1208 Conflicting Marks in Pending Applications
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.
1208.01 Priority for Publication or Issue Based on Effective Filing Date
In ex parte examination, priority among conflicting pending applications is determined based on the effective filing dates of the applications, without regard to whether the dates of use in a later-filed application are earlier than the filing date or dates of use of an earlier-filed application, whether the applicant in a later-filed application owns a registration of a mark that would be considered a bar to registration of the earlier-filed application, or whether an application was filed on the basis of use of the mark in commerce or a bona fide intent to use the mark in commerce. See 37 C.F.R. §2.83(a).
When two or more applications contain marks that are conflicting, the mark in the application that has the earliest effective filing date will be published for opposition if it is eligible for registration on the Principal Register, or will be registered if it is eligible for registration on the Supplemental Register. Id. In rare situations, the effective filing date changes after submission of an amendment to allege use and amendment to the Supplemental Register. See TMEP §206.01. In such cases, the examining attorney must conduct a new search and follow the procedures discussed in TMEP §206.04. However, once a registration issues, a likelihood-of-confusion refusal that is required by the Trademark Act applies regardless of the filing-date priority of the underlying application. Internal examination procedures do not have primacy over statutory law, and a refusal that is authorized by the Trademark Act will not be considered invalid due to errors in examination procedure. In re House Beer, LLC, 114 USPQ2d 1073, 1076 (TTAB 2015) . See TMEP §§206-206.03 regarding effective filing dates.
The examining attorney cannot refuse registration under §2(d) of the Trademark Act based on a conflicting mark in an earlier-filed application until the conflicting mark registers. See TMEP §1207.01. Therefore, when the examining attorney has examined the later-filed application and determined that, but for the conflict between the marks, it is in condition to be approved for publication or issue, or in condition for a final refusal, the examining attorney will suspend action on the later-filed application until the earlier-filed application matures into a registration or is abandoned. 37 C.F.R. §2.83(c); TMEP §§716.02(c) and 1208.02(c).
1208.01(a) What Constitutes Conflict Between Pending Applications
Marks in applications filed by different parties are in conflict when the registration of one of the marks would be a bar to the registration of the other under §2(d) of the Trademark Act, 15 U.S.C. §1052(d). Therefore, the term "conflicting application" refers to an application to register a mark that so resembles the mark in another application as to be likely to cause confusion. See TMEP §702.03(b). See TMEP §§1207-1207.01(d)(xi) regarding likelihood of confusion. There may be multiple conflicting pending applications.
1208.01(b) What Constitutes Effective Filing Date
The filing date of an application under §1 or §44 of the Trademark Act is the date when all the elements designated in 37 C.F.R. §2.21(a) are received at the USPTO. TMEP §201. In an application under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), the filing date is: (1) the international registration date, if the request for extension of protection to the United States is made in an international application; or (2) the date that the subsequent designation was recorded by the IB, if the request for extension of protection to the United States is made in a subsequent designation. 15 U.S.C. §1141f(b); 37 C.F.R. §7.26; TMEP §201.
While this is generally the effective filing date for purposes of determining priority among conflicting applications, in certain situations another date is treated as the effective filing date. See TMEP §§206.01-206.03. For example, in an application claiming priority under §44(d) or §67 of the Trademark Act based on a foreign application, the effective filing date is the date the foreign application was first filed in the foreign country. TMEP §206.02. In a §1(b) application that is amended to the Supplemental Register on the filing of an acceptable allegation of use, the effective filing date is the date of filing the allegation of use. 37 C.F.R. §2.75(b); TMEP §206.01. However, the USPTO does not alter the original filing date in its automated records. TMEP §206.
If two or more applications conflict, the application with the earliest effective filing date will be approved for publication for opposition or for issuance of a registration on the Supplemental Register, as appropriate. 37 C.F.R. §2.83(a); TMEP §1208.01.
If conflicting applications have the same effective filing date, the application with the earliest date of execution will be approved for publication for opposition or for issuance of a registration on the Supplemental Register. 37 C.F.R. §2.83(b). An application that is unexecuted will be treated as having a later date of execution.
Occasionally, conflicting applications will have the same date of filing and execution. If this situation occurs, the application with the lowest serial number will have priority for publication or issuance. When determining which serial number is the lowest, the examining attorney should disregard the series code (e.g., "76," "77," "78," "79," or "85") and look only to the six-digit serial number that follows.
1208.01(c) Change in Effective Filing Date During Examination
If the effective filing date in an application containing a conflicting mark changes, the examining attorney should review all the application(s) involved to determine which application has the earliest effective filing date as a result of the change, and notify the examining attorney assigned to the application with the earliest effective filing date.
Whenever the effective filing date of an application changes to a date that is later than the original filing date, the assigned examining attorney must conduct a new search of the mark. See TMEP §206.04.
1208.01(d) Examination of Conflicting Marks After Reinstatement or Revival
When an application listed as abandoned in the USPTO’s Trademark database is revived or reinstated ( see TMEP §§1712.01, 1713, and 1714), the examining attorney must conduct a new search to determine whether any later-filed applications for conflicting marks have been approved for publication or registration, and place the search strategy in the record.
If a later-filed application for a conflicting mark has been approved, or the §2(d) search for the later-filed application occurred when the earlier-filed application was in abandoned status, the examining attorney should inform the examining attorney with the later-filed application that the earlier-filed application has been revived, so that appropriate action may be taken. If the later-filed application has been published, the examining attorney handling that application should request jurisdiction ( see TMEP §1504.04(a)) and suspend the application pending disposition of the earlier-filed application that was revived or reinstated.
If a later-filed application for a conflicting mark has matured into registration, the examining attorney must refuse registration of the revived or reinstated application under §2(d), even though the application for the registered mark was filed after the revived or reinstated application.
1208.02 Conflicting Applications Examination Procedure
1208.02(a) Examination of Application with Earliest Effective Filing Date
When the application with the earliest effective filing date is first reviewed for action, the examining attorney should approve the application for publication or for issuance of a registration on the Supplemental Register, if appropriate. 37 C.F.R. §2.83(a).
If the application with the earliest effective filing date is not in condition for publication or issue, the examining attorney should issue an Office action that includes all relevant refusals and requirements.
The USPTO does not notify applicants of potentially conflicting later-filed applications.
See TMEP §§206-206.03 and 1208.01(b) regarding what constitutes an effective filing date.
1208.02(b) Action on Later-Filed Application: Giving Notice of the Earlier Application or Applications
If, when the later-filed conflicting application is first reviewed for action, it is not in condition for publication or issue, the examining attorney should, in addition to treating other matters, send with the Office action an electronic copy or a printout from the USPTO’s automated search system of the information for the mark in each earlier-filed application. The examining attorney’s letter should also advise the applicant that the earlier application, if and when it matures into a registration, may be cited against the applicant’s later-filed application. The applicant should be notified of all conflicting applications with earlier effective filing dates.
See TMEP §1208.02(c) regarding suspension of later-filed conflicting applications that are otherwise in condition to be approved for publication or issue.
1208.02(c) Suspension of Later-Filed Application
When the later-filed application is in condition for publication or issue except for the conflicting mark in an earlier-filed application, either because no action was necessary on the application as filed or because examination on other matters has been brought to a conclusion, the examining attorney must suspend the later-filed application until the mark in the earlier-filed application is registered or the earlier-filed application is abandoned. 37 C.F.R. §2.83(c); see In re Direct Access Commc’ns (M.C.G.) Inc., 30 USPQ2d 1393, 1394 (Comm’r Pats. 1993). If the examining attorney discovers that a previously filed pending application was abandoned, but that a petition to revive is pending, the examining attorney should suspend the later-filed application pending disposition of the petition to revive.
Action on the later-filed application must also be suspended when the application is in condition for a final action but for the conflict with the earlier-filed application. The letter of suspension should repeat any outstanding issues, but these issues should not be made final. See TMEP §716.02(c) for further information about suspension and removal from suspension in this situation.
If the Office action informing the applicant of the suspension is the first action in the case, the examining attorney should include an electronic copy or a printout from the USPTO’s automated search system of the information for the mark in each earlier-filed conflicting application.
1208.02(d) Action on Later-Filed Application upon Disposition of the Earlier Application or Applications
If all conflicting earlier-filed applications have either matured into registrations or become abandoned, and there are no other grounds for suspension, the examining attorney should remove the later-filed application from suspension and take appropriate action as follows.
The examining attorney should cite the registration or registrations that issued from the earlier-filed conflicting application or applications, if there is a likelihood of confusion. This will be a first refusal under §2(d) of the Trademark Act, 15 U.S.C. §1052(d). Any other outstanding issues should be repeated at this time.
If all earlier-filed applications have become abandoned, the examining attorney should either approve the later-filed application for publication or issue, or repeat and make final any remaining issues, as appropriate.
If some, but not all of the earlier-filed conflicting applications have matured into registrations, the examining attorney will normally not issue a refusal of registration until the remaining conflicting application(s) are registered or abandoned, in order to avoid issuing piecemeal refusals. TMEP §716.02(c).
1208.02(e) Applicant’s Argument on Issues of Conflict
If an applicant with a later-filed application files a request to remove the later-filed application from suspension ( see TMEP §716.03), arguing that there is no conflict in relation to the application with the earlier effective filing date, the examining attorney should consider the merits of that argument and determine whether or not the earlier-filed application constitutes a potential bar to registration under §2(d) of the Act.
If the examining attorney concludes that the earlier-filed application is not a potential bar, the examining attorney should remove the application from suspension and take appropriate action on any other outstanding issues.
However, if the examining attorney concludes that the earlier-filed application is a potential bar, the examining attorney should issue an action for the later-filed application (e.g., a new letter of suspension if there are no other issues that are not in condition for final action), in which the examining attorney explains why the applicant’s arguments are not persuasive.
1208.02(f) Conflicting Mark Mistakenly Published or Approved for Issuance on the Supplemental Register
If a later-filed conflicting mark is mistakenly published for opposition, it may be necessary for the assigned examining attorney to obtain jurisdiction of the application to take appropriate action. See TMEP §§1504.03-1504.04(a) concerning obtaining jurisdiction of an application after publication.
The examining attorney has jurisdiction over an application forwarded for issuance on the Supplemental Register until the day of issuance of the registration.
1208.03 Procedure Relating to Possibility of Interference
Section 16 of the Trademark Act, 15 U.S.C. §1066, states that, upon petition showing extraordinary circumstances, the Director may declare that an interference exists when application is made for the registration of a mark that so resembles a mark previously registered by another, or for the registration of which another has previously applied, 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 a registration that has become incontestable. These cases are extremely rare and are generally limited to situations where a party would be unduly prejudiced without an interference, such as where it would otherwise be required to engage in a series of opposition or cancellation proceedings involving substantially the same issue. See TMEP §1208.03(b).
An interference will not be declared except upon petition to the Director. 37 C.F.R. §2.91(a). All petitions or requests for interference should be forwarded to the Office of the Deputy Commissioner for Trademark Examination Policy for decision. The examining attorney does not make a determination on a request for interference.
See TBMP Chapter 1000.
1208.03(a) Procedures on Request for Interference
The request for interference should be in a separate document in the form of a petition, and should be captioned as a petition. The petition fee indicated in 37 C.F.R. §2.6 should accompany the request. A petition to declare an interference should not be filed before the application has been examined and the mark has been found to be registrable but for the existence of one or more conflicting pending applications.
A request for interference does not make an application "special" or alter the normal order of examination.
See TBMP Chapter 1000.
1208.03(b) Decision on Request for Interference
The Director will declare an interference only upon a showing of extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference. 37 C.F.R. §2.91(a). The availability of opposition and cancellation procedures provides a remedy and ordinarily precludes the possibility of undue prejudice to a party. Id. The request for interference must show that there is some extraordinary circumstance that would make the remedy of opposition or cancellation inadequate or prejudicial to the party’s rights. See In re Family Inns of Am., Inc., 180 USPQ 332, 333 (Comm’r Pats. 1974). The potential need to file two notices of opposition that could be consolidated if the issues were sufficiently similar is not considered an extraordinary circumstance that will unduly prejudice a petitioner without an interference. The fact that an earlier-filed application based on §1(b), §44, or §66(a) has been cited against a later-filed application based on use in commerce under §1(a) also is not an extraordinary circumstance that warrants declaration of an interference. An opposition proceeding is the proper forum for determining priority between an applicant and another party. Priority for purposes of examination of an application is determined by filing date. 37 C.F.R. §2.83(a); TMEP §1208.02(a).
Although §16 of the Act permits the declaration of an interference between an application and a registration, the practice of declaring an interference in these cases has been discontinued because the applicant cannot obtain a registration if the interfering registration remains on the register; therefore, even if the applicant prevailed in the interference, the applicant would still have to petition to cancel the interfering registration. See In re Kimbell Foods, Inc., 184 USPQ 172, 172 (Comm’r Pats. 1974); Ex parte H. Wittur & Co., 153 USPQ 362, 362-63 (Comm’r Pats. 1966); 37 C.F.R. §2.96.
See TBMP Chapter 1000.
1208.03(c) Procedure When Interference Is to be Declared
If the Director grants a petition requesting an interference, the examining attorney must determine that each mark is registrable but for the interfering mark before the interference will be instituted. 37 C.F.R. §2.92.
All marks must be published for opposition before interference proceedings are instituted. Id. If possible, the marks should be published simultaneously.
Each application that is to be the subject of an interference must contain the following statement to be printed in the Official Gazette:
This application is being published subject to declaration of interference with:
Serial No.:
Filed:
Applicant:
(Address, if there is no attorney)
Attorney and Address:
Mark:
The examining attorney should prepare the statement.
If an application that is published subject to interference is opposed by a party other than the applicant(s) in the interfering application(s), the opposition will be determined first. If still necessary and appropriate, the interference will be instituted. If an opposition is filed by the applicant in the interfering application, the rights of the parties will be determined in the opposition proceeding, and the interference proceeding will not be instituted.
If, during the pendency of an interference, another application appears involving substantially the same registrable subject matter, the examining attorney may request suspension of the interference for the purpose of adding that application. If the application is not added, the examining attorney should suspend further action on the application pending termination of the interference proceeding. 37 C.F.R. §2.98.
See TBMP Chapter 1000.