T.M.E.P. § 702.03
Related Applications
Executive summary:
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702.03 Related Applications
702.03(a) Companion Applications
The term "companion applications" refers to pending applications filed by the same applicant. An application is pending until it registers or abandons. Pending applications include applications that have been approved for publication or for registration on the Supplemental Register, applications in the Intent-to-Use ("ITU") Unit of the Office, and revived or reinstated applications.
When assigned a new application, the examining attorney must search the USPTO's automated records to determine whether the applicant has any companion applications. If the applicant has companion applications, the examining attorney must follow the procedures set forth in TMEP §§702.03(a)(i) through (a)(iv).
702.03(a)(i) Companion Applications for the Same or Similar Marks
If an applicant has multiple pending applications for the same or similar mark(s), the issues in the applications are likely to be similar.
The examining attorney must check the Trademark Reporting and Monitoring ("TRAM") automated system to determine whether a companion application has been assigned to an examining attorney. If TRAM indicates that the companion application has not been assigned, the examining attorney is encouraged to obtain and examine the unassigned file.
If TRAM indicates that a companion application was previously assigned to a different examining attorney, the examining attorney should not transfer his or her application to that person. However, the examining attorney should review the electronic record of the earlier companion application before taking action in a later companion case, and should act consistently, unless it would be clear error to do so. If the examining attorney believes that acting consistently with the prior action(s) would be erroneous, he or she should bring the issue to the attention of the managing attorney or senior attorney.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
702.03(a)(ii) Companion Applications for Different Marks
If an applicant has multiple pending applications, but the companion applications are not for the same or similar marks, examining attorneys should not transfer the companion cases to one examining attorney. However, examining attorneys should act consistently in companion cases, unless it would be clear error to do so. If necessary, the examining attorney should review the electronic record of the earlier companion application before taking action in a later companion case.
See TMEP §702.03(a)(iv) regarding classification and identification in companion applications that have been published for opposition.
702.03(a)(iii) Companion Registrations
If the applicant previously filed another application that has matured into a registration, the examining attorney should not transfer his or her application to the prior examining attorney. Generally, in the later application, the examining attorney should act consistently with the registration, unless it would be clear error to do so. However, the USPTO is not bound by the decisions of the examiners who examined the applications for the applicant's previously registered marks, based on different records. Eligibility for registration must be determined on the basis of the facts that exist at the time registration is sought. See TMEP §1216.01 and cases cited therein.
See TMEP §702.03(a)(iv) regarding classification and identification in companion registrations.
702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition
If a companion application has been published for opposition or has registered, the examining attorney may presume that the classification and identification of goods or services in the companion application or registration are acceptable, unless the identification or classification is clearly wrong. If the examining attorney accepts the classification and identification of goods or services because they were accepted in a companion application or registration, the examining attorney should note the companion application serial number or registration number in the "Notes to the File" section of the record.
Sometimes the classification and identification of goods or services in the prior companion application or registration will be clearly wrong. For example, the Nice Agreement classification system (see TMEP §§1401.02 et seq.) and Office policy on acceptable identifications change periodically. In these cases, the examining attorney cannot adopt the classification and identification listed in the companion application or registration. See TMEP §1402.14.
702.03(b) Conflicting Applications
The term "conflicting applications" refers to two or more pending applications that are filed by different applicants and may ultimately require a refusal of registration under §2(d) of the Trademark Act, 15 U.S.C. 1052(d), due to a likelihood of confusion between the marks. When assigned a new application, the examining attorney must search the USPTO's automated records to determine whether there are any conflicting applications. If there are conflicting applications, the examining attorney should not transfer the conflicting application to the examining attorney who acted on the first conflicting application. Instead, the examining attorney should simply examine the assigned application and issue an Office action that includes a notice to the applicant that there is a prior-filed application to register a mark that may be likely to cause confusion with the applicant's mark. See TMEP §§1208 et seq. The actions of the examining attorney handling the later-filed application should be consistent with the actions of the examining attorney who handled the earlier-filed application, unless it would be clear error to act consistently. If necessary, the examining attorney should review the electronic record of the earlier-filed application before taking an action in the later-filed conflicting application.