1003.05 Section 44(d) and Priority for Publication
To determine priority for publication under 37 C.F.R. §2.83, an application filed in the United States under §44(d) will be treated as if it were filed in the United States on the same date as the filing in the foreign country. The §44(d) application will receive priority over any application filed after the §44(d) applicant’s priority filing date that might otherwise be a possible bar to registration under §2(d) of the Trademark Act due to a likelihood of confusion. See TMEP §§1208 et seq. regarding conflicting marks in pending applications.
In some cases, another U.S. application filed after the §44(d) applicant’s priority date may proceed to publication or registration because the §44(d) applicant had not yet filed in the United States when the examining attorney searched USPTO records for conflicting marks. If the USPTO learns that a §44(d) application is entitled to priority over another pending application before the other mark registers, the USPTO will take appropriate action to give the §44(d) application the priority to which it is entitled. The §44(d) applicant may bring the priority-date issue to the USPTO’s attention by submitting a letter of protest in the other pending application. See TMEP §1715 regarding letters of protest.
If an examining attorney discovers a conflicting application entitled to priority under §44(d) after taking action in a case, the examining attorney must issue a supplemental action correcting the situation. If the mark has been published, the examining attorney must request jurisdiction before issuing the action, unless a notice of allowance has issued. See TMEP §§1504.01 and 1504.04(a) regarding the examining attorney’s jurisdiction.
However, if the conflicting mark has already registered, the USPTO does not act to cancel the registration sua sponte. The §44(d) applicant may seek to cancel the registration by filing a petition for cancellation with the Trademark Trial and Appeal Board.