T.M.E.P. § 1208.01
Priority for Publication or Issue Based on Effective Filing Date
Executive summary:
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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.
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. 37 C.F.R. 2.83(a). See TMEP §§206 etseq. regarding effective filing dates.
The examining attorney cannot refuse registration under §2(d) of the Trademark Act based on an earlier-filed application for a conflicting mark until the mark registers. Therefore, when the examining attorney has examined the later-filed application and determined that it is in condition to be approved for publication or issue or in condition for a final refusal, but for the conflict between the marks, 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 et seq. regarding likelihood of confusion. There may be several 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 Office. 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. 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 et seq. 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 of filing the foreign application. 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. TMEP §206.01.
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 published for opposition or issued 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," "78" or "79") and look only to the six digit serial number.
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.
The examining attorney should conduct a new search of the mark whenever the effective filing date of an application changes to a date that is later than the original filing date.
1208.01(d) Examination of Conflicting Marks After Reinstatement or Revival
When an abandoned application is revived or reinstated (see TMEP§§1712.01 , 1713 and 1714 et seq.), 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 file.
If a later-filed application has been approved, the examining attorney should inform the examining attorney who approved the later-filed application that the earlier-filed application has been revived, if necessary. 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. The Office does not have the authority to cancel the registration.