Conflicting Marks in Pending Trademark Applications

When reviewing trademark applications, the Examining Attorneys for purposes of priority will consider the effective filing dates. When two or more applications contain marks that are conflicting, causing a likelihood of confusion as to the source, the trademark in the application with the earliest effective filing date will be published in the Official Gazette (for registration on the Principal Register) or will be registered on the Supplemental Register (if appropriate). Action on the conflicting application that is not published in the Gazette nor issued on the Supplemental Register will be suspended.

The suspended status will remain until the published or issued application is registered or abandoned. A mark in a conflicting application cannot be refused registration under §2(d) of the Trademark Act until an earlier filed application is registered. Therefore, it remains suspended waiting to see if registration or abandonment occurs. See 37 C.F.R §2.83(c) and Trademark Manual of Examining Procedure ("TMEP") §1207.01 and §1208. Under certain circumstances there may be multiple conflicting pending applications. If conflicting applications have the same filing date, but one application is unsigned, it will be treated as having a later date of execution. If two conflicting applications happen to have the same filing date and execution date, then the trademark application with the lowest serial number will have priority for publication or registration.

Although it would appear that there should not be disputes over the effective filing dates of trademark applications, such disputes are common. See the web pages entitled, Priority Determinations In Trademark Law - Constructive Use Priority and Priority Determinations In Trademark Law - Foreign Rights, for more information on priority disputes. Under §1 or §44 of the Trademark Act, the filing date of an application is the date when the United States Patent & Trademark Office ("USPTO") receives all the mandatory elements of the application under TMEP §201. In an application under §66(a) of the Trademark Act, the filing date is either the international registration date, if there was an international application requesting extension of protection to the U.S. or the date the International Bureau ("IB") recorded the subsequent designation. Lastly, when a foreign application is involved, there is one other circumstance where an alternative date will be considered the effective filing date. If an applicant is claiming priority under §44(d) of the Trademark Act based on a foreign trademark application, the effective filing date will be the date the foreign application was filed.

In connection with trademark applications based on an intent-to-use, if the application is amended to the Supplemental Register, then the filing date will be the date the Allegation of Use is filed. It is very important to know this rule, because the USPTO will not modify the original filing date in the USPTO database. Thus, a general practitioner coming across this information could easily be misled by the information in the USPTO database, and potentially provide incorrect information to a client in a priority dispute. Therefore, it is important to always review the entire file of a conflicting application to properly determine the effective filing date. If there is a chance that the mark in the intent-to-use application (the 1(b) application) may have to be amended to the Supplemental Register, the client should be alerted to the risk that the Examining Attorney would conduct a new conflict search after the filing of the Allegation of Use. This new search could produce a negative outcome depending on the amount of time that has elapsed between the original filing date and the date the Allegation of Use was filed. Also, just as a reminder of another restriction with 1(b) applications, assignments cannot be made until an Allegation of Use is filed, unless the Assignee is a successor to the Assignor's business.

Another tricky circumstance is if an abandoned trademark application is later revived or reinstated. The Examining Attorney must conduct a new search in this situation as well. If a later filed application is conflicting, the earlier filed application that was abandoned, and now is revived would have priority. The later filed application would be placed in suspension status pending disposition of the earlier filed application. However, if a later filed application for a conflicting mark was issued a certificate of registration in the interim, then the revived or reinstated application must be refused based upon the ground of likelihood of confusion, even though the revived or reinstated application had an earlier filing date. Determining an effective filing date of a trademark application is not as easy as it appears. If you have questions pertaining to this topic, please contact the firm for a courtesy consultation.