TMEP 1003.05: Section 44(d) and Priority for Publication

This is the October 2015 Edition of the TMEP

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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.

If an examining attorney discovers a conflicting application entitled to priority under §44(d) after taking action in a case, the examining attorney should 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 have the authority to cancel the registration sua sponte. The §44(d) applicant must take action to enforce its priority rights, e.g., by filing a petition to cancel the registration with the Trademark Trial and Appeal Board.