declare an interference should be made by separate paper bearing the title "PETITION TO THE DIRECTOR," and be accompanied by the fee specified in 37 C.F.R. § 2.6. For further information concerning the form for a petition to the Director, see 37 C.F.R. § 2.146(c), TMEP § 1208.03 and TBMP § 905.

A petition to declare an interference should not be filed in an application until the examining attorney has examined the application, and the mark has been found registrable but for the existence of one or more pending conflicting applications. When such a petition is filed, the examining attorney will immediately forward the petition, together with the application file, to the Office of the Commissioner for Trademarks for determination of the petition. [ Note 7.]

NOTES:

 1.   37 C.F.R. § 2.91(a). See also In re Ratny, 24 USPQ2d 1713, 1715 (Comm’r 1992) (extraordinary circumstances required for interference); In re Kimbell Foods, Inc., 184 USPQ 172, 173 (Comm’r 1974) (same); In re Family Inns of America, Inc., 180 USPQ 332, 332 (Comm’r 1974) (same).

 2.   37 C.F.R. § 2.91(a). See also In re Kimbell Foods, Inc., 184 USPQ 172, 173 (Comm’r 1974).

 3.   See In re Family Inns of America, Inc., 180 USPQ 332, 332 (Comm’r 1974). See also TMEP § 1208.03; TMEP § 1208.03(b).

 4.   See Trademark Act § 16, Trademark Act § 26, and Trademark Act § 46(b), 15 U.S.C. § 1066, 15 U.S.C. § 1094, 15 U.S.C. § 1051; 37 C.F.R. § 2.91(b).

 5.   See In re Kimbell Foods, Inc., 184 USPQ 172, 173 (Comm’r 1974); Ex parte H. Wittur & Co., 153 USPQ 362, 363 (Comm’r 1966).

 6.   See 37 C.F.R. § 2.96; In re Kimbell Foods, Inc., 184 USPQ 172, 173 (Comm’r 1974); Ex parte H. Wittur & Co., 153 USPQ 362, 363 (Comm’r 1966). Cf. Hy-Pure Laboratories, Inc. v. Foley & Co., 98 USPQ 280, 281 (Chief Examiner 1953) (present practice is not to cancel the registration of the losing registrant in an interference when the cases were not copending, unless the winning party files a formal petition to cancel the registration); Cudahy Packing Co. v. York Pharmacal Co., 93 USPQ 227, 228 (Comm’r 1952) (same).

 7.   See TMEP § 1208.03.