206 Effective Filing Date
The filing date of an application ( see TMEP §201) is also the effective filing date, except in the situations described in the subsections below. In these situations, the USPTO does not alter the original filing date in its automated records.
206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use
An applicant relying on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d). 37 C.F.R. §§2.47(d) and 2.75(b).
If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use andan acceptable amendment to the Supplemental Register, the USPTO will consider the filing date of the amendment to allege use or statement of use to be the effective filing date of the application. 37 C.F.R. §2.75(b). The examining attorney must conduct a new search of USPTO records for conflicting marks. See TMEP §206.04 regarding examining attorney's action after conducting a new search.
Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application. Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009) (filing date did not change when applicant who originally sought registration on the Supplemental Register without alleging use in commerce amended to seek registration on the Principal Register under §1(b)).
See TMEP §§816.02 and 1102.03 for additional information about examination of intent-to-use applications on the Supplemental Register.
206.02 Application Claiming Priority under §44(d) or §67
When an applicant is entitled to priority based on a foreign application, the effective filing date is the date on which the foreign application was first filed in the foreign country. 15 U.S.C. §§1126(d)(1) and 1141g; 37 C.F.R. §§2.34(a)(4)(i) and 7.27(c); TMEP §§1003.02 and 1904.01(e).
In an application under §44(d) of the Trademark Act, the priority claim for the United States application must be filed within six months after the filing date of the foreign application. The applicant may submit a priority claim after the filing date of the United States application if: (1) the applicant submits the priority claim within the six-month priority period (37 C.F.R. §2.35(b)(5) ); and (2) the applicant was entitled to priority on the filing date of the United States application.
In an application under §66(a) of the Act, the priority claim must be submitted with the international application or subsequent designation filed with the IB within six months after the filing date of the foreign application. The priority claim will be part of the request for extension of protection sent to the USPTO by the IB. In some situations, however, the USPTO may receive a priority claim or a corrected priority claim after receipt of the §66(a) application via a notice of correction from the IB.
If the priority date is included in the original §44(d) or §66(a) application, the examining attorney must determine, while conducting a search of USPTO records for conflicting marks, whether there are any applications for conflicting marks that would be deemed later filed. The examining attorney must also notify the examining attorney assigned to any later-filed application so that the application may be suspended pending disposition of the §44(d) or §66(a) application with the earlier effective filing date.
If the priority claim in a §44(d) or §66(a) application is submitted after the examining attorney has conducted a search of USPTO records for conflicting marks, the examining attorney must conduct a new search to determine whether, in view of the new earlier effective filing date, there are any applications for conflicting marks that would now be deemed later filed. The examining attorney must also notify the examining attorney assigned to any now later-filed application so that the application may be suspended pending disposition of the application with the earlier effective filing date.
See TMEP §1003.05 regarding the procedures when an application filed after a §44(d) application’s priority date proceeds to publication or registration because the §44(d) application was not yet filed with the USPTO when the examining attorney searched for conflicting marks. See TMEP §1904.01(e) regarding the procedures when an application filed after a §66(a) application’s priority date proceeds to publication or registration because the request for extension of protection for the §66(a) application was not yet of record with the USPTO when the examining attorney searched for conflicting marks.
206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989
In an application filed before November 16, 1989, the date of the amendment to the Supplemental Register becomes the effective filing date of the application if: (1) the applicant had not used the mark in commerce for one year before the application filing date; and (2) the applicant amends to the Supplemental Register on or after November 16, 1989. See TMEP §816.02.
206.04 Examining Attorney’s Action After Conducting New Search When the Effective Filing Date Changes to a Later Date
When the effective filing date changes to a later date, the examining attorney must conduct a new search of USPTO records for conflicting marks. If the search shows that because of the new, later effective filing date, there is a later-filed conflicting application that now has an earlier filing date, the examining attorney must suspend action of the subject application pending disposition of the other application, if the application is otherwise in condition for suspension. In addition, the examining attorney must notify the examining attorney assigned to the other application of the change in the effective filing date of the subject application, so that the other examining attorney may withdraw the application from suspension and either approve it for publication or take action on any other outstanding issues.
See TMEP §§206.02 regarding the procedures when the effective filing date changes to an earlier date and TMEP §§1208–1208.02(f) regarding conflicting marks in pending applications.