Chapter 1000 - INTERFERENCES

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 C.F.R. § 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 C.F.R. § 2.146  Petitions to the Director.

  • (a) Petition may be taken to the Director in a trademark case: ...
    • (4) In any case not specifically defined and provided for by parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; …

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 C.F.R. § 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 C.F.R. § 2.83; TMEP § 1208.03 et seq.; TMEP § 1507.

 3.   37 C.F.R. § 2.83; TMEP § 1208.02(c).

 4.   See Trademark Act § 16, 15 U.S.C. § 1066; 37 C.F.R. § 2.146(a)(4)  and 37 C.F.R. § 2.146(c).

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. § 2.146  Petitions to the Director.

  • (a) Petition may be taken to the Director in a trademark case: ...
    • (4) In any case not specifically defined and provided for by parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; …
  • (c)(1) Every petition to the Director shall include a statement of the facts relevant to the petition, the points to be reviewed, the action or relief requested, and the fee required by § 2.6. Any brief in support of the petition shall be embodied in or accompany the petition. The petition must be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(5). When facts are to be proved on petition, the petitioner must submit proof in the form of verified statements signed by someone with firsthand knowledge of the facts to be proved, and any exhibits.

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 filing a separate "PETITION TO THE DIRECTOR," through TEAS, 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)(1), 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 Office of the Commissioner for Trademarks will make a determination of the petition. A request for interference does not alter the normal course of examination. [ Note 7.]

Please Note: In connection with Executive Order 13777, ‘‘Enforcing the Regulatory Reform Agenda,’’ the USPTO issued a final rule removing as unnecessary the regulations concerning trademark interferences codified at 37 C.F.R. § 2.91, 37 C.F.R. § 2.92, 37 C.F.R. § 2.93, 37 C.F.R. § 2.96, and 37 C.F.R. § 2.98. [ Note 8.] These rules are now marked "Reserved." Parties still retain an avenue for seeking a declaration of interference by filing a petition to the Director under 37 C.F.R. § 2.146(a)(4), which provides that a petitioner may seek relief in any case not specifically defined and provided for by Part 2 of Title 37. [ Note 9.]

NOTES:

 1.   TMEP § 1208.03(b) and TMEP § 1507. 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.   TMEP § 1208.03(b) and TMEP § 1507. 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; TMEP § 1507.

 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 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.

 8.   REMOVAL OF RULES GOVERNING TRADEMARK INTERFERENCES, 83 Federal Register 33129, 33130 (July 17, 2018). The final rule also revised the authority citation for part 2, and the undesignated center heading ‘‘INTERFERENCES AND CONCURRENT USE PROCEEDINGS’’ to read ‘‘CONCURRENT USE PROCEEDINGS.’’

 9.   REMOVAL OF RULES GOVERNING TRADEMARK INTERFERENCES, 83 Federal Register 33129, 33130 (July 17, 2018).

1003    Institution of Interference

An interference proceeding does not commence with the granting of a petition to the Director to declare an interference. Rather, the interference proceeding will not be instituted unless and until the examining attorney has determined that the marks which are to be included in the interference are registrable, but for the interfering marks; and all of the marks have been published (preferably together) in the Official Gazette for opposition, subject to the interference. [ Note 1.]

If an application published subject to interference is opposed by an entity which is not to be a party to the interference, the opposition may be determined first, following which the interference, if still necessary and appropriate, will be instituted. [ Note 2.] Alternatively, depending upon the circumstances, the opposition and interference may go forward contemporaneously. If an opposition is filed by an entity that is to be a party to the interference, and the interference is to involve three or more parties, the opposition will be dismissed without prejudice in favor of the interference proceeding, wherein the rights of all parties can be determined in a single proceeding. If an opposition is filed by an entity that is to be a party to the interference, and the interference is to involve only two parties, the rights of the parties will be determined in the opposition, and the interference will not be instituted.

If the marks which are to be included in an interference (1) are found by the examining attorney to be registrable, (2) are published for opposition, and (3) survive the opposition period (as indicated in the preceding paragraph), the interference proceeding will be instituted by the Board.

The Board prepares a "Notice of Interference" notifying the parties that the interference proceeding is thereby instituted, and setting conferencing, disclosure, discovery, trial and briefing dates in the case, as may be deemed appropriate by the Board. The notice specifies the name and address of each party to the proceeding and of each party's attorney or other authorized representative, if any; the mark of each party; and the serial number, filing date, and publication date of each involved application. [ Note 3.]

An interference proceeding commences when the Board mails or emails the notice of interference to the parties. See TBMP § 302. The notice is mailed or emailed to the attorney or other authorized representative of each involved applicant, or, if the applicant does not have an attorney or other authorized representative, to the applicant. [ Note 4.]

It is not the Director’s practice to declare an interference with a registration. See TBMP § 1002. However, should the Director elect to declare an interference with one or more registrations, the notice of interference would specify the registration number and issuance date of each involved registration, and would be mailed or emailed to the registrant or its assignee of record.

There are no pleadings in an interference proceeding. Cf. TBMP § 1003 (Institution of Interference), TBMP § 1106 (Commencement of Concurrent Use Proceeding), and TBMP § 1107 (Answer; Default in Concurrent Use Proceeding). The notice of interference takes the place of pleadings, to the extent that it serves to provide each party with information concerning the involved application (or registration, if an interference should be declared with one or more registrations) of every adverse party.

There is no fee for an interference proceeding, beyond the fee required for a petition to the Director to declare an interference. [ Note 5.]

NOTES:

 1.   See TMEP § 1208.03(c).

 2.   Cf. 37 C.F.R. § 2.99(c).

 3.   Cf. 37 C.F.R. § 2.99(c).

 4.   Cf. 37 C.F.R. § 2.99(c).

 5.   See 37 C.F.R. § 2.6.

1004    Issues in Interference

Normally, the issue to be determined in an interference proceeding is priority of use. However, such additional issues as the registrability of each mark, and whether there is, in fact, a conflict between the marks involved in the proceeding (i.e., whether the marks do so resemble one another as to be likely, when used in connection with the respective goods and/or services of the parties, to cause confusion, mistake, or deception), are always before the Board in an interference, and may also be determined. There is no requirement that a party file an affirmative pleading of such matters in order to be heard thereon. [ Note 1.]

NOTES:

 1.   See, e.g., Trademark Act § 17 and Trademark Act § 18, 15 U.S.C. § 1067  and 15 U.S.C. § 1068; Giant Food Inc. v. Malone & Hyde, Inc., 522 F.2d 1386, 187 USPQ 374, 380 (CCPA 1975); Dynamet Technology, Inc. v. Dynamet Inc., 197 USPQ 702, 711-12 (TTAB 1977), aff’d, 593 F.2d 1007, 201 USPQ 129 (CCPA 1979); Jos. Schlitz Brewing Co. v. United Vintners, Inc., 166 USPQ 493, 494 (TTAB 1970); Clairol Inc. v. Holland Hall Products, Inc., 165 USPQ 214, 217-18 (TTAB 1970); Tudor Square Sportswear, Inc. v. Pop-Op Corp., 160 USPQ 50, 53-54 (TTAB 1968); La Jolla Sportswear Co. v. Maskuline Underwear Co., 114 USPQ 130, 131 (Comm’r 1957); Rules of Practice in Trademark Cases, 48 Fed. Reg. 23122 (May 23, 1983), (deleting former 37 C.F.R. § 2.97, which contained a requirement for an affirmative pleading of registrability issues).

1005    Burden of Proof

37 C.F.R. § 2.116(b)  ... A party that is a junior party in an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference proceeding or in a concurrent use registration proceeding shall be a defendant against every party that is junior.

In an interference proceeding, the party whose involved application has the latest filing date is the junior party. When there are three or more parties to an interference, a party is a junior party to every other party whose involved application has an earlier filing date. If the involved applications of any parties have the same filing date, the application with the latest date of execution is deemed to have the latest filing date, and that applicant is the junior party. [ Note 1.] Cf . TBMP § 1108.

A junior party in an interference proceeding is in the position of plaintiff, and has the burden of proof, as against every party that is senior, that is, as against every party whose involved application has an earlier filing date. Conversely, a senior party is in the position of defendant as against every party that is junior, that is, as against every party whose involved application has a later filing date. [ Note 2.] For information concerning joining or substituting a transferee when there has been an assignment of a mark which is involved in an interference proceeding, see TBMP § 512.01.

NOTES:

 1.   Cf. 37 C.F.R. § 2.99(e).

 2.   37 C.F.R. § 2.116(b). See also Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 173 USPQ 673, 674 (CCPA 1972); McNeil v. Mini Mansions, Inc., 178 USPQ 312, 314 (TTAB 1973).

1006    Addition of Party

A party may be added to an interference only upon petition to the Director filed, pursuant to 37 C.F.R. § 2.146(a)(4), by the party to be added.

1007    Conduct of Proceeding

Once commenced, an interference proceeding is conducted in the same general manner as an opposition or cancellation proceeding, except that there are no pleadings, and therefore no motions relating to pleadings. [ Note 1.] The issues of priority of use, likelihood of confusion, and registrability are always before the Board. A party’s burden of proof as against another party to the proceeding depends upon the filing date of its involved application, and additional parties may be added to the proceeding upon petition to the Director filed by the party to be added. See TBMP § 1002 (Declaration); TBMP § 1003 (Institution); TBMP § 1004 (Issues in Interference); TBMP § 1005 (Burden of Proof); and TBMP § 1006 (Addition of Party).

In addition, the trial and briefing schedule in an interference involving three or more parties differs, because of the multiplicity of parties, from that in an opposition or cancellation. In the notice of interference that commences an interference proceeding, the Board sets trial and briefing dates in the case, including dates for a discovery conference, initial and expert disclosures, an opening and closing date for discovery, and pretrial disclosures and rebuttal disclosures, as may be deemed appropriate by the Board. See TBMP § 1003. In particular, the Board schedules testimony periods so that each party in the position of plaintiff, see TBMP § 1005, will have a period for presenting its case in chief against each party in the position of defendant, each party in the position of defendant will have a period for presenting its case and meeting the case of each plaintiff, and each party in the position of plaintiff will have a period for presenting evidence in rebuttal. The scheduling order will also set the time for pretrial disclosures of witnesses. [ Note 2.] Similarly, the Board schedules briefing periods so that each party, beginning with the junior-most party and ending with the senior-most party, will have a time for filing its main brief on the case, and each junior party will have a time for filing a reply brief. See TBMP § 801.02(e). As in all inter partes proceedings before the Board, the parties may stipulate to pretrial disposition on the merits or abbreviated trial on the merits by means of Accelerated Case Resolution (ACR), and may otherwise stipulate to a variety of matters to expedite the proceeding. [ Note 3.] For information on ACR, see TBMP § 528.05(a)(2) and TBMP § 702.04.

With the exceptions noted above, the practices and procedures for conferencing, making disclosures, taking discovery, filing motions, introducing evidence, briefing the case, presenting oral arguments at final hearing, and seeking review of a decision of the Board, are essentially the same in an interference as in an opposition or cancellation.

NOTES:

 1.   Compare, e.g., 37 C.F.R. § 2.107  with 37 C.F.R. § 2.115.

 2.   See, e.g., MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42244-42245 (August 1, 2007).

 3.   37 C.F.R. § 2.121(e).