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.

Although a properly signed declaration is part of an international registration on file with the IB, it is not sent to the USPTO with a request for extension of protection under §66(a). Therefore, if an application under §66 has the same effective filing date as an application under §1 or §44, the filing date of the §66 application will be treated as the 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 "87") and look only to the last three digits of 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 or reinstated, 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.