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.